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 Arguments
Applicants’ arguments filed 8/13/2026 have been fully considered but they are not persuasive.
In the rejection of Huang in view of Czubarow, applicants argued following:
Huang fails to disclose silica in claimed range of 0.1-10 % by weight. Applicants relied on examples to support their position.
Czubarow teaches the amount of silica is outside of claimed range.
Composition of Huang is not suitable starting point for a capillary underfill formulation. First filler is a combination of alumina, carbon nanotubes and silicon carbide. Resulting viscosity which is not suitable for capillary flow.
Examiner disagrees.
First it should be noted that applicants’ claims are limited by term “comprising” which includes additional fillers, their combinations and any amount. The composition may include solvents, reactive compounds such as crosslinkers and curing agent and the like. This includes any viscosity.
With respect to argument 1, Huang does teach correct content of silica. Specifically, as applicants pointed out in their response silica is part of the second filler, which is utilized in amount of 5-10 parts. Second filler comprises spherical filler, spherical magnesium oxide or spherical boron nitride. Consequently, silica can be selected from three components, or it can be used in combination with the other two fillers. While applicants utilize examples to support their position, each example is one embodiment, but it is not the entire invention. Examples do not render the rest of the teachings of Huang as non-preferred embodiment. The examiner relied on ranges disclosed in the specification and not the examples which is consistent with broadest reasonable interpretation. Since applicants’ claims may comprise other fillers, additive and solvents, one way to overcome the prior art of Huan is to limit he composition to just silica and carbon nanotubes by using term “consisting of”.
In the broader range as disclosed in the Abstract, utilizing upper ranges of all the components (total 79 parts) and silica being 10 parts the $ of silica is 12.69. However, the same formulation with the content of silica being 5 (total composition 72 parts) content of silica is 6.9 parts. This is assuming that silica is utilized alone. As such content of silica in Huang overlaps with the content of silica in instant claim 1.
With respect to second argument, the rejection did not utilize Chubarow to meet the limitation of silica at all, since that content is taught in Huang. The grounds of rejection state following.
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Consequently, applicants’ arguments are not commensurate with the grounds of rejection because the only reason Chubarow was utilized was to meet the functionalized carbon nanotubes.
With respect to argument directed at the composition of Huang as not being proper starting point for capillary formulation following has to be noted:
Applicants’ claims are not limited to only silica and carbon nanotube by the way of term “comprising”.
The capillary underfill is a process in which the underfill composition can be applied and not the composition itself, so yes, the formulation of Huang is a good starting point since one of ordinary skill in the art would know how to adjust the viscosity of the composition in order to not only utilize capillary method but utilize in in specific location.
Additionally, viscosity of the composition is not a limitation in any of the claims.
Lastly, Huang discloses underfill composition which includes bottom underfill. One of ordinary skill in the art would know that capillary underfill is one way to achieve bottom underfill. Consequently, the composition is capable of being applied utilizing capillary method.
With respect to rejection over Huang’239 in view of Chubarow and further in view of Huang’851, the grounds of rejection are directed at how carbon nanotubes are functionalized. Applicants argued about the content of silica. Consequently, applicants’ arguments are not commensurate with grounds of rejection. Similarly, Hwang’953 was utilized to supplement limitations directed at carbon nanotubes and functionalization and length. Here applicants also argued silica, rendering applicants’ claims non-commensurate with grounds of rejection.
In view of the above discussion, prior art of record rejections are not overcome, and all rejections are restated below.
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.
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, 2, 4, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 111500239 translation provided) in view of Chubarow (US 2012/0172495) provided by the applicants.
With respect to claims 1, 2, 4, 6, Huang discloses underfill composition (adhesive) comprising (Abstract):
10-30 parts polyurethane modified epoxy,
5-15 parts of first filler,
5-10 parts of second filler,
5-15 parts of curing agent,
2-5 parts of curing accelerator,
1-5 parts diluent
0.5-2 parts of coupling agent.
First filler is defined as a combination of three fillers: alumina, carbon nanotubes and silicon carbide in a ratio of 1-5:0.5-1:1-3. Consequently, for the minimum 5 parts of filler, carbon nanotubes can be 0.5-1 parts. For maximum amount of 15 parts, carbon nanotubes can be utilized in an amount of up to 5 parts. The content of carbon nanotubes encompasses the amounts of instant claim 4.
Second filler is silica [0016]. In the broader range as disclosed in the Abstract, utilizing upper ranges of all the components (total 79 parts) and silica being 10 parts the $ of silica is 12.69. However, the same formulation with the content of silica being 5 (total composition 72 parts) content of silica is 6.9 parts. This is assuming that silica is utilized alone. As such content of silica in Huang overlaps with the content of silica in instant claim 1.
While Huang discloses basic composition, the disclosure of carbon nanotubes is generic and therefore viewed as being open to any carbon nanotube known in the art.
Chubarow discloses another capillary underfill composition [0053], which teaches utilizing carbon nanotubes. Carbon nanotubes are functionalized with a reactive group that is reactive with other components of the underfill such as epoxy resin [0013]. Examples include amines (Abstract)
Carbon of Chubarow have length of less than 5 microns and are modified with amine containing compound wherein amines are nucleophiles when utilized with epoxy resins [0059], which encompasses limitation of instant claim 2. Exemplified nanotubes have diameter of 15 nm and length of 1-5 microns leading to aspect ratio of up to 333:1 further meeting limitation of instant claims 6 and 7.
What is established in the art or other well-known to one of ordinary skill in the art, is that functionalizing fillers such as carbon nanotubes achieves exceptional mechanical, thermal and electrical properties. Functionalization increases dispersion and prevents agglomeration of carbon nanotubes. Functionalization changes surface chemistry of the carbon nanotube resulting in stronger interfacial bonding in the composites (compatibility).
In the light of the above disclosure, at the time instant invention was filed, the effects of functionalization of carbon nanotubes would have been well understood by those skilled in the art. Consequently, surface treating carbon nanotubes on Huang would have been obvious especially when utilizing amines as treating compound. This is because amines are nucleophiles when incorporated into epoxy matrix. Such statement is further confirmed by the applicants in their own specification.
With respect to claims 8 and 9, the carbon nanotubes of Chubarow are multiple wall carbon nanotubes (example 8) or single wall carbon nanotube (example 9).
It would have been obvious to utilize MWCNT or SWCNT as the nanotubes of Huang, since Huang does not limit its invention to any particular type. Additionally, use of such carbon nanotubes as depicted by Chubarow is already a knowledge well established in the art.
With respect to claim 10, the epoxy of Huang reactive diluent is an epoxy compound [0021] which meets the definition of precursor.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 111500239 translation provided) herein Huang’239 in view of Chubarow (US 2012/0172495) as applied to claims 1, 2, 4, 6-10 above, and further in view of Huang (CN 100569851) herein Huan’851 as evidenced by Sezer article.
Discussion of Huang and Chubarow from paragraph 1 of this office action is incorporated by reference. Huang’239 as modified by Chubarow disclose epoxy underfill composition comprising silica and modified with amine carbon nanotubes. However, Huang,239 and Chubarow do not disclose how carbon nanotubes are modified.
Huang’851 however supplements the teachings of Huang’239 and Chubarow showing how amines are utilized to functionalize carbon nanotubes.
Huang’851 discloses another epoxy/carbon nanotube composite where the carbon nanotubes are first subject to air jet milling which would inherently render the CNTs shorter (claim 1).
After milling step, the CNTS are treated with nitric acid (page 1), refluxed and incorporated into large amount of deionized water. The product was further dried and pulverized to obtain carboxylated carbon nanotubes. Specifically, treatment with nitric acid and water introduces carboxyl group on the surface of carbon nanotubes. More detailed teachings can be found in Sezere article.
Obtained carboxyl containing carbon nanotubes are then treated with amine compounds such as ethylene diamine. See also [0010-011].
The amines utilized to graft onto the carboxy group include ethylene diamine and the like [0017, 0027, 0028].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time of the instant invention to utilize process of Huang’851 to make carbon nanotubes of Huang’239 as modified by Chubarow and thereby obtain claimed invention. Specifically oxidative functionalization of carbon nanotubes is well established process which will result in formation carboxyl moiety to which diamine functionalities can attach. Since Huang ‘239 as modified by Chubarow requires carbon nanotubes having amine moiety attached thereto, process of Huang’851 will provide exactly that.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 111500239 translation provided) herein Huang’239 in view of Chubarow (US 2012/0172495) as applied to claims 1, 2, 4, 6-10 above, and further in view of Hwang (US 2009/0215953)
Discussion of Huang and Chubarow from paragraph 1 of this office action is incorporated by reference. Huang’239 as modified by Chubarow disclose epoxy underfill composition comprising silica and modified with amine carbon nanotubes. However, Huang,239 is silent with respect to the possible CNT types, functionalization and lengths.
Hwang discloses type of carbon nanotube that is suitable for use with epoxies, wherein the carbon nanotubes are short and functionalized (Abstract). Figure 6 of Hwang discloses functionalized carbon nanotube bearing C=O group with epoxy precursor and diamine:
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Wherein surface of the carbon nanotube was modified using strong acid to provide C=O groups capable of reacting with amine.
The carbon nanotubes are shortened then functionalized [0007] with functional groups that are selected for compatibility with predetermined polymer.
The carbon nanotubes of Hwang are cut length of less than 60nm [0041] and functionalized, for better processing [0044], better dispersion wherein more uniformly dispersed carbon nanotube leads to composition having better mechanical and electrical properties [0003].
Short and functionalized carbon nanotubes can readily dissolve in polymer or monomer mixture [0003, 0042].
When such carbon nanotubes are utilized in the epoxy resin their dispersion is homogeneous, which is superior to conventional nanotubes and conventional functionalization. In [0005] Hwang states that carbon nanotubes dispersed in solvent or other material tend to aggregate and entangle into dense robust network of 10-50 nm in diameter and up to microns in length due in part to strong van der Waals force attractions between tube. Using short nanotubes will greatly minimize entanglement and improve uniform dispersion because such modified carbon nanotubes are readily soluble in monomer or polymer and because the functionalization can be tailored to the pre-selected polymer [0007].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize short carbon nanotubes of Hwang in the composition of Huang and thereby obtain claimed invention. Specifically, shorter carbon nanotubes are easier to process due to greatly minimized van der Waals entanglement resulting in uniform dispersion and better mechanical and electrical properties. Additionally, smaller nanotubes will more easily fit in between the gaps within an electronic device disclosed in Huang.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 27, 2026
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