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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7, in the reply filed on January 29, 2026 is acknowledged. The traversal is on the grounds that the Office has failed to establish that the product as claimed can be made by another and materially different process because the step of mixing the claimed ingredients would be expected to impart distinctive structural characteristics to the final product; and that there would be no burden to search both groups together. This is not found persuasive. The Restriction Requirement stated that another materially different process of forming the product would be to combine all of the ingredients except for the curing system and to add that last. Applicant has not shown that this process would produce the same result as that claimed and the Office does not need to provide proof for the allegation of a different process. Also, there is a search burden between these two inventions because they have separate classifications. Therefore, these arguments are unpersuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 29, 2026.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 5,015,671) in view of Tsutsumi et al. (EP 3118235) (“Tsutsumi EP”) and Tsutsumi et al. (US 2019/0055377) (“Tsutsumi US”).
Regarding claims 1-5, Ono et al. teaches a coating composition suitable for forming an electrically insulating, tightly adhering coat on a metal surface (protecting a chip) (Col. 1, lines 5-10) comprising 100 parts by weight of an epoxy resin that can be a bisphenol F epoxy resin (Col. 1, lines 54-60; Table 1), 3 parts by weight of dicyanodiamide as a curing agent (Table 1, Sample 1, Curing agent A, Col. 3, line 66), from 0.1 to 5 parts by weight of an imidazole curing promoter (Col. 2, lines 25-45), and silica with an average particle size of 0.5 to 50 µm (Col. 3, lines 1-15). The filler for the composition is a mixture of silica and aluminum hydroxide, wherein the total amount of mixed filler is from 40 to 300 parts by weight (Col. 3, lines 10-25). The weight ratio of aluminum hydroxide to silica is 2:8 to 8:2 (Col. 3, lines 10-15). As an example, the composition containing 100 parts by weight of mixed filler in a 1:1 ratio would provide 50 parts by weight of silica.
Ono et al. does not teach that the composition comprises from 2 to 5 parts by mass of glass epoxy. However, Tsutsumi EP teaches an epoxy resin composition for optical semiconductor element encapsulation (¶13) comprising from 1 to 20% by mass of a siloxane compound having not less than two epoxy groups in one molecule (¶21-29). The examples use x-40-2670 (¶58), which is what is used in the instant invention as the glass epoxy component. Ono et al. and Tsutsumi EP are analogous art because they are from the same field of endeavor as that of the instant invention, namely epoxy compounds for use with electronics. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 20% by weight of a siloxane compound having not less than two epoxy groups in one molecule (glass epoxy), as taught by Tsutsumi EP, to the composition, as taught by Ono et al., and would have been motivated to do so to improve the strength and elastic modulus of the cured product in a high-temperature state (¶29).
Ono et al. does not teach that the silica is fused silica. However, Tsutsumi US teaches a thermosetting epoxy resin sheet for encapsulating a semiconductor (¶10) comprising an inorganic filler that can be spherical silica, fused silica, or a crystalline silica (¶52). Ono et al. and Tsutsumi US are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of epoxy compositions for use with electronics. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use fused silica, as taught by Tsutsumi US, in the composition, as taught by Ono et al., and would have been motivated to do so because Tsutsumi US teaches that this type of silica is suitable for use in these types of compositions and it is obvious to switch out one type of silica for another.
Regarding claim 6, Ono et al. teaches that the curing agent is dicyanodiamide (Col. 2, line 20) and teaches that the curing promotor is an imidazole (Col. 2, lines 25-35). Ono et al. does not teach that the accelerating agent/curing promotor is 2-methyl-4-ethylimidazole. However, Tsutsumi US teaches a curing accelerator that is 2-methyl-4-ethylimidazole (¶64, 84). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 2-methyl-4-ethylimidazole as a curing accelerator, as taught by Tsutsumi US, in the composition, as taught by Ono et al., and would have been motivated to do so because Tsutsumi US teaches that this is an exemplary imidazole to use in epoxy compositions.
Regarding claim 7, Ono et al. teaches that the composition may contain a pigment (Col. 3, lines 25-30). Ono et al. does not teach that the pigment is present in 1 to 5 parts by mass. However, Tsutsumi US teaches using 2 parts by weight of a colorant (Table 1, Examples). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 2 parts by weight of a colorant, as taught by Tsutsumi US, in the composition, as taught by Ono et al., and would have been motivated to do so in order to control the amount of color/opaqueness is desired for the end product.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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