Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1 and 4 are amended, claims 2-3 and 5-7 are canceled. Claims 1, 4, and 8 are pending.
Support for the amendment to claim 1 can be found on p. 6 and p. 19 of the specification as filed.
Terminal Disclaimer
The terminal disclaimer filed on May 01 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on 17/768,450 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments, see p. 7-9, filed 05/01/2026, with respect to the rejection of claims 1-8 under 35 U.S.C 112(b) have been fully considered and are persuasive. The rejection of claims 1-8 has been withdrawn.
Applicant’s arguments with respect to claim(s) 1-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation).
Nobuhiko et al teaches a resin composition for surface encapsulation of a display device comprising an aromatic compound (A) and a cyclic compound (B) [p. 0001, 0010].
Nobuhiko teaches the resin composition comprises 20 to 80 parts by mass of an aromatic component (A), 20 to 80 parts by mass of a cyclic compound (B), a curing agent (C) and 0.1 to 5, and an optional additional curing agent [p. 0021, 0065].
Nobuhiko exemplifies compositions wherein (A) comprises o-phenylphenol glycidyl ether (OPP-G; corresponding to applicants D-1 and the claimed highly refractive epoxy resin of chemical formula 1) [table 1, examples 1 and 4].
Nobuhiko teaches component (B) more preferably comprises a compound with an (i) aromatic ring skeleton having epoxy groups or an (ii) alicyclic epoxy resin having epoxy groups, wherein the compounds may be used alone or in combination of two or more (i+ii) [p. 0052, 0053].
Nobuhiko exemplifies compositions wherein component A comprises OPP-G, and component B comprises (i) bisphenol A diglycidyl ether (jER-828; corresponding to applicants B-1 and the claimed highly adhesive epoxy resin of chemical formula 3) [table 1, example 1].
Nobuhiko also exemplifies compositions wherein component A comprises OPP-G, and component B comprises (ii) 3,4-epoxycyclohexenylmethyl-3',4'-epoxycyclohexenecarboxylate (SEJ-01R; corresponding to applicants claimed diluted epoxy resin A-1) [table 1, example 4].
Although Nobuhiko fails to exemplify a composition wherein component (B) comprises both (i) and (ii), the general teachings of Nobuhiko embrace embodiments wherein (i) and (ii) are used in combination.
Furthermore, Nobuhiko teaches that (i) aromatic ring compounds as component (B) are preferred because they reduce moisture permeability, while (ii) alicyclic epoxy resins as component (B) are preferred because they have low viscosity, which makes them easy to process, and they have an excellent curing rate [p. 0037 0053].
As Nobuhiko teaches both (i) and (ii) impart independent and distinct benefits to the composition, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the composition of Nobuhiko wherein component (B) comprises both (i) and (ii).
Furthermore, Nobuhiko the composition may comprise 20 to 80 parts by weight of component (B) [p. 0098]. Applicants claim that the (i) adhesive epoxy resin comprises 5 to 30 parts by weight of the composition, and the (ii) alicyclic epoxy resin comprises 10 to 50 parts by weight of the composition, together they comprise 15 to 80 parts by weight of the composition – which lies inside the range Nobuhiko teaches for component (B).
In light of Nobuhiko’s teachings that (i) and (ii) provide independent and distinct beneficial qualities to the composition, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Nobuhiko wherein component (B) comprises both an alicyclic and aromatic compounds (ex. 50 pbw OPP-G, 25 pbw jER-828 and 25 pbw SEJ-01R). In the alternative, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to optimize the respective amounts of (i) and (ii) within the prior art conditions to achieve the desired characteristics, (ex. reduced moisture permeability resulting from higher aromatic content, see Nobuhiko [p. 0037]; or low processing viscosity resulting from higher alicyclic epoxy content, see Nobuhiko [p. 0053]).
Furthermore, Nobuhiko teaches the use of thermal curing initiators, benzylmethyl-p-hydroxyphenylsulfoniumhexafluorophosphate-, which is known in the art to be a latent thermal curing initiator [p. 0061]. Nobuhiko teaches species such as oxalic acid may be used as an additional curing agent, and is selected for properties required such as curing speed and working conditions [p. 0065]. Nobuhiko teaches the additional curing agent may be used at 0.01 to 5 parts by mass, per 100 parts by mass of the total amount of component (A) and component (B) [p. 0065]. Nobuhiko teaches the resin has a refractive index of 1.45 to 1.70 [p. 0195]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation), and further in view of Hikida (US 2019/0300674 A1).
Nobuhiko teaches a variety of alicyclic epoxy compounds suitable for use in component (B) including:
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Although Nobuhiko teaches the use of alicyclic multicyclo species in component (B), Nobuhiko is silent with respect to compounds of formula (A-2).
Hikida teaches a functional film composition for use as a barrier for electronic elements [0003-0009]. Hikida teaches the barrier film includes a base material component, and teaches thermosetting epoxy resins as a suitable base material [0013, 0075]. Hikida teaches the epoxy resin comprises alicyclic epoxy compounds, wherein the following specific species are preferred as they provide a cured product having high hardness [p. 0087, 0103, 0104]
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In light of this, it would have been obvious to prepare the composition of Nobuhiko wherein component (B) comprises an alicyclic epoxy compound as taught by Hikida (such as those of formula A-2) as Hikida teaches they provide a cured product with high hardness. And Nobuhiko teaches film hardness improves reliability of sealing [p. 0102]
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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