DETAILED ACTION
The amendment to the claims has overcome the prior art rejections for reasons of record. As such the following new ground of rejection is being made in light of the claims in their newly amended form.
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.
Claims 1 to 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishijima et al. 10,336,913, in view of Mine et al. 5,804,631.
Nishijima et al. teach silicone compositions that contains components meeting each of claimed (A-1), (A-2), (B) and (C). These are used as sealants in semiconductor devices.
Generally see column 4, lines 17 and on, which teaches claimed component (A-2) on column 7, line 7 and on, the branched organopolysiloxane (A-1) on column 7, line 56 and on, the linear organohydrogen polysiloxane (B) on column 8, line 44 and on, and a Pt catalyst.
More specifically, see the working examples in which Reference Examples 1 to 4 meet claimed (A-2), including the newly added diphenylsiloxane unit content and comp-onents (B-1) and (B-2) meet claimed (A-1). As can be seen from Table 1, these compo-sitions meet the claimed SiH to Si-alkenyl ratio.
The difference between the working examples and claimed (A-1), (A-2), (B) and (C) is only that the examples do not use a linear organohydrogen polysiloxane meeting formula (3). Note though that column 8, lines 19 to 21, specifically teach a copolymer of dimethylsiloxane and methylhydrogensiloxane having trimethylsiloxy terminal groups. Given the teaching of the viscosity as high as 10,000 mPa.s in line 9, one having ordinary skill in the art would have found the selection of an organohydrogen polysilox-ane to have been obvious.
In this manner it is clear that Nishijima et al. anticipate and/or render obvious each component (A-1), (A-2), (B) and (C). The totality of Nishijima et al. differs from that claimed in that it does not specifically teach the thermally conductive filler (D) as claimed. Note that claim 2 indicates that this filler is preferably a silver flake.
Mine et al. teach a silicone composition that is used in a semiconductor device. See the abstract. This silicone composition is cured in a comparable manner as that in Yamazaki and the claims (i.e. the addition reaction of an unsaturated siloxane and an SiH group) and has the same utility such that both of these references are constitute analogous art as the claimed invention.
Column 13, lines 25 to 60, teaches the addition of electrically conductive fillers that enhance the electrical conductivity of such silicone materials. See also the benefits of such conductive compositions as found in column 2, lines 18 to 39. Additionally, one having ordinary skill in the silicone art would be knowledgeable regarding the benefits of electrical conductivity in such silicone materials. The fillers in Mine et al. are silver flakes having a particle size of 1 to 10 micrometers which overlaps significantly with the range of 3 or more such that a flake within the claimed particle size range would have been anticipated and/or rendered obvious by this teaching.
From this one having ordinary skill in the art before the effective date of the invention would have been motivated to add a silver flake, particularly one having a particle size in the range of 3 to 10 micron, to the silicone die attachment composition in Yamazaki in an effort to take advantage of the known benefits and properties thereof.
The Examiner recognizes that the claims refer to the filler as thermally conduct-ive rather than electrically conductive but this does not destroy the obviousness of the claims since 1) the silver flake in Mine et al. is the same as the silver flake in the claims such that simply calling it something difference doesn’t change what the silver flake actually is, 2) it is known in the art that silver flakes are both thermally and electrically conductive such that this is not an unobvious property and 3) a prima facie case of obviousness (for a composition) does not require the solution of the same problem or recognition of the same advantages as the applicants invention.
In view of the above, the totality of the limitations involving (A) to (D) are met by this combination of references and the instant claims are rendered obvious.
Regarding the claimed thermal conductivity requirement, note that silver has a very high conductivity (around 430 W/(m.K)) such that the skilled artisan would have expected a thermal conductivity of the final composition to be greater than 1.
Regarding the claimed storage elastic modulus, note that Nishijima et al. is con-cerned with this property (see column 13, lines 40 to 45) and, while they do not teach this specific range, the skilled artisan would have been motivated to optimize and adjust this property in a manner best suited to the final utility such that a silicone resin meeting this requirement would have been within routine experimentation for the skilled artisan. The storage modulus is a reflection of the elastic or spring-like property of the silicone when under stress, such that the lower the value the more flexible the silicone resin. This is a property that the skilled artisan would want to optimize in view of the utility of the final composition of Nishijima et al. as a semiconductor encapsulant. Also note that it is well known how to adjust and/or optimize the storage elastic modulus.
For claim 2, note that supra regarding the silver flake found in Mine et al.
For claim 3, see the adhesion aid found on the top of column 11 in Nishijima et al. The viscosity range embraces the Mw range as claimed such that selecting a specific siloxane meeting claimed (E) would have been obvious.
For claim 4, note that it is extremely common in the silicone art to include fillers such as reinforcing silica fillers to silicone resin compositions in general and even to silicone resin composition that cure by means of a hydrosilylation reaction and are used as semiconductor encapsulants such that the skilled artisan would have found this obvious.
For claim 5, no such siloxanes are required or found in Nishijima et al. In addi-tion Mine et al. teaches that such low molecular weight siloxanes have a deleterious effect on silicone materials used for semiconductors such that the skilled artisan would have been motivated to exclude any such components. See column 2, lines 47 to 65.
For claims 6 to 10, note that the claimed material only requires the composition of claims 1 to 5 such that the material in the modified Nishijima et al. reference will meet these claims.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users.
Mgm
8/17/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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