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 .
Election/Restrictions
1. Applicant's election with traverse of Group III, claims 28-35 in the reply filed on 10/15/25 is acknowledged. The traversal is on the ground(s) that search required for Groups I-VI would overlap and thus not create a serious burden for the Examiner. This is not found persuasive because as previously set forth, unity of invention does not exist. Though the groups share an identical or corresponding technical feature of a polyurethane comprising a phenolic hydroxyl group, this technical feature could have been easily derived by one of ordinary skill in the art from the cited prior art of JP 2009-19081 and thus, does not improve upon the prior art in its entirety. Accordingly, the claimed inventions are not a group of claims, which falls within a single general inventive concept. Additionally, the Examiner is of the position that search required for the composition, methods and articles are not overlapping with respect to search strings/classes and subclasses.
The requirement is still deemed proper and is therefore made FINAL.
2. Claims 22-27 and 36-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected composition, methods and wire, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/15/25.
Claim Objections
3. Claim 28 is objected to because of the following informalities: Claim 28 depends from non-elected claim 22. Appropriate correction is required.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 28-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013093564 A in view of KR20090006011A.
The published JP reference teach an adhesive paste comprising a polyurethane and silver powder as a filler (see translated description). The published JP reference teach resin paste for die bonding which makes it possible to form, by a printing technique, a die bonding layer meeting all the requirements of having low stickiness, a low elastic modulus and a bonding strength to a high standard (see translated description). The resin paste for die bonding comprises: a butadiene resin (A); a thermosetting constituent (B); a filler (C); a rubber-like filler (D); and a solvent (E) (see translated description). Said thermosetting constituent (B) is a polyurethane resin. The published JP reference teach that these resins can exhibit excellent adhesive strength at high temperatures, particularly in combination with polyimide resins. A thermosetting resin can be used individually or in combination of 2 or more types (see translated description). With regard to the specific filler of claims 33 and 34, the published JP reference teaches including conductive (metal) fillers such as silver powder, gold powder, and copper powder, and inorganic fillers such as silica, alumina, titania, glass, iron oxide, and ceramic. Among these fillers, conductive (metal) fillers such as silver powder, gold powder, and copper powder are added for the purpose of imparting conductivity, heat conductivity, or thixotropic property to the adhesive (see translated description). With regard to claim 35, the average particle size of the filler is preferably 25 μm or less, more preferably 5 μm or less, from the viewpoint of avoiding filler attack (see translated description). With regard to claim 32, the blending amount of the filler is preferably 1 to 100 parts by mass and more preferably 2 to 50 parts by mass with respect to 100 parts by mass of the component (A). By setting the blending amount of the filler to 1 part by mass or more, sufficient thixotropy (thixotropy index: 1.5 or more) can be imparted to the paste. In addition, by making the blending amount of the filler 100 parts by mass or less, the adhesiveness is not impaired (see translated description).
The published JP reference does not teach the specifically claimed polyurethane compounds of claims 28-31.
With regard to claims 28-31, The cited KR reference discloses the use of hydroxyphenylethyl alcohol to obtain a urethane resin having a phenolic hydroxyl group (see Synthesis Example 1). The cited KR reference is different from claim 28 in that it does not explicitly disclose general formula (1A) of non-elected claim 22. However, one of ordinary skill in the art could have easily understood that a polyurethane having a phenolic hydroxyl group of the general formula (1A), wherein Az is an ethylene group, Z is a single bond, ZZ is a benzene ring, ka is 0, ke is 0, and kd is 1, can be obtained using hydroxyphenylethyl alcohol above, and thus, could have easily derived the polyurethane comprising a phenolic hydroxyl group represented by the general formula (1A). Presently, the Examiner does not see a patently distinguishable difference between the claimed polyurethane compounds of claims 28-31 and the polyurethane compounds of the published KR reference. Applicant’s are invited to prove otherwise. Said resin exhibits excellent adhesiveness to a base material, bending resistance, low warpage property, solder heat resistance, electroless gold plating resistance, electrical insulation (see translated description).
Therefore, motivated by the desire to provide a conductive adhesive paste that exhibits excellent adhesiveness to a base material, bending resistance, low warpage property, solder heat resistance, electroless gold plating resistance and/or electrical insulation it would have been obvious to one of ordinary skill in the art to formulate the resin paste of the published JP reference with specific polyurethane compounds of the published KR reference.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-272-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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