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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June has been entered.
Response to Amendment
Applicant’s claim amendments and remarks filed June 12, 2026 are entered and have
been fully considered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9-12, 21-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 9-12 state the primer is “substantially without containing an inorganic filler” but the instant specification does not support this limitation. The instant specification where applicant noted support in the remarks, ¶¶[0004,0006, and 0010] states the primer is “without the inorganic filler”. The specification fails to specifically disclose “substantially without”. This is a new matter rejection.
Claims 21-35 are rejected due to their dependency on claim 9.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 9-10, 21-23, 25-27, 29-30, 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al, US-20200385512 in view of the ACS article, “Highly Oriented Liquid Crystalline Epoxy Film: Robust High Thermal Conductive Ability,” by Tanaka et al (submitted with previous non-final dated 7/8/2025), further in view of Kitae et al US20050098338A1.
Regarding claims 9-10, Fukuda teaches an epoxy composition comprising a liquid crystalline structure and a curing agent, ¶[0009, 0027]. In example 1, (4-{4-(2,3-epoxypropoxy)phenyl}cyclohexyl-4-(2,3-epoxypropoxy)benzoate is reacted with 4,4’-biphenol to form a prepolymer ¶[0174], then 3,3’diaminodiphenylsulfone is added as curing agent to obtain the LC epoxy resin composition ¶[0175], and example 1 does not contain any inorganic filler. Fukuda teaches that the liquid crystalline epoxy resin is used as a coating for electronic appliance and in composite materials, ¶¶[0001, 0155], which involves coating a substrate and heat curing the liquid epoxy ¶[0012], , which reads on the substrate equipped with a primer layer of claim 9 and the method for producing a substrate equipped with a primer layer of claim 10. Fukuda does not explicitly state the liquid epoxy is a primer, but a primer is any substance used to prepare a surface for further layers and all that is required by the claim is that a layer of the liquid crystalline epoxy with no inorganic filler be applied to a substrate and heat cured, which Fukuda satisfies.
Fukuda does not teach applying the LC epoxy composition as a primer layer to a substrate with a surface free energy (SFE) of 50 mN/m or higher and a surface roughness of 1-25 µm.
Tanaka et al discloses a composition comprising a liquid crystalline monomer with a structure that corresponds to applicant’s (M-2) of instant claim 2, and a curing agent, see abstract and section 2.3, Fig. 1. It is disclosed that a smectic phase with homeotropic alignment is formed on the glass substrates that have surface free energies of 71.3 mN/m and 72.7 mN/m, but only forming a planar alignment on substrates with SFE 46.3 mN/m, (abstract). These surface energies of the substrates are accomplished by surface treatment, section 2.2. This homeotropic alignment resulted in remarkable thermal conductivity measurements compared to thermosetting polymers and ceramic glass, which allows the LC epoxy resin to be applied to high-thermal conductive adhesives (which is a type of primer) and packaging materials in electrical and electronic devices, (abstract).
Kitae discloses an electronic part and electronic part mounting element comprising an external electrode to which a conductive adhesive is applied so that it can be mounted to a circuit board, abstract. The surface roughness Ra of the external electrode surface is 0.1-10 µm, overlapping with the claimed range, which enhances the adhesive strength of the conductive adhesive, abstract and ¶[0024]. The conductive adhesives are epoxy based thermosetting resins, ¶¶[0063-0064], and Kitae found that having the surface roughness Ra of the sintered silver or copper electrodes greater than 0.1 µm and preferably greater than 1 µm resulted in enhanced adhesion strength, as shown in table 2 page 7 and explained in ¶[0108]. A roughness greater than 10 µm results in poor moisture resistance ¶[0115], therefore a roughness of 0.1-10 µm is optimal for enhanced adhesion while maintaining moisture resistance.
Fukuda and Tanaka are analogous to the claimed invention because both are in the field of liquid crystalline epoxy resin compositions for electronic parts.
Kitae is analogous to the claimed invention because it is in the field of electronic parts and their methods of making comprising epoxy resins and the ideal surface conditions for assembling said electronic part.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Fukuda but surface treating the substrate to have a surface free energy of 71.3 or 72.7 mN/m because Tanaka teaches that surfaces which are treated to have the above surface energies produce homeotropic alignment of the LC epoxy monomers and remarkable thermal conductivity is produced and further a surface roughness of 0.1-10 µm because Kitae discloses that this amount of surface roughness achieves an enhanced adhesion strength while maintaining moisture resistance for electronic part assembly.
Regarding claim 21-23, 25-27, 29-30, 32-33, Fukuda teaches an epoxy composition comprising a liquid crystalline structure and a curing agent, ¶[0009, 0027]. In example 1, (4-{4-(2,3-epoxypropoxy)phenyl}cyclohexyl-4-(2,3-epoxypropoxy)benzoate (same monomer that corresponds to structure M-1) is reacted with 4,4’-biphenol to form a prepolymer ¶[0174] (which reads on claim 25), then 3,3’diaminodiphenylsulfone is added as curing agent (reads on claims 22, 26, and 29) to obtain the LC epoxy resin composition ¶[0175]. Table 1, page 15, shows that example 1 has a smectic and nematic structure and a period length of 2.7 nm, which reads on claims 23, 27, 30, and 32-33.
Regarding claim 35, Fukuda teaches that the LC epoxy resin is for an electronic product ¶¶[0007, 0155]. Fukuda does not teach applying the resin to a metal substrate.
Kitae discloses the electrodes are composed of metals such as silver, gold, platinum, zinc, or palladium, ¶[0052].
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Fukuda and apply it to a metal substrate that is part of an electronic device with the motivation of producing the predictable result of metal substrate with an epoxy coating because Kitae discloses the application of epoxy resins to metal substrates for electronic product assembly.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al in view of Tanaka et al, further in view of Kitae et al, further in view of Nishiyama et al US20140015000A1.
Regarding claims 11-12, modified Fukuda teaches the invention according to claims 9-10. The difference between those claims and claims 11-12 is the addition of an insulating member. Fukuda teaches the epoxy resin is used for producing an insulating coating or member for electronics, ¶¶[0038-0039, 0155], but is silent to the application of another insulating layer over the epoxy resin for a semiconductor device.
Nishiyama discloses a resin sheet laminate for a semiconductor device which comprises an epoxy resin sheet, abstract and ¶[0006]. The resin comprises epoxy monomers that may be mesogenic and form a crystalline structure when cured, ¶¶[0113-0114], and a curing agent, ¶[0078], similar to the epoxy composition of Fukuda. The resin sheet has excellent thermal conductivity and insulation properties, ¶[0006]. It is used in a multilayer laminate where the resin layer is formed from two layers together, which improves the insulation breakdown voltage as disclosed by Nishiyama, ¶¶[0142, 0149]. The resin laminate comprising a metal foil/plate with a first resin layer coated on it, and a polyethylene terephthalate film with a second resin layer coated on it, ¶[0151], then the laminate is formed when the resin layers are then layered on each other and thermally cured ¶¶[0153, 0160]. Therefore Nishiyama discloses forming multiple insulative resin layers within laminate structures for semiconductor devices, where one layer reads on the claimed primer and the second layer reads on the insulating member.
Fukuda and Nishiyama are analogous to the claimed invention because both are in the field of epoxy compositions for electronic devices.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Fukuda and apply a second layer of the insulating epoxy resin coating over a first layer of the insulating epoxy resin with the motivation of producing a laminate structure for a semiconductor device with improved insulation breakdown voltage as disclosed by Nishiyama.
Claims 24, 28, and 31, are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al in view of Tanaka et al, further in view of Kitae et al, further in view of Takezawa et al, US20180163015A1.
Regarding claims 24, 28, 31, and 34, modified Fukuda teaches the invention according to claim 9 as explained above. The LC epoxy resin may further comprise a solvent, ¶[0141] but does not teach specific solvents to use.
Takezawa discloses an LC epoxy composition and curing agent and discloses that the composition may further comprise a solvent for dissolving the LC monomer or decreasing the viscosity, ¶[0145]. A specific solvent of isobutyl alcohol is listed as a suitable solvent for dissolving the LC monomer.
Fukuda and Takezawa are analogous to the claimed invention because both are in the field of liquid crystalline epoxy compositions.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Fukuda incorporating isobutyl alcohol into the composition as the solvent because Takezawa discloses it as a suitable solvent for dissolving LC monomers and lowering the viscosity.
Claims 9-10, 11-12, 21-23, 29-30, 32-33, 35 are rejected under 35 U.S.C. 103 as being unpatentable over the ACS article, “Highly Oriented Liquid Crystalline Epoxy Film: Robust High Thermal Conductive Ability,” by Tanaka et al, in view of Kitae et al US20050098338A1.
Regarding claims 9-10, Tanaka teaches an epoxy composition comprising a liquid crystalline structure and a curing agent, abstract and section 2.3 Fig. 1, a. The liquid crystalline epoxy composition is prepared without inorganic fillers, and applied to substrates and heat cured, page 3 sec. 2.4 left and right columns, which reads on the substrate equipped with a primer layer of claim 9 and the method of producing the substrate of claim 10.
Tanaka teaches that a smectic phase with homeotropic alignment is formed on the glass substrates that have surface free energies of 71.3 mN/m and 72.7 mN/m, but only forming a planar alignment on substrates with SFE 46.3 mN/m, (abstract). These surface energies of the substrates are accomplished by surface treatment, section 2.2. This homeotropic alignment resulted in remarkable thermal conductivity measurements compared to thermosetting polymers and ceramic glass, which allows the LC epoxy resin to be applied to high-thermal conductive adhesives (which is a type of primer) and packaging materials in electrical and electronic devices, (abstract). The SFE of 71.3 mN/m and 72.7 mN/m read on the claimed >50mN/m SFE of the substrate surface.
Tanaka is silent to the surface roughness of the substrate.
Kitae discloses an electronic part and electronic part mounting element comprising an external electrode to which a conductive adhesive is applied so that it can be mounted to a circuit board, abstract. The surface roughness Ra of the external electrode surface is 0.1-10 µm, overlapping with the claimed range, which enhances the adhesive strength of the conductive adhesive, abstract and ¶[0024]. The conductive adhesives are epoxy based thermosetting resins, ¶¶[0063-0064], and Kitae found that having the surface roughness Ra of the sintered silver or copper electrodes greater than 0.1 µm and preferably greater than 1 µm resulted in enhanced adhesion strength, as shown in table 2 page 7 and explained in ¶[0108]. A roughness greater than 10 µm results in poor moisture resistance ¶[0115], therefore a roughness of 0.1-10 µm is optimal for enhanced adhesion while maintaining moisture resistance.
Tanaka is analogous to the claimed invention because it is in the field of liquid crystalline epoxy resin compositions for electronic parts.
Kitae is analogous to the claimed invention because it is in the field of electronic parts and their methods of making comprising epoxy resins and the ideal surface conditions for assembling said electronic part.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Tanaka but surface treating the substrate to have a surface roughness of 0.1-10 µm because Kitae discloses that this amount of surface roughness achieves an enhanced adhesion strength while maintaining moisture resistance for electronic part assembly.
Regarding claims 21-23, 29-30, 32-33, Tanaka teaches a composition comprising a liquid crystalline monomer with a structure that corresponds to applicant’s (M-2) and a curing agent, see abstract and section 2.3 Fig. 1, a. The curing agent is 1,5-Diaminonaphthalene also known as DAN (structure below), Fig. 1, b, and page 2 right column, which reads on claims 22 and 29.
a)
PNG
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200
400
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Greyscale
b) DAN
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200
400
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Greyscale
The LC epoxy monomer forms a smectic phase on a glass surface with a surface free energy of 71.3 mN/m, abstract and Table 3 page 4. The LC epoxy monomer mixed with the curing agent was applied to the glass substrate in the form of droplets to form a layer which then cured, page 4 right column, section 3.3, second paragraph. The smectic domains on the glass substrates have a periodicity of 23 Angstroms, which is 2.3 nm, for the G1 and G3 substrates, page 4 right column, section 3.3, second paragraph, which reads on claims 23, 30, 32-33.
Regarding claim 35, Tanaka teaches that the LC epoxy resin is for high thermal conductive adhesives and packaging materials in electric and electronic devices, abstract. Tanaka exemplifies a glass substrate but does not teach applying the resin to a metal substrate.
Kitae discloses the electrodes are composed of metals such as silver, gold, platinum, zinc, or palladium, ¶[0052].
It would have been obvious to a person having ordinary skill in the art before the effective date of the claimed invention to practice the invention of Tanaka and apply it to a metal substrate that is part of an electronic device with the motivation of producing the predictable result of a metal substrate with an epoxy adhesive because Kitae discloses the application of epoxy resin adhesives to metal substrates for electronic product assembly.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over the ACS article, “Highly Oriented Liquid Crystalline Epoxy Film: Robust High Thermal Conductive Ability,” by Tanaka et al, in view of Kitae et al US20050098338A1, further in view of Nishiyama et al US20140015000A1.
Regarding claims 11-12, modified Tanaka teaches the invention according to claims 9-10. The difference between those claims and claims 11-12 is the addition of an insulating member. Tanaka teaches applying the thermally conductive adhesive to a substrate for electronic parts, abstract, but is silent to the application of an insulating layer over the adhesive for a semiconductor device.
Nishiyama discloses a resin sheet laminate for a semiconductor device which comprises an epoxy resin sheet, abstract and ¶[0006]. The resin comprises epoxy monomers that may be mesogenic and form a crystalline structure when cured, ¶¶[0113-0114], and a curing agent, ¶[0078]. The resin sheet has excellent thermal conductivity, adhesive strength, and insulation properties ¶[0006], because of these properties it is used in the resin laminate comprising a metal foil/plate with a first resin layer coated on it, and a polyethylene terephthalate film with a second resin layer coated on it, ¶[0151], then the laminate is formed when the resin layers are then layered on each other and thermally cured ¶¶[0153, 0160]. The PET film reads on the insulating member of claims 11 and 12. Nishiyama discloses the laminate has excellent thermal conductivity and insulation properties ¶[0178] for semiconductors ¶[0182].
Tanaka and Nishiyama are analogous to the claimed invention because both are in the field of epoxy compositions for electronic devices.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective date of the claimed invention to practice the invention of Tanaka and use it in the resin laminate of Nishiyama in place of the disclosed epoxy resins, because the epoxy of Tanaka is a thermally conductive adhesive for electronic devices and the combination of known elements according to known methods is obvious when it does no more than yield the predictable result of a resin laminate with excellent thermal conductivity for semiconductors.
Response to Arguments
Applicant’s arguments filed 6/12/2026, with respect to the 103 rejections over Takezawa-1 and over Takezawa-2 have been fully considered and are persuasive. In light of the amended claims, the previous 103 rejections are withdrawn because the liquid crystalline compositions of Takezawa-1 and Takezawa-2 require substantial amounts of boron nitride particles and no longer read on the claims.
However, upon further consideration, new ground(s) of rejection are made under 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 8:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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