DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 15, 2026 has been entered.
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, 4-6, 8-12, and 14-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (US 2011/0031527 A1) in view of Satou (US 2019/0153215 A1).
Regarding claims 1, 6, and 11, Kotani teaches an epoxy resin molding material (Abstract) containing an epoxy resin (Abstract), a curing agent (Abstract), and one or more inorganic fillers ([0115] and pigments ([0111]), wherein the pigment and inorganic fillers may comprise the same materials ([0115]). Kotani teaches that the inventive composition is useful as a sealing material for photo-semiconductors, which are electrical components ([0128]).
The inorganic filler may comprise, among others, calcium titanate and strontium titanate ([0115]) as well as alumina ([0111] and [0115]) and silica ([[0115]). Kotani does not specify the claimed volumetric ranges of each component within the entire inorganic filler. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Kotani discloses calcium titanate, alumina, and silica as equally suitable alternatives to one another and therefore recognizes the equivalence of the two solvents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine calcium titanate, alumina, and silica in equal amounts (i.e. in a 1:1: volumetric ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. An inorganic filler containing these fillers in these ratios would comprise 33% by volume of calcium titanate, which overlaps the claimed range of “30% by volume or more and 60% by volume or less,” establishing a prima facie case of obviousness. Additionally, an inorganic filler containing these fillers in these ratios would comprise 0% by volume of strontium titanate, and therefore the cumulative amount of calcium titanate and strontium titanate particles would be 33% by volume, which overlaps the claimed range of “30% by volume or more and 60% by volume or less, establishing a prima facie case of obviousness. An inorganic filler containing these fillers contains both silica and alumina particles, and therefore meets the limitation requiring at least one of them be present in the inorganic filler.
Kotani teaches that the pigment and filler (which together read on the claimed “inorganic filler” as described because Kotani teaches that the pigment and filler may be formed from the same materials, c.f. Kotani [0015]) may together comprise between 10 and 85 vol% of the total thermosetting resin composition ([0113]), which encompasses the claimed range of “40% by volume to 85% by volume,” establishing a prima facie case of obviousness.
Regarding the limitation requiring that the calcium titanate and strontium titanate particles are non-calcined, Kotani teaches the use of calcium and strontium titanates but makes no mention of calcined variants thereof. The calcium and strontium titanate materials within Kotani therefore represent genera of materials of which non-calcined variants are specie of. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize non-calcined calcium and strontium titanates within the composition of Kotani. Furthermore, assuming arguendo that the incorporation of non-calcined versions is not obvious based on the generic disclosure of calcium and strontium titanates, Kotani particularly points out calcined versions of other materials within the category of suitable inorganic fillers (c.f. [0115], p. 9, right column, line 5, wherein Kotani specifies the use of calcined clays). It would therefore be the Office’s position that Kotani has drafted its disclosure with specificity in regard to whether or not the inventive inorganic fillers are calcined or not. Therefore, the disclosure of strontium and calcium titanates would be viewed as having been intentionally drafted to refer to non-calcined versions thereof, thereby meeting the claimed limitation.
Kotani teaches the incorporation of a reactive curing agent for the epoxy resin ([0156]), but is silent with regard to the claimed “active ester compound” because the curing agent of Kotani operates via acid-anhydride functional end-groups instead of carboxylic acid-ester functional end-groups required by the claimed “active ester compound” as evidenced by the controlling definition provided by the instant Specification (c.f. instant Specification at [0023], wherein the “active ester compounds” are explained as those having ester groups which react with the epoxy functional groups of the epoxy resin to produce a thermoset product).
In the same field of endeavor, Satou teaches an active ester composition (Abstract), useful for curing epoxy resins ([0073]-[0074]) and teaches that the inventive composition is useful for encapsulating semiconductors in electronics applications ([0083]).
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the active ester compounds of Satou for the anhydride-based epoxy curing agents of Kotani, as both components are recognized as suitable for curing epoxy resins for electronics sealing applications.
Regarding the claimed structural limitations of the claimed “active ester compound,” Satou teaches that the active ester composition may include an active ester compound (A’) which contains the reaction product of a compound having one phenolic hydroxy group, a molecule having two or more phenolic hydroxyl groups, and an aromatic polycarboxylic acid or acid halide ([0026]). Satou further states that the compound having two or more phenolic hydroxy groups may be formed from a compound having one phenolic hydroxy group and a compound (x) which includes chemical formula (x-1) ([0028]).
The component (A’) within Satou reads on the claimed “Structural Formula (1)” because it may be identical thereto: component (x-1) of Satou is identical to the polycyclic core within “Structural Formula (1),” the component containing a single phenolic hydroxy group (which would react with component (x-1)) may be a substituted phenol wherein the substituent is chosen inter alia from methyl or ethyl groups ([0016]), and the aromatic polycarboxylic acid overlaps with the claimed component “Y.” Finally, as described above, said active ester component of Satou contains compounds having only one phenolic hydroxyl group, which reads on the claimed substituent “X.”
Regarding claims 4 and 14, Kotani teaches that the inorganic filler may contain alumina particles ([0111] and [0115]).
Regarding claims 5 and 15, Kotani is silent with regard to the filler having the claimed dielectric constant. Nevertheless, Kotani reads on a filler composition which meets all of the claimed compositional limitations, containing all of the same components within the claimed ratios. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dielectric constant will therefore necessarily be present in the filler of Kotani as applied to claim 1 above.
Regarding claims 8, 12, and 16, the claims are drawn to an intended use of the resin composition of claims 1 and 11. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Kotani as applied to claims 1 and 11 above also reads on claims 8 and 12.
Regarding claims 9 and 17, Kotani teaches a photo-semiconductor element of the inventive composition (c.f. sheet 4, figure 4 and [0066]), containing the inventive resin which is a sealing resin within the device ([0066], part 101]), and teaches the fabrication of said semiconductor element onto a lead frame ([0248]), which reads on the claimed “support member” because the instant Specification states that a lead frame is an appropriate support member (see instant Specification at [0094]).
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Figure 4 of Kotani (US 2011/0031527 A1)
Regarding claims 10 and 18, Kotani teaches that the photo-semiconductor element contains a wire ([0066], part 102), which reads on the claimed “antenna” because the instant Specification states that the antenna may be wiring (see instant Specification at [0095]).
Regarding claim 19, Kotani teaches an epoxy resin molding material (Abstract) containing an epoxy resin (Abstract), a curing agent (Abstract), and one or more inorganic fillers ([0115] and pigments ([0111]), wherein the pigment and inorganic fillers may comprise the same materials ([0115]). Kotani teaches that the inventive composition is useful as a sealing material for photo-semiconductors, which are electrical components ([0128]).
The inorganic filler may comprise, among others, calcium titanate and strontium titanate ([0115]) as well as alumina ([0111] and [0115]) and silica ([[0115]). Kotani does not specify the claimed volumetric ranges of each component within the entire inorganic filler. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Kotani discloses calcium titanate, alumina, and silica as equally suitable alternatives to one another and therefore recognizes the equivalence of the two solvents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine calcium titanate, alumina, and silica in equal amounts (i.e. in a 1:1: volumetric ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. An inorganic filler containing these fillers in these ratios would comprise 33% by volume of calcium titanate. Additionally, An inorganic filler containing these fillers in these ratios would comprise 0% by volume of strontium titanate, and therefore the cumulative amount of calcium titanate and strontium titanate particles would be 33% by volume, which overlaps the claimed range of “30% by volume or more and 60% by volume or less, establishing a prima facie case of obviousness. An inorganic filler containing these fillers contains both silica and alumina particles, and therefore meets the limitation requiring at least one of them be present in the inorganic filler.
Kotani teaches the incorporation of a reactive curing agent for the epoxy resin ([0156]), but is silent with regard to the claimed “active ester compound” because the curing agent of Kotani operates via acid-anhydride functional end-groups instead of carboxylic acid-ester functional end-groups required by the claimed “active ester compound” as evidenced by the controlling definition provided by the instant Specification (c.f. instant Specification at [0023], wherein the “active ester compounds” are explained as those having ester groups which react with the epoxy functional groups of the epoxy resin to produce a thermoset product).
As described above, Satou teaches the claimed active ester component.
Regarding the limitation requiring that the calcium titanate and strontium titanate particles are non-calcined, Kotani teaches the use of calcium and strontium titanates but makes no mention of calcined variants thereof. The calcium and strontium titanate materials within Kotani therefore represent genera of materials of which non-calcined variants are specie of. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize non-calcined calcium and strontium titanates within the composition of Kotani. Furthermore, assuming arguendo that the incorporation of non-calcined versions is not obvious based on the generic disclosure of calcium and strontium titanates, Kotani particularly points out calcined versions of other materials within the category of suitable inorganic fillers (c.f. [0115], p. 9, right column, line 5, wherein Kotani specifies the use of calcined clays). It would therefore be the Office’s position that Kotani has drafted its disclosure with specificity in regard to whether or not the inventive inorganic fillers are calcined or not. Therefore, the disclosure of strontium and calcium titanates would be viewed as having been intentionally drafted to refer to non-calcined versions thereof, thereby meeting the claimed limitation.
Regarding claims 20 and 23, Kotani teaches that the inorganic filler may contain alumina and silica particles ([0111] and [0115]).
Regarding claim 21, Kotani teaches that the pigment and filler (which together read on the claimed “inorganic filler” as described because Kotani teaches that the pigment and filler may be formed from the same materials, c.f. Kotani [0015]) may together comprise between 10 and 85 vol% of the total thermosetting resin composition ([0113]), which encompasses the claimed range of “40% by volume to 85% by volume,” establishing a prima facie case of obviousness.
Regarding claim 22 and 25, the claims are drawn to an intended use of the resin composition of claim 19. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Kotani as modified and as applied to claims 19 above also reads on claims 22 and 25.
Regarding claim 24, Kotani is silent with regard to the filler having the claimed dielectric constant. Nevertheless, Kotani teaches a filler composition which meets all of the claimed compositional limitations, containing all of the same components within the claimed ratios. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dielectric constant will therefore necessarily be present in the filler of Kotani as applied to claim 19, above.
Regarding claim 26, Kotani teaches a photo-semiconductor element of the inventive composition (c.f. sheet 4, figure 4 and [0066]), containing the inventive resin which is a sealing resin within the device ([0066], part 101]), and teaches the fabrication of said semiconductor element onto a lead frame ([0248]), which reads on the claimed “support member” because the instant Specification states that a lead frame is an appropriate support member (see instant Specification at [0094]).
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Figure 4 of Kotani (US 2011/0031527 A1)
Regarding claims 27, Kotani teaches that the photo-semiconductor element contains a wire ([0066], part 102), which reads on the claimed “antenna” because the instant Specification states that the antenna may be wiring (see instant Specification at [0095]).
Response to Arguments
Applicant's arguments filed April 15, 2026 have been fully considered but they are not persuasive.
Applicant argues that Satou fails to teach the newly specified active ester agents. However, as described above, Satou teaches an active ester component (A’) which does read on the claimed structure of “Structural Formula (1).” Applicant refers to the exemplary structure within Satou at [0019]-[0020], however this refers to an exemplary formula of active ester component (A), not active ester component (A’). Furthermore, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Satou therefore discloses the claimed species regardless of the preference for a specific species which falls outside of the scope of the claims.
Applicant specifically states that Satou fails to disclose a phenylene group having R1, however, as described above, Satou teaches the incorporation of a compound having a single phenolic hydroxy group, which may be a substituted phenol ([0016]), which may be substituted with alkyl chains including methyl and ethyl groups ([0016]), which read on the said phenylene group and “R1.”
Applicant finally states that the prior art fails to contemplate the advantages recognized by the Applicant; however, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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