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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 5, 6, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), in the view of Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose) and Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose).
Regarding Claim 1, Nishi teaches alumina powder comprising alumina particles, inorganic powder such as alumina [P7; L399], measured by the laser diffraction method [P5; L267] which are no particles smaller than 50 nm [P6; L368] lies in the claimed range; and an average sphericity of 0.85 or more [P9; L392] lies in the claimed range; the average particle size is 7 to 40 μm; diameter in the range of 3 to 70 μm [P3; L140] which indicates the concentration of particle diameter of 75 μm or more is 0%, lies in the claimed range.
Nishi does not explicitly teach the wherein a content ratio of an alumina particle having a particle diameter of 25 μm or more and less than 75 μm is 0.1% by mass or less. However, Inoue teaches the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 μm or more is less than 100 ppm based on the total mass. [0022], overlaps the claimed range.
Nishi and Inoue are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the alumina powder-based composition development toward semiconductor manufacturing. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Inoue and provide wherein said the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 5 μm or more is less than 100 ppm based on the total mass. [0022], and apply into the composition development. Doing so would facilitate the dispersion and missing process in forming the composite.
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). See MPEP § 2144.05.
Nishi is silent on wherein an amount of water included in the alumina powder measured by the following measurement method is 30 ppm or more and 500 ppm or less:
(Measurement method) 1 g of the alumina powder is heated to raise a temperature thereof from normal temperature to 900° C., and an amount of water generated at 500° C. or more and 900° C. or less is measured by the Karl Fischer coulometric titration method. However, Akio teaches Karl Fischer moisture content analyzer; and the amount of moisture after dehydration at 200°C to 900°C can be determined [P6; Para 2].
Nishi and Akio are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the silica powder-based composition and semiconductor materials development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Akio and provide wherein said Karl Fischer moisture content analyzer; and the amount of moisture after dehydration at 200°C to 900°C can be determined [P6; Para 2] as measurement, and apply into the composition further process and analysis. Doing so would lead to the moisture content quantification.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nishi and Inoue teach all of the claimed ingredients in the claimed amounts, and Akio teaches the composition as being made by a substantially similar process as the specific measurement and condition. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. amount of water included in the alumina powder, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claims 4, 8, Nishi teaches silica [P7; L399] and this resin composition is obtained by incorporating the inorganic powder of the present invention into a resin [P8; L484]
Regarding Claims 5, 6, Nishi teaches “This resin composition is obtained by incorporating the inorganic powder of the present invention into a resin” [P8; L484]; “epoxy resins having two or more epoxy groups in one molecule are preferred as resins for semiconductor encapsulation materials” [P8; L494]
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose) and Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose) as applied in claim 1, and in the further view of Sasaki (US20200181414, herein Sasaki).
Regarding Claim 3, Nishi and Inoue teach the alumina powder composition set forth in claim 1, Nishi further teaches “an average sphericity of 0.85 or more” [P9; L392] lies in the claimed range.
Nishi does not explicitly teach wherein a content ratio of an alumina particle having a particle diameter of 1 μm or less is 1% by mass or more and 35% by mass or less, however, Sasaki teaches “spherical oxide particles having an average particle diameter of 0.05 μm or more and 1.5 μm or less in an amount of 0.02% by mass or more and 15% by mass or less.” [0020] and “aluminum oxide particles are preferable as the spherical oxides” [0021] overlaps the claimed range.
Nishi and Sasaki are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the alumina powder-based functional composition and device development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Sasaki and provide wherein said “spherical oxide particles having an average particle diameter of 0.05 μm or more and 1.5 μm or less in an amount of 0.02% by mass or more and 15% by mass or less.” [0020] and “aluminum oxide particles are preferable as the spherical oxides” [0021] and apply into the composition development. Doing so would lead to the desired property of “able to obtain excellent properties for the preparation of a sealing material for fingerprint sensor protection” [0044] as taught by Sasaki.
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). See MPEP § 2144.05.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), in the view of Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose) and Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose) as applied in claim 6 and in the further view of Sasaki (US20200181414, herein Sasaki).
Regarding Claim 7, Nishi teaches “epoxy resins having two or more epoxy groups in one molecule are preferred as resins for semiconductor encapsulation materials” [P8; L494] as set forth in claim 6, Nishi is silent on the fingerprint authentication sensor, however, Sasaki teaches “obtain excellent properties for the preparation of a sealing material for fingerprint sensor protection” [0044]. Nishi and Sasaki are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the alumina powder-based functional composition and device development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Sasaki and provide wherein said the “obtain excellent properties for the preparation of a sealing material for fingerprint sensor protection” [0044]. Doing so would lead to the product development with specified device area as taught by Sasaki.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), in the view of Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose), Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose) and Yuji (JP2015193703, herein Yuji, a machine translation is being used for citation purpose).
Regarding Claims 9-10, Nishi teaches alumina powder comprising alumina particles, “inorganic powder such as alumina” [P7; L399] and “no particles smaller than 50 nm” [P6; L368] lies in the claimed range; and “an average sphericity of 0.85 or more” [P9; L392] lies in the claimed range; “the average particle size is 7 to 40 μm; diameter in the range of 3 to 70 μm” [P3; L140] overlaps the claimed range and also indicates the concentration of particle diameter of 75 μm or more is 0%, lies in the claimed range.
Nishi does not explicitly teach the wherein a content ratio of an alumina particle having a particle diameter of 25 μm or more and less than 75 μm is 0.1% by mass or less. However, Inoue teaches the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 μm or more is less than 100 ppm based on the total mass. [0022], overlaps the claimed range. Nishi and Inoue are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the alumina powder-based composition development toward semiconductor manufacturing. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Inoue and provide wherein said the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 5 μm or more is less than 100 ppm based on the total mass. [0022], and apply into the composition development. Doing so would facilitate the dispersion and missing process in forming the composite.
Nishi is silent on wherein an amount of water included in the alumina powder measured by the following measurement method is 30 ppm or more and 500 ppm or less:
(Measurement method) 1 g of the alumina powder is heated to raise a temperature thereof from normal temperature to 900° C., and an amount of water generated at 500° C. or more and 900° C. or less is measured by the Karl Fischer coulometric titration method. However, Akio teaches Karl Fischer moisture content analyzer; and the amount of moisture after dehydration at 200°C to 900°C can be determined [P6; Para 2].
Nishi and Akio are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the silica powder-based composition and semiconductor materials development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Akio and provide wherein said Karl Fischer moisture content analyzer; and the amount of moisture after dehydration at 200°C to 900°C can be determined [P6; Para 2] as measurement, and apply into the composition further process and analysis. Doing so would lead to the moisture content quantification.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nishi and Inoue teach all of the claimed ingredients in the claimed amounts, and Akio teaches the composition as being made by a substantially similar process as the specific measurement and condition. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. amount of water included in the alumina powder, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Nishi is silent on the claimed concentrations of the fillers and resin, however, Yuji teaches “alumina powder (B) is preferably 40% by weight or more” [0013] overlaps the claimed range, wherein the “resin (A)” [0013] is 60% or less, which overlaps the claimed range. “silica, 0 to 50 wt %” [0025] overlaps the claimed range.
Nishi and Yuji are both considered to be analogous to the claimed invention because they are in the same field of silica, alumina powder-based functional epoxy resin composition and device development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Yuji and provide wherein said the concentrations of the fillers and resin. Doing so would lead to the desired property of “the cured product and cured film obtained from the resin composition have both high thermal conductivity and insulating properties, and have excellent heat dissipation properties and high voltage resistance properties.” [0015] as taught by Yuji.
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). See MPEP § 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose), Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose) and Yuji (JP2015193703, herein Yuji, a machine translation is being used for citation purpose) as applied in claim 9, and in the further view of Sasaki (US20200181414, herein Sasaki).
Regarding Claim 11, Nishi, Inoue and Yuji teach the alumina powder composition set forth in claim 9, an average sphericity of an alumina particle having a projected area equivalent circle diameter of 50 nm or more and 1 μm or less as determined by microscopy is 0.80 or more. “no particles smaller than 50 nm” [P6; L368] overlaps the claimed range; and “an average sphericity of 0.85 or more” [P9; L392] lies in the claimed range.
Nishi does not explicitly teach wherein a content ratio of an alumina particle having a particle diameter of 1 μm or less is 1% by mass or more and 35% by mass or less, however, Sasaki teaches “spherical oxide particles having an average particle diameter of 0.05 μm or more and 1.5 μm or less in an amount of 0.02% by mass or more and 15% by mass or less.” [0020] and “aluminum oxide particles are preferable as the spherical oxides” [0021] overlaps the claimed range. Nishi and Sasaki are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the alumina powder-based functional composition and device development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nishi to add the teachings of Sasaki and provide wherein said the size and range of alumina and apply into the composition development.
Doing so would lead to the desired property of “able to obtain excellent properties for the preparation of a sealing material for fingerprint sensor protection” [0044] as taught by Sasaki.
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). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 8/19/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nishi (JP2004059343, herein Nishi, a machine translation is being used for citation purpose), Inoue (JP2016079061, herein Inoue, a machine translation is being used for citation purpose) and Akio (JP4240796, herein Akio, a machine translation is being used for citation purpose).
In this case, the newly added reference_ Inoue teaches the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 μm or more is less than 100 ppm based on the total mass. [0022], overlaps the claimed range.
Another newly added reference_ Akio teaches Karl Fischer moisture content analyzer; and the amount of moisture after dehydration at 200°C to 900°C can be determined [P6; Para 2].
In response to the applicant’s argument that “Nishi teaches away from a content ratio of an alumina particle having a particle diameter of 25-75 m to 0.1% by mass or less in the inorganic powder.”, the argument is not persuasive.
In fact, Nishi teaches alumina powder comprising alumina particles, inorganic powder such as alumina [P7; L399], fall into different particle size ranges including: 15 μm or more and less than 30 μm, and in the range of 0.2 μm or more and less than 1.5 μm, 3 μm or more and less than 15 μm [P3; L143-145], hence, Nishi does not teach away from the instant applicant. Nishi is silent on the alumina particle having a particle diameter of 25 μm or more and less than 75 μm is 0.1% by mass or less, however, the newly added reference_Inoue teaches the inorganic filler alumina [0025] the mass of coarse particles having a particle size of 5 μm or more is less than 100 ppm based on the total mass. [0022], overlaps the claimed range.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767