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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-10, and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claimed structure “PN” renders the claim indefinite because the variable “n” within said structure is not defined in the claim. One having ordinary skill in the art would therefore be unable to ascertain what size resins are included or excluded from the claimed composition.
Regarding claims 3-10 and 12, the claims are rendered indefinite because they depend either directly or indirectly on claim 1, which is indefinite as described above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 112724603 A, hereinafter referring to the ESPACENET Translation) in view of Monk (Polymer 2015, 62, pp. 39-49).
Regarding claim 1, Wang teaches an epoxy molding compound for semiconductor packaging (Abstract), comprising:
5-18 wt.% of epoxy resin (Abstract), which anticipates the claimed range of “epoxy resin: 4-9 wt%.”
2.5-10 wt% of phenolic resin (Abstract), which may be a phenol linear phenolic resin ([0011]), and which reads on both the claimed ranges of “curing agent: 4-9 wt%” and “PN phenolic resin: 1-3 wt%,” because the instant application states that the claimed curing agent may be a phenol linear phenolic resin (c.f. claim 4) and that the PN phenolic resin is a linear phenolic (novolac-type) resin (c.f. instant Specification p. 4, Chemical structure “PN”). The amount of phenolic resin taught by Wang (2.5-10 wt%) anticipates the cumulatively claimed range of the claimed curing agent and PN phenolic resin (5-12 wt%).
0.05 – 0.5 wt% of a curing accelerator (abstract), which anticipates the claimed range of “curing accelerator: 0.02-0.5 wt%.”
60-90 wt% of a filler (Abstract), which anticipates the claimed range of “filler: 70-90 wt%.”
0.1-1 wt% of a coupling agent (Abstract), which anticipates the claimed range of “coupling agent: 0.2-0.6 wt%.”
0.1-1.5 wt% of a release agent and 0.1-0.8 wt% of an ion absorbent (Abstract), which collectively read on the claimed “auxiliary additives” because the instant application contemplates that these two components are auxiliary agents (c.f. claim 8). The cumulative amounts of the release agent and ion absorbent taught by wang (0.2-2.3 wt%) anticipates the claimed range of “1-2 wt%.”
Wang does not contemplate the use of a plasticizer, and therefore teaches a composition that comprises no phthalate plasticizers, which reads on the claimed limitation.
Wang teaches the incorporation of a PN phenolic resin comprising a linear phenolic (novolac-type) resin as described above, but differs from claim 1 because it does not specify the claimed structure.
In the same field of endeavor, Monk teaches that linear novolac-type resins may have a structure which is substantially identical to the claimed structure (p. 40, 2.1 System of Interest section), and teaches that phenolic resins are suitable for thermal protection applications (p. 39, Introduction section). Furthermore, Wang is directed towards flame retardant compositions (Abstract). It is prima facie obvious to select a material based on its art-recognized suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize a linear phenolic novolac-type resin with the structure described in Monk, within the formulation of Wang, as Monk recognizes them as linear phenolic resins suitable for heat-resistant compositions.
Regarding claim 3, Wang teaches that the epoxy resin may be chosen from, inter alia, bisphenol A, bisphenol F, polyphenyl glycidyl ether, aliphatic glycidyl ether, glycidyl ether, glycidyl amine, biphenyl, alicyclic, and heterocyclic epoxy resins ([0010]), all of which read on the corresponding epoxy resins from the claimed list.
Regarding claim 4, Wang teaches that the phenolic resin (which reads on the claimed “curing agent” as described above) may be chosen from inter alia, a phenol linear phenolic resin and a cresol linear phenolic resin and their derivatives ([0011]), which read on their corresponding “curing agent” materials from the claimed list.
Regarding claim 5, Wang teaches that the curing accelerator may be an imidazole compound ([0012]).
Regarding claim 6, Wang teaches that the filler may include silicon dioxide micropowder ([0016]), which reads on the spherical/angular silica micro powders from the claimed list.
Regarding claim 7, Wang teaches that the coupling agent is chosen from a group of silane coupling agents including a glycidyl silane (which is an epoxy silane), an aminopropyl silane (which is an amino silane), and a mercaptopropyl silane (which is a mercaptosilane) ([0019]).
Regarding claim 8, Wang teaches the incorporation of a mold release agent (Abstract), a colorant ([0023]), a liquid silicone oil ([0026], which reads on the claimed “stress releasing agent because the instant Specification states that liquid silicone oil is a stress releasing agent; c.f. p. 5, 3rd to last paragraph), a flame retardant ([0022]), and an ion absorbent (Abstract).
Regarding claim 9, as described above, Wang teaches the incorporation of 2.5-10 wt% of phenolic resin (Abstract) and 0.1-1 wt% of a coupling agent (Abstract), which anticipates the claimed ranges.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 112724603 A, hereinafter referring to the ESPACENET Translation) in view of Monk (Polymer 2015, 62, pp. 39-49), and further in view of Kayaba (US 2005/0090044 A1) and Kazmierzak (US Patent No. 4,857,595).
Regarding claim 10, Wang teaches the mixing of the inventive components before melt-mixing ([0027]). Wang is silent with regard to the claimed order of mixing, however the selection of any order of mixing ingredients is prima facie obvious (see MPEP 2144.04.IV.C). It therefore would have been obvious to one of ordinary skill in the art at the time of filing to select the claimed order of mixing ingredients in the absence of new or unexpected results.
Wang differs from claim 10 because it is silent with regard to the use of a twin screw extruder and the particular extrusion temperature of 150°C. In the same field of endeavor, Kayaba teaches an epoxy resin composition containing a curing agent, filler, and silane coupling agent which can be molded (Abstract) and which can be used in the formation of packages ([0078], wherein the composition is extruded in a twin-screw extruder at a temperature ranging from 70 to 150°C ([0072]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Wang teaches that the inventive composition is suitable for use in semiconductor packaging (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to use the extruder type and temperature taught by Kayaba within the manufacturing method of Wang, as Kayaba teaches this equipment and temperature combination as suitable for extruding filled epoxy resin formulations. The temperature range of 70-150°C encompasses the claimed temperature of “150°C,” establishing a prima facie case of obviousness.
Wang finally differs from claim 10 because it is silent with regard to the extrudate being cooled with a fan. In the same field of endeavor, however, Kazmierzak teaches the cooling of a polymer extrudate with a fan before grinding (col. 26). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Wang teaches the cooling of the inventive extrudate before pulverizing into a powder ([0027]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to cool the extrudate formed from the extrusion process of Wang using a fan, as Kazmierzak teaches it as a suitable means of cooling an extrudate before pulverization.
Regarding claim 12, Wang teaches that the epoxy resin may be chosen from, inter alia, bisphenol A, bisphenol F, polyphenyl glycidyl ether, aliphatic glycidyl ether, glycidyl ether, glycidyl amine, biphenyl, alicyclic, and heterocyclic epoxy resins ([0010]), all of which read on the corresponding epoxy resins from the claimed list.
Wang further teaches that the phenolic resin (which reads on the claimed “curing agent” as described above) may be chosen from inter alia, a phenol linear phenolic resin and a cresol linear phenolic resin and their derivatives ([0011]), which read on their corresponding “curing agent” materials from the claimed list.
Wang further teaches that the curing accelerator may be an imidazole compound ([0012]).
Wang further teaches that the filler may include silicon dioxide micropowder ([0016]), which reads on the spherical/angular silica micro powders from the claimed list.
Wang further teaches that the coupling agent is chosen from a group of silane coupling agents including a glycidyl silane (which is an epoxy silane), an aminopropyl silane (which is an amino silane), and a mercaptopropyl silane (which is a mercaptosilane).
Wang further teaches the incorporation of a mold release agent (Abstract), a colorant ([0023]), a liquid silicone oil ([0026], which reads on the claimed “stress releasing agent because the instant Specification states that liquid silicone oil is a stress releasing agent; c.f. p. 5, 3rd to last paragraph), a flame retardant ([0022]), and an ion absorbent (Abstract).
Finally, as described above, Wang teaches the incorporation of 2.5-10 wt% of phenolic resin (Abstract) and 0.1-1 wt% of a coupling agent (Abstract), which overlaps/encompasses the claimed ranges, respectively, establishing prima facie cases of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed September 23, 2025, with respect to the rejection of claims 1-12 under 35 USC 112(b) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made under 35 USC 112(b) due to new indefiniteness issues arising from the claim amendments.
Applicant has cancelled claims 13-15; therefore the 35 USC 101 rejection of claims 13-15 has been withdrawn.
Applicant's arguments with respect to 35 USC 102 and 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that the prior art documents fail to contemplate the improvements discovered by the Applicant; however, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV). Furthermore, the discovery of a new characteristic of a previously disclosed composition does not confer patentability (see MPEP 2112.I.).
Applicant argues that prior art document Wang does not specifically exclude a phthalate plasticizer and therefore does not teach the benefit of removal which is contemplated by the instant Application. Firstly, as described above, the prior art teaches the claimed composition despite not contemplating the improvements discovered by the Applicant. Secondly, the fact that the composition of Wang is open to the incorporation of a plasticizer does not rebut the fact that the composition of Wang is also open to not including a plasticizer. Assuming arguendo that plasticizer-containing compositions are preferred by Wang, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762