DETAILED ACTION
This Notice is responsive to communication filed on 12/05/2025.
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 .
Response to Amendment
The amendment filed on 12/05/2025 under 37 CFR 1.131(a) has been entered. Claims 15, 17, 19, and 20 remain pending in the application. New claims 21 and 22 are dependent on a withdrawn claim 1, and are therefore also withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim limitation “wherein a material of the sealing portion is other than a thermosetting resin or a thermoplastic region” recited in new claim 20 is new matter and not supported by the original disclosure. The Specification discloses the sealing portion is made of “PDMS or the like.” See Specification at para. 27. However, the disclosure does not exclude thermosetting resins or thermoplastic resins as materials of the sealing portion. The absence in the originally-filed disclosure of an element does not satisfy sufficient written description of the negative of the element. cf. MPEP 2713.05(i).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
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.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Takeshi et al. (JP 2015035567 A), and further in view of Watanabe et al. (US 20220332980).
Regarding claim 15, Takeshi teaches a semiconductor device Fig. 5: 1, 2, 12, 13, 13a, 17 comprising:
a semiconductor chip Fig. 5: 13 whose one surface is formed with an electrode Fig. 5: 13a;
an anchor portion Fig. 5: 1 that covers the semiconductor chip Fig. 5: 13 other than the surface on which the electrode Fig. 5: 13a is formed, and has flexibility so as to be freely bendable (para. 39);
a sealing portion Fig. 5: 2 that is abutted against the anchor portion Fig. 5: 1 and has flexibility so as to be freely bendable (para. 54); and
a wiring Fig. 5: 17 connected to the electrode Fig. 5: 13a of the semiconductor chip Fig. 5: 13,
but fails to teach wherein the anchor portion is any one of a combination of 4,4’-diaminodiphenylmethane and 4,4’-diphenylmethane diisocyanate, a combination of 1,9-diaminononane and 1,9- diisocyanate nonane, and a combination of 1,5-diaminopentane and 1,5-diisocyanate pentane. However, Watanabe teaches the semiconductor device wherein the anchor portion (i.e. adhesive layer) is any one of a combination of 4,4’-diaminodiphenylmethane and 4,4’-diphenylmethanediisocyanate, a combination of 1,9-diaminononane and 1,9- diisocyanate nonane, and a combination of 1,5-diaminopentane and 1,5-diisocyanate pentane (para. 0077). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to combine Takeshi’s and Watanabe’s teachings to combine 4,4’-diaminodiphenylmethane and 4,4’-diphenylmethane diisocyanate for the purpose of synthesizing a polyurethane resin (para. 0077) that can be used to provide a laminated body having an excellent adhesive force (para. 0029).
Regarding claim 17, the combination of Takeshi’s and Watanabe’s inventions teaches a device comprising the semiconductor according to claim 15.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshi et al. (JP 2015035567 A) and Watanabe et al. (US 20220332980) as applied to claim 15 above, and further in view of Iyer et al. (US 20190287927).
Regarding claim 19, although Takeshi and Watanabe teach the substantial features of the claimed invention, they fail to explicitly teach the semiconductor device according to claim 15, wherein a material of the sealing portion is polydimethylsiloxane. However, Iyer teaches wherein a material of the sealing portion Fig. 3: 304 is polydimethylsiloxane (para. 0051 “PDMS”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine these teachings, having a sealing portion with material of polydimethylsiloxane for the purpose of having low dielectric constant, low dissipation factor, and a high breakdown voltage.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Takeshi et al. (JP 2015035567 A) and Watanabe et al. (US 20220332980) as applied to claim 15 above, and further in view of Kosuke et al. (JP 2015216229 A).
Regarding claim 20, although Takeshi and Watanabe teach the substantial features of the claimed invention, they fail to explicitly teach the semiconductor device according to claim 12, wherein a material of the sealing portion is other than a thermosetting resin or a thermoplastic resin. However, Kosuke teaches wherein a material of the sealing portion Fig: 1:12 is other than a thermosetting resin or a thermoplastic resin. Kosuke teaches the thermosetting sheet contains an inorganic filler (para. 52, i.e. quartz gas, talc, silica, alumina, boron nitride, aluminum nitride, or silicon carbide, none of which are thermosetting or thermoplastic resins). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to combine these teachings, including an inorganic material, for the purpose of controlling the minimum melt viscosity of the resin sheet (i.e. sealing portion; para. 42).
Response to Arguments
Applicant’s arguments with respect to claim(s) 15, 17, 19, and 20 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.
Regarding Applicant’s argument that Watanabe’s easily adhesive layer is not corresponding to the anchor portion, the Examiner presents the figure below to show how the easily adhesive layer can be broadly interpreted as the anchor portion of claim 15.
The prior art, in paragraph 0022 section <5> teaches the adhesive resin layer and the easily adhesive layer are both applied on each of the surfaces/sides of the resin substrate. Thereby, the Examiner interprets the adhesive resin layer and the easily adhesive layer as the anchor portion of the laminate body, as they both anchor the metal member to the laminate body.
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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 NKECHINYERE ESIABA whose telephone number is (571)272-0720. The examiner can normally be reached Monday - Friday 10am-5pm EST.
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/Nkechinyere Esiaba/Examiner, Art Unit 2817
/Kretelia Graham/Supervisory Patent Examiner, Art Unit 2817 February 9, 2026