DETAILED ACTION
Status of Application
This action follows a reply filed on 12/30/2025 and a corrected submission filed on 01/22/2026. Per the reply, claims 1, 3, and 8 have been amended, claims 4-5 have been cancelled, and new claims 10-13 have been added. Accordingly, claims 1-3 and 6-13 are currently pending and under examination herein.
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 .
Withdrawn Objection(s)/Rejection(s)
The outstanding rejections under 35 U.S.C. 102(a)(1) or 102(a)(2) over Tsutsumi et al and Sato et al, as evidenced by BMI, are withdrawn in view of the amendment rewriting claim 1 to include the subject matters of now-cancelled claims 4-5. Further, the Applicant’s reply has addressed all outstanding formality issues by way of appropriate amendments to claims 3 and 8.
Claim Interpretation
With respect to claim 1, the Office continues to treat the preamble recitations "encapsulation" and "for encapsulating a semiconductor element-mounted surface of a substrate with one or more semiconductor elements mounted thereon or a semiconductor element-forming surface of a wafer with
one or more semiconductor elements formed thereon," as non-limiting for purposes of claim
construction because the body of the claim fully sets forth all the compositional components of the
claimed resin composition, and the preamble merely states the purpose or intended use of that
composition. See MPEP § 2111.02(II).
Claim Rejections – 35 U.S.C. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6-7, and 9 stand rejected under 35 U.S.C. 103 as being unpatentable over Shiobara et al (US 2021/0403672 A1) (‘Shiobara’).
Regarding Claims 1-3 and 6; Shiobara has already disclosed compositions comprising 100 parts
by weight (pbw) of a bismaleimide resin having a residue of an acid dimer ("SLK-2500" or "SLK-3000"),
100 pbw of a methacryloxypropyltrimethoxysilane-treated silica having an average particle size of 1.5
µm ("SO-ES", "S1", "S2" - see Table 2, ¶¶ [0164]-[0167]) and a maximum particle size of 10 µm (see ¶ [0108]) and 2 pbw of dicumylperoxide (i.e., a species of thermal radical polymerization initiator, per
claim 6/1). See Preparation Examples 5-8 (¶¶ [0177]-[0181]). Inasmuch as said acid dimer SLK-3000
corresponds to the Applicant's maleimide compound (A-1) (cf., Spec., page 23, 2nd para), Shiobara is
considered to implicitly describe a bismaleimide resin conforming to claimed formula (1) and/or formula
(2) (for claims 2-3). Furthermore, the disclosed compositions comprising 100 parts by weight (pbw) of a
bismaleimide resin having a residue of an acid dimer ("SLK-2500" or "SLK-3000"), 100 pbw of a
methacryloxypropyltrimethoxysilane-treated silica and 2 pbw of dicumylperoxide contain 49.5% by mass
of the surface-treated silane coupling agent in the whole composition (i.e., (100/202) · 100 = 49.5), an amount well within the claimed range for mass percent of component (C).
Shiobara differs from the claimed subject matter in failing to disclose, in a single embodiment, wherein the silane coupling agent used to surface-treat the inorganic filler as the component (C) is at least one aminosilane selected from N-2-(aminoethyl)-3-aminopropyltrimethoxysilane, N-2-(aminoethyl)-8-aminooctyltrimethoxysilane, 3-aminopropyltrimethoxysilane, N-pheny1-3-
aminopropyltrimethoxysilane, and 2,2-dimethoxy-1-pheny|-1-aza-2-silacyclopentane. Instead, Shiobara describes compositions comprising 100 pbw of a 3-methacryloxypropyltrimethoxysilane-treated silica having an average particle size of 1.5 µm and a maximum particle size of 10 µm (see ¶ [0108]).
Nevertheless, Shiobara generally teaches, as more preferable silane coupling agents, one or more selected from a group including: 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, N-2-(aminoethyl)-3-aminopropyltrimethoxysilane, N-2-(aminoethyl)-3-aminopropyltriethoxysilane, N-phenyl-3-aminopropyltrimethoxysilane, 3-methacryloxypropyltrimethoxysilane, 3-methacryloxypropyltriethoxysilane, p-styryltrimethoxysilane, and trifluoropropyl trimethoxysilane (see ¶
[0096]). All silane coupling agents listed in this preferred embodiment are considered equivalents for
the purposes of Shiobara. It would have been obvious to one of ordinary skill in the art to modify
Shiobara by substituting methacryloxypropyltrimethoxysilane by, for example, N-2-(aminoethyl)-3-
aminopropyltriethoxysilane, in comparable proportion, as the two coupling agents are considered to be equivalents known for the same purpose. Simple substitution of one known element for another to obtain predictable results, provides the rationale for a prima facie case of obviousness. See MPEP § 2143. Further, the resulting composition will meet all the requirements of present claim 1.
Regarding Claim 7, Shiobara renders obvious the encapsulation composition according to claim 1 as discussed above. Shiobara further discloses wherein the encapsulation resin composition is in the form of granules, a sheet, or a film; specifically, a sheet (see ¶ [0182]).
Regarding Claim 9, Shiobara renders obvious the encapsulation composition according to claim 1 as discussed above. Shiobara further discloses that the low dielectric compositions are suitable as
substrates for circuit boards or antennas in the field of high-speed communication such as 5G (see ¶ [0200]), wherein at least the former utility corresponds to an embodiment of "semiconductor device" as per claim 9.
Response to Argument
Applicant’s arguments filed 12/30/2025 with respect to Shiobara have been fully considered but they are not persuasive.
First, Applicant argues that there is no motivation to arrive at the present invention from Shiobara, noting that whereas Shiobara relates to a low dielectric resin substrate that includes a quartz glass cloth which has a low dielectric loss tangent, and which is excellent in tensile strength, the present invention has a different object, viz., to provide an encapsulation resin composition that yields a reduced and restricted warpage (Reply at 8).
In response to this argument, it is pointed out that recognition in Shiobara of the same property improvements or advantages asserted by the Applicant is not necessary to the prima facie case, see MPEP 2144 (IV) (not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant). Here, the expected obtainment of a low dielectric substrate displaying comparable improvements in dielectric characteristics to those contemplated by Shiobara (see ¶ [0022]) would have provided the requisite motivation for one of ordinary skill in the art to modify the Shiobara invention by utilizing as the silica powder in any of Preparation Examples 5-8, 100 pbw of a silica that has undergone surface treatment with an aminosilane such as N-2-(aminoethyl)-3-aminopropyltriethoxysilane in lieu of 3-methacryloxypropyltrimethoxysilane, and thereby arrive at the resin composition of the present invention.
Second, Applicant argues that the present invention yields results--reduced and restricted warpage and a cured product exhibiting a small surface roughness after grinding—that are truly unexpected and of great practical significance (Reply at 9). However, it is well settled that evidence of unexpected results must relate to the closest prior art, In re DeBlauwe, 222 USPQ 191, 196 (Fed. Cir. 1984). Thus, the critical comparison should involve a resin composition comprising, as component (C), a silica representative of the silica (S1) or silica (S2) of Shiobara, in terms of both particle size and silane coupling agent used to treat the surface thereof (i.e., KBM-503, product name: 3-methacryloxypropyltrimethoxysilane, see ¶¶ [0164]-[0165]). In this regard, it is noted that the Applicant’s comparative examples comprise an inorganic filler (C’-4), (C’-5) or (C’-6), none of which, based on their description herein (see pages 24-25, bridging para.), is considered representative of the silica (S1) or (S2) of Shiobara, in terms of average particle size and surface treatment agent. Absent comparative data involving a resin composition representative of the closest prior art embodiments, the Applicant's assertion of unexpected results is deemed to lack probative value.
Finally, Applicant asserts that Shiobara does not disclose the silane coupling agent used to surface-treat the inorganic filler as the component (C) of the present invention and an amount of the component (C) in the composition, but discloses only the silane coupling agent to make the adhesion
between resin and the glass cloth surface strong when manufacturing prepreg, etc. (id.).
In response, and contrary to this assertion, it is pointed out that Shiobara’s description of low dielectric silica powder includes a reference to coating the surface of the silica powder with a silane coupling agent or the like, and goes on to state: “As the silane coupling agent, a known silane coupling agent used on the quartz glass cloth described above can be used” (see ¶¶ [0111]-[0112]). The known silane coupling agent “described above” is set forth in paragraph [0096] of Shiobara, wherein alkoxysilane is identified as preferable, and one or more selected from a group including 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, N-2-(aminoethyl)-3-aminopropyltrimethoxysilane, N-2-(aminoethyl)-3-aminopropyltriethoxysilane, N-phenyl-3-aminopropyltrimethoxysilane, 3-methacryloxypropyltrimethoxysilane, 3-methacryloxypropyltriethoxysilane, p-styryltrimethoxysilane, and trifluoropropyl trimethoxysilane are indicated as more preferable. The more preferable aminosilane(s) include the very same species of aminosilane used in the present invention (viz., 3-aminopropyltrimethoxysilane, N-2-(aminoethyl)-3-aminopropyltriethoxysilane, N-phenyl-3-aminopropyltrimethoxysilane) and these are presented as viable alternatives to 3-methacryloxypropyltrimethoxysilane, the particular silane coupling agent used in Preparation Examples 3 and 4 of Shiobara. As such, Shiobara is found to teach the equivalency of claimed species of aminosilane to 3-methacryloxypropyltrimethoxysilane for the purpose of surface-treating the low dielectric silica powder corresponding to component (C) of the present invention, Applicant’s assertion otherwise notwithstanding.
Potentially Allowable Subject Matter
Claims 8 and 10-13 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
The closest prior art to Shiobara et al, discussed above, does not describe the inventions of instant claims 8 and 10-13, or provide proper rationale to modify its disclosed invention into the invention of any of said claims.
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 Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/05-08-26
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