Attorney’s Docket Number: FP20-0454-00US-HTC
Filing Date: 3/2/2023
Claimed Priority Date: 9/16/2020 (PCT/JP2020/035093)
Inventor: Akiyoshi
Examiner: Marcos D. Pizarro
DETAILED ACTION
This Office action responds to the amendment filed on 5/28/2026.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after the final rejection in paper no. 11, mailed on 2/6/2026. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/28/2026 has been entered.
Amendment Status
The RCE submission filed on 5/28/2026 as an amendment in reply to the Office action in paper no. 11, has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-29.
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.
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 1-29 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsuya (JP 2015-153942) in view of Enomoto (US 2011/0241228).
Regarding claim 1, Tatsuya shows most aspects of the instant invention including an adhesive for a semiconductor, the adhesive comprising:
A thermoplastic comprising a urethane resin (see, e.g., pars. 0090-0091)
A thermosetting resin (see, e.g., par. 0064)
A curing agent (see, e.g., par. 0068), and
A flux compound having an acid group (see, e.g., par. 0096)
Tatsuya also teaches that the flux compound is preferentially a carboxylic acid because they have very reliable insulation. The carboxylic acids include malonic acid and citric acid, but not diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxypheny) valeric acid. See, e.g., Tatsuya: pars. 0096-0097.
Enomoto, in a similar adhesive to Tatsuya, also teaches that the adhesive comprises a flux compound. Enomoto also teaches that the flux compound is preferentially a carboxylic acid of which malonic and citric acid are examples of. Enomoto further teaches diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxypheny) valeric acid to be equivalent carboxylic acids to malonic and citric acid. However, diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxypheny) valeric acid are preferred among these from the viewpoint of storage stability and ready availability. See, e.g., Enomoto: pars. 0037-0039.
Accordingly, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to replace the carboxylic acids in Tatsuya for the diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxypheny) valeric acid of Enomoto because these were equivalent carboxylic acids for the same intended purpose and because these were preferred due to improved storage stability and ready availability.
Tatsuya/Enomoto, however, are silent with respect to the exothermic calorific value and the minimum melt viscosity. As stated in MPEP§ 2112 and in cases such as In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), when the prior art discloses substantially identical or overlapping subject matter, the properties or functions of the subject matter are presumed to be the same absent evidence to the contrary. Tatsuya/Enomoto discloses adhesives including the same claimed components, a thermoset, a thermoplastic, a curing agent and a flux compound having an acid group. Since the calorific value and the melt viscosity are inherent properties of an adhesive, Tatsuya’s adhesive will also have the claimed calorific value of 20J/g or less and the minimum melt viscosity of 2000 Pa[Symbol font/0xD7]s or more.
Regarding claims 2-6, see the comments above in paragraph 11 with respect to claim 1, which are considered repeated here.
Regarding claim 7, Tatsuya/Enomoto are silent with respect to the onset temperature of the adhesive. They, however, show an adhesive including the same components recited in the claims (see paragraphs 7-10 above). Since the onset temperature is considered an inherent property of an adhesive, the adhesive of Tatsuya/Enomoto will also have the claimed onset temperature of 155°C or higher. See also the comments above in paragraph 11 with respect to claim 1, which are considered repeated here.
Regarding claims 8-10, Tatsuya/Enomoto are silent with respect to the temperature at which the adhesive has the minimum melting viscosity. They, however, show adhesives including the same components recited in the claims (see paragraphs 7-10 above). Since the temperature at which an adhesive has the minimum viscosity is considered an inherent property of the adhesive, Tatsuya/Enomoto show the claimed temperatures of 145°C or higher. See also the comments above in paragraph 11 with respect to claim 1, which are considered repeated here.
Regarding claim 11, Tatsuya (see, e.g., par. 0035) shows that the viscosity at 80°C of the viscosity curve obtained by shear viscosity measurement in which the adhesive is heated at a temperature increase rate of 10°C/min is 10,000 Pa[Symbol font/0xD7]s or more.
Regarding claim 12, Tatsuya (see, e.g., par. 0090) shows that the average molecular weight of the thermoplastic resin is 10,000 or more.
Regarding claims 13 and 14, Tatsuya (see, e.g., par. 0093) shows that the thermoplastic resin is 1-30% by mass of the adhesive.
Regarding claim 15, Tatsuya (see, e.g., par. 0073) shows the curing agent comprises an amine-based curing agent.
Regarding claim 16, Tatsuya (see, e.g., par. 0075) shows the curing agent comprises an imidazole-based curing agent.
Regarding claim 17, Tatsuya (see, e.g., par. 0077) shows that the curing agent is 2.3% by mass or less of the adhesive.
Regarding claims 18 and 19, Tatsuya/Enomoto are silent with respect to the melting point of the flux compound. Enomoto (see, e.g., pars. 0039), however, shows the same flux compounds described in the specification. Since the melting point is an inherent property of a flux compound, Enomoto shows the claimed melting points. See also the comments above in paragraph 11 with respect to claim 1, which are considered repeated here.
Regarding claim 20, Tatsuya (see, e.g., par. 0064) shows that the thermoset comprises an epoxy resin.
Regarding claim 21, Tatsuya (see, e.g., par. 0066) shows that the thermoset resin does not substantially comprise an epoxy resin that is liquid at 35°C.
Regarding claim 22, Tatsuya (see, e.g., pars. 0051-0052) shows that the adhesive for a semiconductor has a film shape.
Regarding claims 24 and 29, Tatsuya (see, e.g., fig. 3) shows a semiconductor device 500 in which connection portions 15 of a plurality of chips 10 are electrically connected to each other, at least a part of the connection portions being sealed with the cured adhesive 40.
Regarding claims 25, Tatsuya (see, e.g., fig. 3) shows a semiconductor device 500 comprising a plurality of chips 10 with the adhesive 40 interposed therebetween so that a laminate is formed in which the chip, the adhesive, and another chip are laminated in this order.
Regarding claim 26, Tatsuya (see, e.g., fig. 3) shows a metal bonding 30 between respective connection portions 15.
Regarding claim 27, Tatsuya (see, e.g., fig. 3) shows a wiring circuit substrate 50 and a laminate in which the wiring substrate, the adhesive 40, and the chips 10 are laminated in this order.
Regarding claim 28, Tatsuya (see, e.g., fig. 3) shows a metal bonding 30 between respective connection portions 15.
Regarding claims 23, 24 and 29, Tatsuya (see, e.g., par. 0059) shows the adhesive 40 is cured by applying heat but fails to teach a pressurized atmosphere. Curing the adhesive in a pressurized atmosphere, however, is considered an intermediate method step that does not affect the structure of the final adhesive.
Regarding claims 25-28, the method steps recited in the claims including disposing the chips on a stage, temporarily fixing the chips, and press bonding while heating the stage, are all considered intermediate method steps that do not affect the structure of the final adhesive.
Response to Arguments
Applicant argues that the proposed modification of Tatsuya is improper because Tatsuya prefers dicarboxylic acids over monocarboxylic and tricarboxylic acids. In particular, Applicant relies on paragraph [0097] of Tatsuya, which states that dicarboxylic acids are less likely to volatilize upon high-temperature heating than monocarboxylic acids and therefore can further suppress generation of voids in the adhesive composition. Applicant contends that, because diphenyl acetic acid, benzylic acid, and 4,4-bis (4-hydroxyphenyl) valeric acid of Enomoto are each monocarboxylic acids, one of ordinary skill in the art would have had no reason to replace the dicarboxylic acids of Tatsuya with those compounds. Applicant further argues that Tatsuya already achieves improved storage stability and void suppression and therefore provides no reason for further modification.
The arguments are not persuasive. First, Applicant’s reliance on Tatsuya’s discussion of improved storage stability as between dicarboxylic acids and carboxylic acids having three or more carboxyl groups does not distinguish the presently proposed modification. The compounds relied upon from Enomoto, diphenyl acetic acid, benzylic acid, and 4,4-bis (4-hydroxyphenyl) valeric acid, are monocarboxylic acids and, therefore, do not fall within the category of carboxylic acids having three or more carboxyl groups addressed by Tatsuya in that portion of paragraph [0097]. Accordingly, Tatsuya’s statement regarding improved storage stability of dicarboxylic acids as compared with carboxylic acids having three or more carboxyl groups does not teach away from the particular carboxylic acids of Enomoto.
Applicant’s argument concerning volatility and void suppression is more directly applicable because Tatsuya indicates that dicarboxylic acids are less likely to volatilize upon high-temperature heating than monocarboxylic acids. Nevertheless, this preference does not negate the express teachings of Enomoto or render the proposed modification non-obvious. Tatsuya identifies carboxylic acids generally as suitable flux compounds, and Enomoto, likewise, teaches the use of carboxylic acids as flux compounds in an adhesive composition for use as an underfill of a semiconductor device. Enomoto (¶0039) specifically identifies diphenyl acetic acid, benzylic acid, and 4,4-bis (4-hydroxyphenyl) valeric acid among the suitable carboxylic acids and further identifies these particular compounds as preferred from the viewpoint of storage stability and ready availability.
Thus, although Tatsuya provides a preference for dicarboxylic acids based on their reduced volatility and resulting ability to suppress void generation, Tatsuya does not state that monocarboxylic acids are unsuitable for use as the flux compound, nor does Tatsuya exclude monocarboxylic acids from its broader teaching of suitable carboxylic-acid flux compounds. See, e.g., ¶0097/l.1, where Tatsuya says: “Carboxylic acids are not particularly limited as long as thy are compounds having a carboxyl group”. The fact that Tatsuya identifies an advantage associated with dicarboxylic acids does not overcome Enomoto’s separate teaching that particular monocarboxylic acids are preferred based on other properties, including storage stability and ready availability. A person of ordinary skill in the art would have understood that selection of a flux compound may involve balancing the various properties of the adhesive composition, and would have had reason to consider the expressly identified and preferred carboxylic acids of Enomoto when selecting a carboxylic-acid flux compound for the adhesive of Tatsuya.
Further, Applicant’s assertion that Tatsuya already obtains satisfactory storage stability and void suppression does not establish the absence of a motivation to modify Tatsuya. The proposed modification need not be made because Tatsuya’s composition is deficient or because its storage stability or void suppression is inadequate. Rather, Enomoto expressly provides a reason for selecting the particular carboxylic acids proposed in the rejection, namely, their preferred storage stability and ready availability. The existence of a desirable property in Tatsuya’s preferred dicarboxylic acids does not negate the desirability of other properties expressly associated with the carboxylic acids of Enomoto.
Moreover, when the teachings of Tatsuya and Enomoto are considered together, the proposed modification would have involved the selection of known carboxylic-acid flux compounds for the same general purpose. Tatsuya teaches carboxylic acids as flux compounds in an adhesive composition, while Enomoto teaches carboxylic acids, including diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxyphenyl)valeric acid, as flux compounds in a similar adhesive composition used as an underfill for a semiconductor device. Enomoto further expressly identifies the particular compounds as preferred from the viewpoints of storage stability and ready availability. Thus, the references collectively provide an artisan with both a known class of flux compounds and a reason to select the particular compounds proposed in the rejection.
Applicant’s contention that malonic acid and citric acid are more readily available likewise does not undermine the rejection. Even assuming that those compounds are readily commercially available, Enomoto expressly teaches that diphenyl acetic acid, benzylic acid, and 4,4-bis(4-hydroxyphenyl)valeric acid are preferred from the viewpoint of ready availability and storage stability. The existence of other suitable or readily available alternatives does not negate the express preference taught by Enomoto.
Finally, Tatsuya’s preference for dicarboxylic acids does not amount to a teaching away from the monocarboxylic acids of Enomoto. Tatsuya’s statement concerning the advantages of dicarboxylic acids identifies a preferred class based on certain properties; it does not indicate that monocarboxylic acids are inoperable, undesirable for all purposes, or unsuitable as flux compounds. Indeed, Tatsuya’s broader disclosure encompasses carboxylic acids other than dicarboxylic acids (Tatsuya:¶0097). Accordingly, a person of ordinary skill in the art would not have been precluded from considering the particular monocarboxylic acids expressly taught and preferred by Enomoto.
Therefore, Applicant has not established that Tatsuya’s preference for dicarboxylic acids would have discouraged the skilled artisan from selecting the particular monocarboxylic carboxylic acids taught by Enomoto. Rather, the combined teachings of Tatsuya and Enomoto would have provided the artisan with a reason to select the particular carboxylic acids of Enomoto as known alternatives for the carboxylic-acid flux compounds of Tatsuya, particularly in view of Enomoto’s express preference for those compounds based on storage stability and ready availability. The proposed modification thus would have been within the ordinary skill in the art and would not have required hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marcos D. Pizarro at (571) 272-1716 and between the hours of 9:00 AM to 7:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Marcos.Pizarro@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705.
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/Marcos D. Pizarro/Primary Examiner, Art Unit 2814
MDP/mdp
September 1, 2026
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