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 .
Status of Claims
The examiner acknowledges the amendments to claims 1-2, 11-12, and 18-19. Claims 1-20 are pending.
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 1-5 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Onizuka (WO 2022138343, herein using US version US 20240301176).
Regarding Claims 1, 3, 8, 11-13, and 15
Onizuka teaches a composition generate from an epoxy resin (Paragraph 59), examples of which include bisphenol A and bisphenol F glycidyl ethers (Paragraph 62) and in which the examples are generated from a bisphenol A resin (Paragraph 255), a latent curing agent (Paragraph 71) which Onizuka teaches preferably cures at temperatures below 220 °C (Paragraph 213), and which includes an inorganic filler (Paragraph 139). Onizuka also teaches that the epoxy resin should preferably comprise between 10 and 90% by weight of the composition (Paragraph 70), while the latent catalyst is preferably 2 to 30% by weight (Paragraph 99), and the filler, while not limited, is preferably between 20 and 85% by mass of the composition. These ranges overlap with the ranges of the instant claims. One of ordinary skill in the art would recognize that altering the amount of curing agent would affect the cure rate of the material and that the amount of filler, which can be used for thermal conductivity (Paragraph 139) would necessarily have an effect on this property. As such, the ordinarily skilled artisan would alter their amounts in order to meet the desired cure time and thermal conductivity required for the use case and it would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the lack of anhydride curing agent, Onizuka states that amine based curing catalysts are preferred (Paragraph 74) and while anhydrides may be used, are not required. Therefore, the composition would be anhydride-free when no such compound is added.
Finally, Onizuka teaches that the composition may be used in printed wiring boards and semiconductor chip packaging (Paragraph 10). Combined with the use of filler disclosed for thermal conductivity (Paragraph 139), this reads upon being disposed on a heat-generating component as semiconductor devices are known to generate heat and are additionally found in various machines, communication devices, and computers.
Regarding Claim 2,
As Onizuka teaches the polymers as listed above in regard to claim 3 and uses a bisphenol A-based resin particularly in the examples (Paragraph 255) which are the same as those listed by the applicant, it would logically follow that this polymer as well as the other listed polymers would meet the requirements of the instant claim regarding aromatic content. See MPEP 2112.01.II.
Regarding Claims 4 and 5,
Onizuka teaches the use of latent curing agents that are solid at room temperature (Paragraph 72) and enumerates imidazole and imidazole-based adducts (Paragraph 77) among the preferred amine-based curing agents (Paragraph 74), which would include tertiary amines and meets the requirements of claims 4 and 5.
Regarding Claim 7,
Onizuka teaches the use of inorganic fillers such as silica, alumina, boron nitride, and silicon nitride as well as oxides (Paragraph 142), with silica, alumina, and boron nitride being particularly preferred (Paragraph 142).
Regarding Claim 9,
Onizuka teaches the use of an alcohol component such as 3-phenoxy-1,2-propanediol and 3-phenoxy-1,3-propanediol (Paragraph 107), meeting the requirements of the instant claim.
Regarding Claim 10,
Onizuka is silent on the use of the polyhydric alcohols of the instant claim. However, Onizuka does teach the use of alcohols in the composition that coordinate with the latent curing catalyst (Paragraph 103). As polyhydric alcohols such as ethylene and propylene glycol are similar to those disclosed by Onizuka, it would have been obvious to have added any polyhydric alcohol that could serve a similar purpose.
Regarding Claim 14,
Onizuka is silent on the thermal conductivity. However, as the composition of Onizuka is substantially similar to those of the instant application, including in its use of the same thermally conductive inorganic fillers as well as the resin in similar amounts, it would logically follow that the cured composition of Onizuka would also meet the requirements of the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 16,
Onizuka teaches that the composition is formed and can be stored for preferably more than 30 days prior to use (Paragraph 204).
Regarding Claim 17,
Onizuka teaches that additives such as stabilizers may be used (Paragraph 161) in addition to silicone rubbers and oils (Paragraph 183) which are used as air release agents and may be included in amounts up to 20% by weight but is most preferred to be 3% or less (Paragraph 163).
Regarding Claim 18,
Based upon the claim language of “when the curable composition comprises a modifier”, this requirement is interpreted to be optional. However, Onizuka does teach the use of 3-phenoxy-1,2-propanediol and 3-phenoxy-1,3-propanediol (Paragraph 107), meeting the requirements of the instant claim.
Regarding Claims 19 and 20,
Onizuka teaches that the composition can be used in the formation of printed wiring boards and semiconductor chip packages (Paragraph 10). While Onizuka does not detail the steps of this process, based upon the disclosure for this use as well as the inclusion of heat-conducting fillers (Paragraph 139-142), it would have been obvious prior to the effective filing date of the instant application to have used the composition in a method as described in the instant claims. Additionally, Onizuka teaches that the composition is preferably cured in the temperature range of 150-250 °C (Paragraph 212) and further uses a cure temperature of 200 °C in example 6 (Paragraph 233), meeting the requirements of claim 20.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Onizuka (WO 2022138343, herein using US version US 20240301176) as applied to claims 1-5 and 7-20 above, and further in view of Roth (US 5,247,113).
Regarding Claim 6,
Onizuka teaches the use of latent curing catalysts that are solid at 25 °C (Paragraph 15) which Onizuka teaches improves room temperature stability and also improves reactivity with the epoxy resin (Paragraph 73), but does not teach the use of sulfonium salts. Roth teaches sulfonium compounds that can be used for heat curing of epoxy resins (Abstract) that are of the following formulae:
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in which A (equivalent to R of the instant claim) is a 1 to 12 carbon alkyl chain, 3 to 8 carbon cyclic alkyl, a 4 to 10 carbon cycloalkylalkyl, or a substituted or unsubstituted phenyl (Abstract) and that the Ar groups are independently substituted or unsubstituted phenyl or naphthyl groups (Abstract) and that Q is SbF6, AsF6, or SbF5OH (Abstract). Roth teaches that the preferred resins include diglycidyl ethers of dihydric phenols and specifically mentions bisphenol A (Column 6, Lines 57-62), which is substantially similar to the epoxy resins taught by Onizuka (Paragraph 62). Sulfonium salts are solid at room temperature and because Roth teaches that such compounds have distinct latency at room temperature which allows wide processing margins but also rapid curing when heating above 100 °C (Column 1, Lines 25-30), one of ordinary skill in the art would recognize that these compounds could be advantageously used in the composition as taught by Onizuka, which seeks to improve curing performance while maintaining room temperature stability (Paragraphs 9 and 10). As such, it would have been obvious prior to the effective filing date of the instant application to have combined the sulfonium-based curing catalysts taught by Roth in the composition taught by Onizuka to obtain the predictable result of a latent-curable epoxy composition with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments with respect to claim(s) 11/6/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765 /HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765