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 .
The amendments filed 2/16/26 overcome the rejections set forth in the office action mailed 11/19/26. New grounds of rejections for some of the amended claims, necessitated by the amendments, are set forth below.
Claim Rejections - 35 USC § 112
Claims 16-20 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.
Claim 16 and its dependent claims recite “the molding compound of claim 0” in line 3 of claim 16. It is therefore unclear which claim the claim is supposed to depend on. For the purposes of examination, claim 16 and its dependent claims have been considered to depend on claim 13, in accordance with the previous claim set filed 5/18/23 and because claim 13 recites a molding compound.
Claim Rejections - 35 USC § 103
Claims 1-2, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (U.S. Pat. No. 5,043,102).
In column 3 lines 5-16 Chen discloses a conductive adhesive composition comprising an epoxy resin system comprising at least one low viscosity epoxy resin and at least one epoxy resin hardener, at least one unsaturated monomer, and at least one free radical monomer. In column 3 lines 7-66 Chen discloses that the epoxy resin is preferably a bisphenol epoxy resin, as recited in component (a) of claim 1, or a novolac epoxy (column 3 line 52), also as recited in claim 1. From column 3 line 67 through column 4 line 17 Chen discloses that the hardener can be a guanidine, as recited for the latent hardener of component (b) of claim 1, or a urea, as recited for the crosslinking accelerator of component (d) of claim 1. While Chen does not specifically disclose the urea as a crosslinking accelerator, Chen discloses that the urea can be 3-(4-chlorophenyl)-1,1-dimethylurea, which is equivalent to the N,N-dimethyl-N′-(4-chlorophenyl)urea disclosed in paragraph 55 of the current specification as being a crosslinking accelerator. In column 4 lines 33-49 Chen discloses that the preferred unsaturated monomer component is an acrylate monomer, as recited in component (c) of claim 1.
Since the composition of Chen meets the compositional limitations of the claims, the composition will be obtainable by mixing the components at room temperature, meeting the product-by-process limitations of claim 2. It is noted that in column 6 lines 11-22 Chen does not provide any indication that heating or cooling is required when the components are mixed.
In column 3 lines 40-44 Chen disclose that the epoxy resin can be formed by the reaction of a bisphenol resin and epichlorohydrin, as recited in claim 7. Claim 9 is also met for the case where the resin is the bisphenol epoxy resin. In column 4 lines 40-44 Chen discloses various acrylate monomers having molecular weights of less than or equal to 300 g/mol, meeting the limitations of claim 10.
The difference between Chen and the currently presented claims is that Chen does not specifically disclose a composition comprising both the guanidine and the urea. However, as discussed above, Chen discloses that both the guanidine and the urea are useful as hardeners. Case law holds that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It therefore would have been obvious to one of ordinary skill in the art to include both the guanidine and the urea in the composition of Chen, meeting the limitations of claims 1-2, 7, and 9-10 and rendering those claims obvious.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chen in light of the evidence provided by Ota (U.S. PG Pub. No. 2006/0106168).
The discussion of Chen in paragraph 3 above is incorporated here by reference. Chen discloses a composition meeting the limitations of claim 1 and comprising a bisphenol-epoxy resin meeting the limitations of claim 7. In column 3 lines 54-61 Chen discloses that a suitable bisphenol-epoxy resin is EPICLON 830A, which has an epoxide equivalent and viscosity within the ranges recited in claim 8. Chen does not specifically disclose that EPICLON 830A is the reaction product of a bisphenol resin and epichlorohydrin.
Ota, in paragraph 30, provides evidence that the EPICLON series is obtained through reaction of a phenolic polynuclear compound (bisphenol in the case of Chen) with epichlorohydrin. The EPICLON 830A of Chen therefore meets the limitations of the bisphenol resin of claim 8, and claim 8 is therefore rendered obvious by Chen in light of the evidence provided by Ota.
Allowable Subject Matter
Claims 4-6 and 12-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 16-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Chen, discussed in the rejection set forth above, discloses in the table in paragraph 5 that the composition of the reference comprises at least 70 parts by weight of silver particles, leading to a percent by weight of filler substantially higher than the 50% upper endpoint of the ranges recited in claims 4-5. The table of Chen further recites a maximum hardener content of 3 parts by weight, leading to a percent by weight well below the 30% lower endpoint of the range recited in claim 6, noting that the hardener component of Chen also covers the crosslinking accelerator of the claims. One of ordinary skill in the art would have no motivation to modify the composition of Chen to include significantly different amounts of silver particles or hardener.
Chen discloses the disclosed composition as a conductive adhesive useful for attaching a semiconductor die to a conductive support base, a significantly different application than the fiber-containing compositions of claims 12-20. One of ordinary skill in the art would not have been motivated to combine the composition of Chen with a fiber component as required in claims 12-20.
The Kano (U.S. Pat. No. 11,142,610) and Kobayashi (U.S. PG Pub. No. 2012/0259039) references cited in the office action mailed 11/19/25 both disclose curable resin compositions comprising components corresponding to the classes of components recited in the amended claims, but neither Kano nor Kobayashi discloses compositions which include a substituted guanidine as a latent hardener and urea as a crosslinking accelerator. Kano specifically requires an acid anhydride-based curing agent (which corresponds to the latent hardener component of the claims) and Kano also requires an acid group-containing radical polymerizable monomer as the analogous component. Kano specifically teaches in column 2 lines 25-31 a prior art composition using a guanidine derivative (dicyandiamide) as a curing agent has poor impregnability in reinforcing fibers. The reference cited in this section of Kano, the U.S. equivalent of which is Takano (U.S. PG Pub. No. 2008/0185757) also does not anticipate or render obvious the claimed composition as it does not provide motivation for further including the claimed acrylate monomer in the claimed amount, and also does not use a peroxide initiator. Kano also requires an imidazole-based curing accelerator (corresponding to the crosslinking accelerator of the claims) and teaches specific advantages to the use of the imidazole (column 5 lines 43-53). One of ordinary skill in the art would therefore have no motivation to include either the guanidine derivative or the urea derivative of the amended claims in the composition of Kano.
Response to Arguments
Applicant’s arguments filed 2/16/26 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. The newly applied Chen and Ota references address the limitations of amended claim 1 and dependent claims 2 and 7-10.
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.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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