DETAILED ACTION
Applicant’s amendment dated 5 December 2025 is hereby acknowledged. Claims 1-9 as amended are pending, with claims 7 and 8 withdrawn. All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 5 December 2025. For this reason, the present action is properly made final.
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.
Claim(s) 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016-129231 A (“Morita”) as evidenced by WO 2022/138747 A1.
The additional reference is used in this case, only to demonstrate that a certain property is inherent. See MPEP 2131.01. A partial machine translation of WO 2022/138747 A1 is enclosed.
As to claims 1-4, Morita teaches a composition for film like adhesive (para. 0001), including an epoxy resin having the same proportion of EPPN-501H and YD-128 epoxy resins used in applicant’s specification. Morita teaches the use of phenoxy resin, exemplified by YP-70, in 30 parts with respect to 104 parts epoxy resin, or approximately 22 mass % with respect to the total of epoxy and phenoxy. Morita teaches a curing agent (para. 0084).
Morita teaches the presence of inorganic fillers, including inorganic fillers in the recited volume content required by claim 2 (para. 0096, table, all examples), having the recited particle diameter of claim 2 and Mohs hardness required by claim 3 (see para. 0084, 0089 for aluminum nitride, paras. 0092, 0094 for spherical silica and alumina).
Morita does not discuss the elastic modulus of the phenoxy resin. However, Morita teaches that preferred phenoxy resins include YP-50S, which as evidenced by Yamazaki, para. 0191, has an elastic modulus of 1.6 GPa, or 1600 MPa, which is within the recited range. It would be an obvious substitution to use phenoxy resins, including those having the recited elastic modulus as required by claims 1-4, as Morita teaches the same are preferred phenoxy resins.
Morita does not discuss the nanoindentation hardness and Young’s modulus of the film adhesive prior to curing as required by claim 1, nor the melt viscosity at 120 degrees C as required by claim 4, only stating the melt viscosity at a lower temperature. However, given that Morita suggests the same resin composition as both recited and as exemplified in applicant’s specification, in conjunction with a filler having the same loading amount, particle size, and Mohs hardness as recited, it is reasonable to presume that the resulting compositions have the same indentation hardness, Young’s modulus of an uncured adhesive and melt viscosity at 120 degrees C as recited.
As to claims 5 and 6, Morita teaches film like adhesives as required by claim 5, having the thickness required by claim 6 (para. 0084).
As to claim 9, Morita teaches that films of the adhesive may have a thickness of 10 to 150 micrometers (para. 0015), which includes thicknesses in the recited range, and thus films of the recited thickness are obvious as suggested by Morita.
Response to Arguments
Applicant's arguments filed 5 December 2025 have been fully considered but they are not persuasive. While not exemplified, Morita teaches the use of YP-50S, which has the recited modulus, and thus would be expected to provide the recited characteristics.
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 KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights