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 .
This communication responds to the amended claim set filed 10/08/2025. Claims 1-9 are current pending. Elected Claims 1-5 and 8 are under examination in this Office Action.
Non-elected claims 6-7 and 9 are withdrawn.
The 35 USC 103 rejections based on Horiguchi et al. (US2014/0187659 Al) dated 07/10/2025 are WITHDRAWN due to Applicant’s amendments and persuasive argument.
The 35 USC 103 rejection based on Yasutoshi et al. (JP2014162852 A) is MAINTAINED. The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 10/08/2025. In particular, claim 1 has been added the limitation that the weight ratio of the (meth)acrylic acid ester monomer (a) to the tackifier (b) is 90: 10 to 70:30.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a previous Office Action.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EP on 05/06/2020. It is noted, however, that applicant has not filed a certified copy of the 20173267.4 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
Claims 1-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yasutoshi et al.
( JP2014162852 A) in view of Herr et al. (US2002/0007042 Al).
Regarding Claims 1 and 4, Yasutoshi teaches a resin composition which is used as an adhesive (ab.) for electronics (lns64-71), wherein the resin composition comprising a monofunctional (meth)acrylate ( C), a photo-initiator (D) and a tackifier (E) (ab.). wherein "FA-512M" is a preferred monofunctional (meth)acrylate ( C) and Arakawa KE-100 is a preferred tackifier (E) (Table 1 and Table 2). As "FA-512M" reads on instant component (a) and Arakawa KE-100 reads on instant component (b), Yasutoshi teaches a resin comprising a monofunctional (meth)acrylate having a Tg of 500C or below and a tackifier having a Hazen unit color number of 300 or less. Yasutoshi further teaches the monofunctional (meth)acrylate ( C) is 10 – 80 mass% with respect to the total quantity of the resin composition (lns294-295) and the tackifier is 1 to 20% by mass based on the total quantity of the resin composition (lns325-327). Thus, Yasutoshi teaches the weight ratio of the monofunctional (meth)acrylate to tackifier is 80:1 to 10:20; equivalently, Yasutoshi teaches the weight ratio of the monofunctional (meth)acrylate having a Tg of 500C or below and the tackifier having a Hazen unit color number of 300 or less is 80:1 to 1:2; overlapping the claimed 90:10 to 70:30. Yasutoshi furthermore teaches the resin composition comprising acrylic polymer (A) and compound having two or more (meth)acryloyl groups (B). The component (A) and component (B) are acylate polymers which may or may not have a Tg of 500C or lower. Assuming both component (A) and component (B) are acrylate polymers having Tg of 500C or lower, Yasutoshi teaches the resin composition comprising about 0.1 to 5% by mass initiator (lns306-307), then the resin composition comprising 75% to 98.9% by mass acrylate polymers (A), (B) and (C ), consequently, the mass ratio of acrylate polymers to the tackifier is 98.9:1 to 75:20, overlapping the claimed 90:10 to 70:30. Additionally, Yasutoshi teaches the initiator includes radical initiators, such as 1-hydroxycyclohexyl phenyl ketone, etc.
The difference between Yasutoshi and instant Claim 1 is that Yasutoshi is silent on the adhesive
comprising a bismaleimide.
However, Herr teaches an adhesive composition for mounting electronic components comprising a maleimide compound, a vinyl compound and a curing initiator (ab.); wherein an exemplary maleimide compound has the structure of:
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([0091]). The structure reads on formula (I) of instant Claim 4. Herr further teaches that the adhesive composition is reworkable ([0006]). In view of such benefit, one ordinary skilled artisan would have been motivated before the effective filing date of instant application to incorporate the bismaleimide of Herr into the adhesive composition of Yasutoshi obtain a reworkable adhesive composition because a reworkable adhesive composition is highly desirable for the semiconductor industry ([0005]). Both Yasutoshi and Herr teach an adhesive composition for electronics. The compositions of Yasutoshi and Herr have common components, such as (meth)acrylate monomers and curing initiator, one ordinary skilled artisan would have reasonably expected success in the producing a reworkable adhesive composition, before the effective filing date of instant application.
Regarding Claims 2-3, Arakawa KE-100 has a Hazen unit color number of 300 or less, an acid value of 350 (KOH mg/g) or less, and a softening point of 150°C or lower.
Regarding Claim 5, Herr teaches that the composition comprising a conductive filler ([0017]).
Regarding Claim 8, Yasutoshi teaches a cured product of the adhesive composition (lns399-409).
Response to Arguments
Applicant’s arguments on Horiguchi in view of Keiko are persuasive. The rejections are WITHDRAWN.
Applicant's arguments on Yasutoshi in view of Herr have been fully considered but they are not persuasive. Although Yasutoshi does not list "FA-512M" and Arakawa KE-100 in one exemplary composition, "FA-512M" is a preferred monofunctional (meth)acrylate ( C) and Arakawa KE-100 is a preferred tackifier (E), as such, it would have been obvious to one ordinary skilled artisan to have a modified resin composition comprising FA-512M and Arakawa KE-100. Using KE-100 in Example 8 is a simple substitution of a preferred tackifier with another preferred tackifier. Yasutoshi discloses a composition comprising the preferred tackifier obtained desirable properties (Examples 1-9). Thus, one ordinary skilled artisan in the field would have reasonable expectation that the replacement of GER-90M with KE-100 would result in a resin composition having the desirable properties as well. Additionally, Yasutoshi lists only five preferred monofunctional (meth)acrylate ( C) candidates and only five preferred tackifier candidates. Therefore, combination of FA-512M and Arakawa KE-100 is 1 of 25 possibilities. Court has ruled that narrowing a group of 53 possibilities would be acceptable number to form "a reasonable expectation of success.” (see MPEP 2143E).
Examiner does not agree that the specific selection of a tackifier (b) with a Hazen unit colour number of 300 or less solves problems of traditional inhibitors which generally have an inhibitory effect on the polymerization of acrylic resin. As Applicant pointed out that the comparative example 3 comprising a tackifier (b) with a Hazen unit colour number of 10. Hazen unit colour number of 10 is in the scope of the claimed Hazen unit colour number of 300 or less. Additionally, the Comparative Ex 2 comprising tackifier with a Hazen unit colour number of 150 but resulted in inferior pull strength after curing comparing to Ex 1.
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763