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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 2/17/2023 are accepted.
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 12, 14, and 18 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. The original disclosure does not contain support for the “silicon compound II” to have the claimed weight average molecular weights.
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.
Claim(s) 1-6, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP H10251516A (herein referred to as “Yang”) in view of Suzuki et al (US 2017/00009034).
Yang teaches a silane coupling agent comprising a silicon compound defined below and water, and having a concentration of the silicon compound of from 0.01 to 10 wt.%: (teaching “the concentration of the silane oligomer composition in the water or the water / alcohol solution can be arbitrarily selected depending on the purpose of use, but is generally 0.01 to 20 w / v%. Is preferred.”):
the silicon compound comprising a compound (I) represented by Formula (1) and a polycondensate of the compound (I) (see “Problem to be Solved” and 0005 teaching “The unreacted substances and low-condensation products remaining in A…”), wherein a ratio of contents of the compound (I) to a compound (II) is from 1/99 to 95/5 (teaching “the unreacted silane compound and a low condensate content of 20% or less”), the compound (II) being a polycondensate of the compound (I) and having a weight average molecular weight of from 200 to 10000 (teaching 250-5,000), Y represents a hydrocarbon group having from 1 to 10 carbons and containing a group reactive with organic matter (0008).
Yang teaches a method of manufacturing a silane coupling agent, the method comprising, by hydrolyzing a compound represented by Formula (2), obtaining a compound represented by Formula (1) in the presence of water (0021-0022; no solvent). Yang does not teach said reaction should occur a condition of pH 4 or lower. However, Suzuki teaches said reaction to form an alkoxysilane hydrolytic condensate is accomplished by keeping the temperature of the system to no higher than 20° C., adding the acid catalyst to adjust the pH to a range of 1.0 to 4.0 and preferably pH 1.5 to 3.0, and then mixing the alkoxysilane, to produce an alkoxysilane hydrolysate, and then further adjusting it so that the desired alkoxysilane hydrolytic condensates are present in the prescribed amounts (0123). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to hydrolyzing a compound represented by Formula (2) as taught in Yang at a pH of less than 4. The motivation for doing so would have been that Suzuki teaches such pH conditions are typical for such a reaction. The resulting composition reads on the silane coupling agent of claim 2 having a pH of 4 or lower.
With regards to claim 3, water evaporates much slower than n-butyl acetate, with a relative evaporation rate of approximately 0.30 (or 30%) compared to n-butyl acetate's rate of 1.00. Thus, it is understood to have an evaporation rate of 30 when the evaporation rate of butyl acetate is taken as 100. Alternatively, Yang teaches the composition further comprises a C1-C6 alcohol, which applicant discloses meets the claimed limitation.
With regards to claim 4, Yang teaches the composition further comprises a C1-C6 alcohol, which applicant discloses meets the claimed and SP limitations.
With regards to claim 5, Yang teaches the silane composition of claim 1 may be used as a surface treatment, herein understood to read on the claimed “surface modifier”.
With regard to claim 11, Yang teaches “the unreacted silane compound and a low condensate content of 20% or less” relative to the condensate. Said teaching is understood to anticipate the claimed teaching.
With regards to claims 12, Yang teaches the condensate compound II has a weight average molecular weight of 200 to 10000 and comprises 20% or less of the composition. Said teaching is understood to be sufficiently specific to read on the claimed range. Alternatively, Yang does not explicitly teach the claimed molecular weight range. However, Yang teaches the storage stability of the composite is dependent upon the molecular weight of the silicon compound. Thus, it would have been obvious to one of irnayr skill in the art at the time the invention was filed to optimize the molecular weight of the silicon compound in order to optimize the storage stability of the composition.
Claim(s) 7-10 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 109880583 (herein referred to as CN) in view of JP H10251516A (herein referred to as “Yang”) and Suzuki et al (US 2017/00009034).
With regards to claim 7, CN teaches a curable adhesive comprising and a silane coupling agent. The adhesive is useful for laminating chips or wafers to three dimensional laminates such as LED elements (herein understood to read on the claimed semiconductor device of claim 10). The curable composition comprise an epoxy group containing polyorganosilsequioxane (abstract).
CN teaches the adhesive may comprise a silane coupling agent, but does not teach the coupling agent should comprise the claimed silicon compound of claim 1. However, Yang teaches the claimed silane compound and teaches it can be used as a silane coupling agent. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the silane coupling agent of Yang as the silane coupling agent of the adhesive composition disclosed in CN. The motivation for doing so is that the courts have held it is prima facie obvious to substitute one equivalent component for another (See MPEP 2144.06).
Yang teaches a method of manufacturing a silane coupling agent, the method comprising, by hydrolyzing a compound represented by Formula (2), obtaining a compound represented by Formula (1) in the presence of water (0021-0022; no solvent). Yang does not teach said reaction should occur a condition of pH 4 or lower. However, Suzuki teaches said reaction to form an alkoxysilane hydrolytic condensate is accomplished by keeping the temperature of the system to no higher than 20° C., adding the acid catalyst to adjust the pH to a range of 1.0 to 4.0 and preferably pH 1.5 to 3.0, and then mixing the alkoxysilane, to produce an alkoxysilane hydrolysate, and then further adjusting it so that the desired alkoxysilane hydrolytic condensates are present in the prescribed amounts (0123). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to hydrolyzing a compound represented by Formula (2) as taught in Yang at a pH of less than 4. The motivation for doing so would have been that Suzuki teaches such pH conditions are typical for such a reaction. The resulting composition reads on the silane coupling agent of claim 2 having a pH of 4 or lower.
With regard to claim 8, Yang teaches the silane composition is a functional additive, functioning as a coupling agent, but does not teach the silicon compound should be added in amounts from 0.01 to 40 parts by weight per 100 parts by weight of the curable compound. However, coupling agents are known in the art to be result effective variables that control the adhesion and distribution between two phases of a composite. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of coupling agent added to the composition of CN. The motivation for doing so would have been control the adhesion and distribution between two phases of a composite.
With regards to claim 9, CN teaches a laminate having a configuration in which a wafer and a wafer, a chip and a chip, or a wafer and a chip are laminated via the adhesive described in claim 7.
With regards to claim 10, CN teaches the adhesive is useful for laminating chips or wafers to three dimensional laminates such as LED elements (herein understood to read on the claimed semiconductor device of claim 10).
With regards to claim 13, With regard to claim 11, Yang teaches “the unreacted silane compound and a low condensate content of 20% or less” relative to the condensate. Said teaching understood to anticipate the claimed teaching.
With regards to claims 14, and 18, Yang teaches the condensate compound II has a weight average molecular weight of 200 to 10000 and comprises 20% or less of the composition. Said teaching is understood to be sufficiently specific to read on the claimed range. Alternative, Yang teaches the storage stability of the composite is dependent upon the molecular weight of the silicon compound. Thus, it would have been obvious to one of irnayr skill in the art at the time the invention was filed to optimize the molecular weight of the silicon compound in order to optimize the storage stability of the composition.
With regards to claim 15, CN teaches the curable compound is an epoxy group-containing polyorganosilsesquioxane.
With regards to claim 16, CN teaches mixing the silicon coupling agent and the curable adhesive compound:
With regards to claim 17, Yang teaches “the unreacted silane compound and a low condensate content of 20% or less” relative to the condensate. Said teaching understood to anticipate the claimed teaching.
With regard to claim 19, CN teaches the curable compound is an epoxy group-containing polyorganosilsesquioxane.
With regards to claim 20, CN teaches a method comprising bonding a wafer and a wafer, a chip and a chip, or a wafer and a wafer together using the adhesive described in claim 7.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Rejection under 35 U.S.C. § 112(b)
With regards to the rejection of claims 1-20 under 35 U.S.C. § 112(b) as being indefinite. This rejection is respectfully traversed because the claims have been amended to correct each of the deficiencies specifically pointed out by the Examiner. Accordingly, said rejections are withdrawal.
Rejection under 35 U.S.C. § 102
With regards to the rejection of claims 1, 3-5, 11, and 12 under 35 U.S.C. § 102(a)(1) as being anticipated by Yang (JP H10251516A), applicant argues are noted but are moot in view of the new grounds of rejection.
Rejections under 35 U.S.C. § 103
With regards to the 35 U.S.C. § 103 rejection based upon Yang in view of Suzuki (US 2017/00009034), Applicant argues the specification demonstrates that achieving compound (I) requires maintaining a sufficiently high proportion of water during the initial stage of hydrolysis, rather than merely the presence of water. Specifically, applicant argues Example 1 shows that hydrolysis conducted with a high water content and without the presence of an organic solvent yields a 100% conversion rate, thereby producing a complete hydrolysis product. Applicant argues as documented in the “Experimental Results Certificate)” submitted with the response, comparative Example 1 demonstrates the criticality of limiting organic solvent content during the initial hydrolysis stage and that a high water content alone is insufficient and that controlling the solvent proportion during the initial hydrolysis stage is essential to obtain compound (I) and to satisfy the claimed [compound (I)/compound (II)] ratio.
Applicant contends Yang teaches a fundamentally different approach, using 0.6-2 moles of water per mole of silane compound and intentionally limits the effective water concentration during hydrolysis by adding water dropwise into a methanol solution of the silane. Applicant argues this process is expressly designed to selectively form partially hydrolyzed intermediates, such as monosilanols, rather than a fully hydrolyzed product. Said argument is noted but is not persuasive. The examiner initially notes that Yang does not teach methanol solution is required during the hydrolysis reaction but may be utilized if the silane compound is non-water soluble. Furthermore, the examiner cannot find a teaching in Yang suggesting the process is “expressly designed” to selectively form partially hydrolyzed intermediates. Applicant is requested to provide a citation for said teaching so it can be fully considered.
Applicant argues Suzuki likewise teaches the preparation of partially hydrolyzed alkoxysilanes in the presence of organic solvents. Specifically, applicant contends neither Yang nor Suzuki discloses or suggests reaction conditions that maintain a sufficiently high effective water proportion during the initial hydrolysis stage while simultaneously limiting organic solvent content to 0.2 parts by weight or less per part by weight of silane compound. In support of said argument, applicant argues Comparative Example 1 (of the “experimental Results Certificate”) demonstrates such systems are incapable of producing a complete hydrolysis product. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. The examiner notes that “when any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under 37 CFR 1.132. The “Experimental Results Certificate” does not meet the formal requirements of a declaration as set forth in 37 CFR 168 because it does not warn the signee that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 ) and may jeopardize the validity of the application or any patent issuing thereon and it does not set forth in the body of the declaration that all statements made of the signee's own knowledge are true and that all statements made on information and belief are believed to be true. Thus, said data cannot formally be considered. Furthermore, it is not immediately clear that the reaction conditions set forth in the comparative example are exemplary of the closest prior art.
For the reasons set forth above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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