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 .
Response to Arguments
Applicant's arguments filed 6/11/2026 have been fully considered but they are not persuasive.
The Applicant argues that Canelas does not characterize SR9036 as having the claimed end functionalized polyether oligomer backbone architecture. The Applicant argues Canelas merely lists SR9036 among representative acryclic unsaturated photocurable materials.
The Applicant further argues that SR9036 “with functionality 2” has a total molecular weight of 2156 but does not have the molecular weight of the polyether backbone itself in the 2,000-20,000 range.
The Examiner notes that the entire structure of SR9036 reads on the claimed “polyether oligomeric backbone.” The structure is a polyether because it comprises a chain of carbon atoms separated by oxygen linkers.
Additionally, the Applicant argues that claim 1 comprises two independent reactive systems. Hu defines this as the thermally curable resin and radiation self polymerizable multifunctional compound are “substantially” unable to chemically react with each other. The Applicant argues that Hu does not teach this independent/noninterference. The Applicant argues that the list of photocurable monomers include epoxy reactive functionality and thus couples the system upon epoxy cure.
However, the selection of any photocurable monomers from the list of monomers of Hu is obvious, including the monomers which are not epoxy reactive. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Therefore it while Hu does not explicitly teach the polymerizable compound is an independently reactive system, Hu does not teach away from the polymerizable compound being an independently reactive monomer. Hu additionally does not teach exclusively monomers with an epoxy reactive functionality. .
Regarding claim 16, the applicant argues that Hu does not teach the selection of a thixotropic agent. The Applicant argues that the inclusion of the thixotropic agent into the composition of Hu would be in direct contrast to the requirement of low viscosity and therefore there would be no motivation to include a thixotropic agent regardless of its utility in Katoh.
However, the Examiner notes that although the prior art discloses fumed silica as a filler it is identical to and therefore capable of functioning as a thixotropic agent.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hu US 20150322309A1 in view of Canelas US 20070082203A1 as evidenced by SR9036 Data Sheet Sartomer.
Regarding claim 1, Hu teaches a composition that comprises an epoxy resin, a latent epoxy curing agent, a photocurable monomer, and a photoinitiator (Abstract). Hu teaches these compositions are used to form underfill (Title). This reads on the claimed first and second reactive system (epoxy resin with an epoxy curing agent and photocurable monomer with a photoinitiator).
Hu teaches that the latent epoxy curing agent is activated at temperatures over 50C. This reads on the claimed thermally curable resin and thermal curing initiator.
Hu also teaches the photoinitiator can be based on a free radical initiation mechanism (Paragraph [0090]). This reads on the claimed free-radical polymerization initiator.
Hu also teaches the photocurable monomer can be a multifunctional methacrylate monomer (Paragraph [0084]). However Hu is silent on the multifunctional methacrylate oligomer comprising a polyether oligomeric backbone and at least one free-radical (co)polymerizable reactive group at each terminal position of the oligomer backbone.
Canelas teaches a one part liquid underfill (Abstract). Hu also teaches a one part liquid underfill (Abstract). Canelas teaches that the underfill comprises a multifunctional photopolymerizable oligomer component (Paragraph [0042]). Canelas teaches the multifunctional photopolymerizable oligomer component can be SR9036 (Paragraph [0042]). SR 9036 has a polyether oligomer backbone and has a molecular weight of 2156 g/mol (Sartomer Data Sheet Page 1). This overlaps with the claimed range of 2000-20000 g/mol.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the multifunctional photopolymerizable (meth)acrylate oligomer component of Canelas as the multifunctional (meth)acrylate oligomer component of Hu because SR9036 is a commercially available photopolymerizable oligomer identified by Canelas as being suitable for use in applications similar to Hu. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Regarding claims 2 and 3, Hu teaches that the photoinitiator can be activated in a range from about 250 nm to 850 nm (Paragraph [0091]). This overlaps with the claimed ranges of 350-750nm and 450-485nm.
Regarding claims 4 and 5, Hu teaches the photoinitiator can be aromatic ketones or phosphine oxides (Paragraph [0092]). Phosphine oxides reads on the claimed “Norrish type 1 initiator.”
Regarding claim 7, Hu teaches the composition additionally comprises a monofunctional epoxy resin (Paragraph [0064]). Hu teaches this monofunctional epoxy resin behaves as a reactive diluent (Paragraph [0072]). This reads as the claimed “reactive diluent.”
Regarding claim 8, Hu teaches the monofunctional epoxy resin can be 2-ethylhexyl glycidyl ether (Paragraph [0072]). This reads on the claimed glycidyl ethers of linear or branched alkanols.
Regarding claim 10, Hu teaches the multifunctional epoxy resin of the composition can be based on N,N,N',N'-tetraglycidyl-4,4'-diaminodiphenyl methane (Paragraph [0069]). This reads on the claimed “glycidyl groups.”
Regarding claim 11, Hu teaches the latent curing agent can be 2-heptadeoylimidazole (Paragraph [0077]). This reads on the claimed “secondary amine.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hu US 20150322309A1 in view of Canelas US 20070082203A1 in further view of Science Direct, (Camphorquinone, Antibacterial quaternary ammoniumcompounds in dental materials: A systematic review, Restorative Materials 2018 and 2019) as evidenced by SR9036 Data Sheet Sartomer
Regarding claim 6, Hu teaches the photoinitiators can be based on a free radical mechanism. However Hu is silent on the photoinitiator being specifically camphorquinone. Camphorquinone is known as being the most common commercially available photoinitiator (Science Direct, Page 1 and Page 2) It would have been obvious to one of ordinary skill in the art at the time of filing to select the aromatic ketone camphorquinone as the photoinitiator of Hu because it is well known in the art as a common commercially available photoinitiator.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hu US 20150322309A1 in view of Canelas US 20070082203A1 in further view of Optical brighteners: improving the color of plastics (Plastics Additives & Compounding, 5(6), 2003, 42-46) as evidenced by SR9036 Data Sheet Sartomer
Regarding claim 9, Hu teaches the composition can comprise additional additives however Hu is silent on the additional additive being an optical brightener (Paragraph [0104]). Hu teaches that the additional additives can include pigments (Paragraph [0104]). Hu’s teaching that pigments can be added to the composition results in an aesthetic improvement of the final product, indicates that the color of the product is important to the composition of Hu.
Optical brighteners are known to improve the color of plastics making whites look whiter and removing off-white or yellow stains (Optical brighteners, Page 2). This would result in an improvement of the color of the final product of Hu. It would have been obvious to one of ordinary skill in the art at the time of filing to use an optical brightener like any of the ones mentioned in Optical Brighteners, for the advantage of a brighter looking product.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hu US 20150322309A1 in view of Canelas US 20070082203A1 in further view of Katoh US 20090142884A1 as evidenced by SR9036 Data Sheet Sartomer.
Regarding claim 16, Hu teaches the incorporation of silica as a filler (Paragraph [0034]). Hu is silent on the silica being fumed silica.
Katoh teaches an epoxy resin underfill composition (Paragraph [0030]) including an inorganic filler such as fumed silica to decrease thermal expansion coefficient (Paragraph [0031]). It would have been obvious to use the fumed silica as used in the underfill composition of Katoh in the composition of Hu for the advantage of decreasing the thermal expansion coefficient. Although the prior art discloses fumed silica as a filler, it is identical to and therefore capable of functioning as a thixotropic agent as claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights