DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 45 to 57, in the reply filed on 3/10/26 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 49, 52 and 53 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor.
In claims 49 and 53, it is unclear if the binder requirement applies to all of the
binders referenced previously in the claim or only to the one following the “and/or” term.
In claim 53, it is confusing that the non-conductive particles can be present in an amount of 0 when claim 52 requires the particles to be present.
In claim 52, the language “any of the claims 45” makes no sense.
Claim Interpretation
The phrase “for use in the manufacture of an in-mould electronic component” is considered to be a future intended use clause. MPEP 2111.02 II states that if the body of a claim fully sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not consid-ered a limitation and is of no significance to claim construction. In this instant applica-tion, the claim is fully defined and limited by the components in the binder composition such that this “for use…” clause does not appear to carry any patentable weight.
Also, note that many of the claims contain “and/or” such that only one of the numerous limitations contained in these claims need to be present in the prior art for anticipation.
For the prior art teachings, the Examiner notes that all Cymel products are hexamethyoxymethyl melamines.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 45 to 47 and 54 to 56 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. 2005/0255314.
Wang et al. teach a composition for release layers of in-mold decoration. Such
layers can be used to make plastic articles including a wide range of electronic devices (see paragraphs 55 to 57). While not necessary, the Examiner notes that this meets the “for use in the manufacturing…” clause in claim 45.
As can be seen from paragraphs 26 to 35, the release composition contains a melamine formaldehyde and a phenolic resin which will possess hydroxyl groups.
This is exemplified by Example 1 (paragraph 60) which contains a phenolic resin, a methylated melamine resin and MEK as a solvent. The cellulose acetate butyrate also meets the requirement of a thermoplastic having hydroxyl groups. The composition in Example 3 meets this requirement as well. This anticipates the components in the composition of claim 45
For claim 46, note that the melamine formaldehyde used, a CYMEL product, is a hexamethoxymethyl melamine.
For claim 47, note that MEK is a ketone solvent. Also note that the combined weight of phenolic resin and cellulose acetate butyrate results in a composition that falls within the wt% requirement in this claim. In addition the teachings in paragraph 48 meet the functional additives in this claim.
For claims 54 to 56, note that the only component required in these compositions is the composition of claim 45. The language “in the form of” does not lend any specific meaning or limitation to these claims. For instance an encapsulant is merely a material that is used for encapsulation, such that the composition in claim 45 (and paragraph 60 of Wang et al.) meets this material. Regarding the term “adhesive” note that, while the composition in paragraph 60 is used as a release layer, it has adhesive properties. See paragraph 11.
In addition to the above, see the last line in paragraph 57 which teaches using the release layer composition as an ink or protective coating.
Claims 52, 53 and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. 2005/0255314
For claims 52 and 53, note that paragraph 49 teaches the addition of various
fillers that are non-conductive. This differs from that claimed in that it does not teach the particle size thereof.
Adjusting the particle size is a well-known means of adjusting the properties attributed to the fillers such that one having ordinary skill in the art would have found a particle size within the claimed range to have been obvious. Note, for instance, that all of the fillers in paragraph 49 are commercially available in the range of the claimed particle size such that the skilled artisan would be merely adding a known ingredient to a known composition for its known function.
For claim 57, note that fillers such as calcium carbonate and mica are also pigments that meet this requirement.
Claims 45 to 47 and 54 to 57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salensky et al. 5,045,141.
Salensky et al. teach an adhesive composition. While the entire teachings are
relevant to this rejection, the Examiner draws specific attention to the formulation shown on column 13. This mixes a phenoxy resin with a melamine formaldehyde and diethyl-ene glycol monobutyl ether as a solvent. This meets the required components in claim 45.
For claim 46, note that both the melamine formaldehyde (a Cymel compound) and the phenoxy resin meet this claim.
For claim 47, note that the phenoxy resin is a homopolymer. In addition the amounts of each component fall within the range in this claim and nigrosine black is a colorant.
For claims 54 to 56, note that the only component required in these compositions is the composition of claim 45. The language “in the form of” does not lend any specific meaning or limitation to these claims. For instance an encapsulant is merely a material that is used for encapsulation, such that the composition in claim 45 (and formulation in column 13) meet this material.
Also the composition in Salensky et al. is described as an adhesive such that this meets claim 55.
For claim 57, the presence of nigrosine black meets this pigment requirement.
Claims 45 to 47 and 52 to 57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Halahmi et al. 2009/0163615.
Halahmi et al. teach an ink formulation that contains a crosslinking compound, a
Polyol, a solvent and a phenolic resin, among other components. See the abstract.
Of particular importance to this rejection, please see Table 1 which shows such an ink formulation. This includes a Cymel compound, a polyol, a phenolic resin and a solvent, among other components. This anticipates claim 45.
For claim 46, the Cymel compound meets this requirement.
For claim 47, note that the phenolic resin is a homopolymer. Furthermore additives such as the dispersing agents, fillers, pigment and rheology modifier found in Table 1 meet the claimed functional additives
For claim 52, the silica in Table 1 is an inorganic non-conductive particle. As can be seen in paragraph 48 of Halahmi et al., this has a particle size of less than 2 micron, meeting this requirement of less than or equal to 10 micron in this claim.
For claim 53, note that the amount of silica in Table 1 meets this requirement.
For claims 54 and 57, as noted above, this composition is used as an ink. The presence of the pigment meets claim 57.
For claims 55 and 56, these inks have adhesive properties. See paragraphs 161, 163 and 167.
Finally, for claims 54 and 55, note that these inks are dielectric (paragraph 109) and insulative (paragraph 18).
Claims 45 to 57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jarzombek et al. 5,003,034.
Jarzombek teaches coating compositions that contain a hydroxyl group contain-
ing polyether or polyester, an amine formaldehyde resin and a solvent. See column 2, lines 6 to 12. While this alone is sufficient to anticipate claim 45, the Examiner draws specific attention to the working examples starting in column 6.
Example 1 contains a Cymel compound, a polyether polyol and isopropyl alcohol. This meets each component in claim 45.
As noted above, Cymel meets the melamine in claim 46, while the polyether also meets claim 46.
For claim 47, note that the polyether is a homopolymer. The amounts of each component fall within the claimed wt$ range. The alcohol meets the solvent limitation in claim 47 and the aluminum serves as a pigment.
For claim 48, aluminum is a conductive metal and is present in the form of a metallic flake 9column 5, line 15).
For claim 49, note that the amount of aluminum paste in Example 1 meets this requirement.
For claims 50 and 51, note that these compositions are defined solely by the composition in claim 45 such that the coating in Jarzombek et al. meet these limitations.
For claim 52, from column 5, lines 12 to 14, it is clear that a metal flake is not required. To this extent see Example 4 which does not contain a metal flake. Rather this composition contains titanium dioxide pigment. This particular has a median particle size of .5 micron1. This meets the requirements of claim 52
For claim 53, note that the amount of titanium dioxide falls within this claimed range.
For claims 54 to 57, note that these compositions are defined solely by the com-position of claim 45 such that these requirements are met by Jarzombek et al.
Conclusion
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.
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Mgm
4/4/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
1 See DuPont Ti-Pure R-960 Datasheet