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 1/20/2026.
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.
Amendment Status
The amendment filed on 1/20/2026 in reply to the Office action in paper no. 9, mailed on 8/22/2025, 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 resin (see, e.g., par. 0090)
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 10 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 6-9 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 10 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 6-9 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 10 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 10 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’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new grounds 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 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
February 5, 2026