DETAILED ACTION
Applicant’s amendment dated 1 December 2025 is hereby acknowledged. Claims 1, 2, and 5-17 as amended are pending. All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 1 December 2025. For this reason, the present action is properly made final.
Claim Objections
Claim 13 is objected to because of the following informalities: the claim lacks a period. Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 5-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-045435 A (“Yamada”).
This reference and machine translation were made of record with applicant’s IDS dated 20 December 2024.
As to claims 1, 2, and 11, Yamada teaches an epoxy resin composition having epoxy resin, thiol curing agent, latent curing agent (abstract).
Example 6 of Yamada (table 1) includes two epoxy resins B1 and B2, the first being a liquid epoxy resin JER 828, which is bisphenol type having two or more epoxy groups and a epoxy equivalent weight in the recited range (para. 0054), thus meeting the recitation of component A as required by claims 1 and 2, and B2, a liquid flexible epoxy resin that is a bisphenol type, thus bifunctional and an epoxy equivalent weight of greater than 210 g/mol, and thus meets the recitation of B-1 as required by claims 1 and 11. Example 6 provides for 36.2 parts of epoxy resin B1 and 13.5 parts of B2, which meets the recited content of component B as recited.
While not exemplified, Yamada teaches that the composition may include ordinary additives including reactive diluent (para. 0032), and as such, the use of a reactive diluent is an obvious modification suggested by Yamada.
As to claim 5, example 6 of Yamada uses PEMP as component C-1, which is a pentaerythritol tetrakis (3-mercaptopropionate) (para. 0019), which has four -SH groups.
As to claim 6, example 6 of Yamada teaches a composition having 36.5 parts of polythiols to 36.2 parts of B1, which meets the recitation.
As to claim 7, example 6 of Yamada includes carbon black (para. 0054), an inorganic filler.
As to claim 8, Yamada does not discuss cure shrinkage rate; however, since the materials are the same as recited, it is presumed to have the recited cure shrinkage.
As to claim 9, Yamada teaches use of bonding between different materials (para. 0059), which are presumed to have different coeffiicients of linear expansion. In addition, since Yamada teaches the composition as recited, it is presumed capable of the intended use.
As to claim 10, Yamada teaches a cured product (para. 0059).
As to claim 13, Yamada does not discuss the viscosity. However, since Yamada teaches the same epoxy resins, with same polythiols agents as recited, it is presumed to have the recited viscosity.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-045435 A (“Yamada”) as applied to claim 1, further in view of JP 2018-039958 A (“Yamada B”).
As to claim 14, Yamada lists thiol compounds, and is not limiting, but does not disclose any secondary thiols. Yamada B teaches similar thermiosetting adhesive using combinations of epoxy resin, thiol curing agent, and latent curing agent, and teaches, in addition to those taught by Yamada A, secondary thiol compounds including 1,4-bis(3-mercaptobutyryloxy)butane, and teaches such compounds are useful for eleaciticy andt toughness (para. 0020). As such, the use of such thiol compounds is obvious for improving such characteristics as taught by Yamada B.
Claim(s) 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-045435 A (“Yamada”) as evidenced by US 2022/0402269.
As to claim 16, Yamada teaches the use of Novacure HX3722, which is a microcapsule (para. 0054), thus a fine powder. Yamada does not state whether it is of the recited compounds of claim 16, or the particle size of claim 17. However, as evidenced by US 2022/0402269, para. 0084, HX-3722 is an imidazole based agent having particle size in the recited range.
Claim(s) 1, 2, 5-10, 12, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,653,371 (“Burns”) US 3,513,221 (“Huang”), US 2010/0143732 (“Swift”), Dow Plastics, Dow Epoxy Novolac Resins (1998) (“Dow’), and US 4,356,417 (“Smith”).
As to claims 1 and 2, Burns teaches a curable epoxy resin composition (abstract) containing an epoxide resin, a polythiol curing agent, and latent epoxy hardener (curing agent) (abstract).
Table 8a, col. 34, of Burns teaches compositions containing EP 828, EPON 862, DEN 438, two polythiols TMPT and PETMP, and latent hardener Ajicure PN-23 (18:15-40). EP 828 is Epikote 828, which is a liquid diglycidyl ether of bisphenol A, thus difunctional epoxy, having an epoxy equivalent weight of 175-195, as required by claims 1 and 2. EPON 862 is a liquid bisphenol F, thus difunctional epoxy (18:15-40) ersin having an epoxy equivalent weight of 165-173, as evidenced by Swift, para. 0066, and together these two resins are component (A) as required by claims 1 and 2. DEN 438 is an epoxy novolac resin, which as evidenced by Dow, p. 2 has more than 2 epoxy functionalities, and based on Fig. 2 of Dow, p. 5, has a viscosity of 25 degrees C well in excess of 100,000 cP (100 Pa s), and can therefore be considered a solid at 25 degrees C, and therefore meet component B.
Burns does not teach the recited component (B) is a bisphenol type epoxy resin. However, Burns teaches numerous novolac type resins, including SU-8 that is bisphenol A type novolac (7:60-63), which as evidenced by Smith, 16:50-60, is multifunctional, thus having two or more epoxy groups, and solid. It would be obvious to modify the composition of Burns to substitute SU-8 as a novolac epoxy resin, which would have the recited amount of B in the examples of Burns, as Burns teaches that this is a substitute for epoxy novolac.
Burns does not exemplify a reactive diluent. However, Burns teaches the utility of using low viscosity reactive diluents (8:5-30), and as such, the use of diluents are an obvious modification suggested by Burns.
Burns does not exemplify a reactive diluent. However, Burns teaches the utility of using low viscosity reactive diluents (8:5-30), and as such, the use of diluents are an obvious modification suggested by Burns.
Burns does not discuss the recited two epoxy resins. Yamada B teaches adhesives using liquid epoxy resin in combination with flexible epoxy resin (para. 0007) in amounts of flexible epoxy resin that meet the recitation of component B with respect to A.
As to claim 5, the compounds TMPT and PETMP each have three or more SH groups (18:26-32).
As to claim 6, the compositions of Table 8a use 165 parts of thiol curing agents to 200 parts of EP 828 and EPON 862, or 82.5 parts of component C to 100 parts of component A.
As to claim 7, while not exemplified, Burns teaches the utility of silicas and other inorganic fillers for adjusting rheological properties (col. 15), and as such, the addition of such compounds is an obvious modification suggested by Burns.
As to claim 8, Burns is silent as to cure shrinkage. However, given that Burns suggests the identical composition with reactive diluent, the same cure shrinkage would be expected.
As to claim 9, Burns teaches using the composition to bond a semiconductor device to a pcb (16:44-55). While Burns does not discuss different linear expansion coefficients, it is presumed that these are different materials, and would therefore be expected to have different expansion coefficients.
As to claim 10, Burns teaches a cured product of the composition (18:1-5).
As to claim 12, while not exemplified, Burns teaches the ratio of epoxy equivalents to thiol equivalents is 0.5:1 to about 1.5:1 (8:50-55), which overlaps the recited range, and therefore ratios within the recited range are an obvious modification suggested by Burns.
As to claim 13, Burns does not discuss the viscosity. However, since Burns teaches the same epoxy resins, thiol curing agents, and reactive diluents, including in recited amounts, the composition of Burns using the reactive diluent is presumed to have the recited viscosity.
As to claim 15, Burns does not exemplify the recited amount, but discusses using up to 50 % of the epoxy component as reactive diluent (8:10-16), which includes ratios of to 100 parts of diluent to components A and B, and as such, the use of reactive diluent in the recited amount is an obvious modification suggested by Burns.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, and 5-17 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Additional evidentiary references have been added to show the claims as being obvious over Burns.
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 KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764