DETAILED ACTION
This is an Office action based on application number 18/255,989 filed 19 December 2023, which is a national stage entry of PCT/JP2021/044708 filed 6 December 2021, which claims priority to JP2020-202863 filed 7 December 2020. Claims 1, 3, 5-7, and 13-18. Claims 2, 4, and 8-12 are canceled.
Amendments to the claims, filed 6 March 2026, have been entered into the above-identified application.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6 March 2026 has been entered.
Withdrawn Rejections
The prior art rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Iwamura et al. (JP2019-077810A with citations taken from the machine translation provided by Applicant) in view of Kojima et al. (US Patent Application Publication No. US 2002/0161100 A1) (Kojima), Fujisawa et al. US Patent Application Publication No. US 2009/0263936 A1) (Fujisawa), Takeuchi et al. (US Patent Application Publication No. US 2002/0147263 A1) (Takeuchi), and Hirano (JP2002-280205A with citations taken from the provided machine translation) (Hirano).
Reference is made to FIG. 1 of Iwamura, reproduced below:
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Regarding instant claims 1 and 6-7:
Iwamura discloses a chip resistor <100> comprising a resistor <50>, a glass material layer <60> covering the resistor <50>, and an insulating layer <70> covering the glass material layer <60> (FIG. 1; paragraph [0046]). Said glass material layer <60> meets the claimed undercoat protective film.
Iwamura further discloses that the thickness of the insulating layer <70> is 5 μm or more and 40 μm or less (paragraph [0040], which overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Iwamura further discloses that the insulating composition contains a photocurable multifunctional epoxy resin, a curing agent, and inorganic particles (paragraph [0017]).
The presence of said curing agent implies that the intended form of the insulating composition is a cured product.
Iwamura further discloses that the inorganic particles are inclusive of silica (paragraph [0031]).
Iwamura does not explicitly disclose the claimed content of the silica particles and the claimed average particle size thereof. Iwamura does not explicitly disclose the content silicone rubber particles, amount thereof, average particle size thereof, and hardness thereof. Iwamura does not explicitly disclose carbon pigment. Iwamura does not disclose the thickness of the resistor body and undercoat.
Regarding the content and average particle size of the silica particles:
Kojima discloses an embedding resin for embedding an electronic part such as a chip resistor in a wiring circuit board (paragraph [0002]).
Kojima further discloses the embedding resin comprises an epoxy resin (paragraph [0041]).
Kojima teaches that an inorganic filler is included in the embedding resin in an amount of 60 to 75 wt%, based on the embedding resin in order to sufficiently perform its intended effect of lowering thermal expansion coefficient (paragraph [0047]).
Kojima discloses that the diameter of the inorganic filler is 0.5 μm to 10 μm in order to ensure that the filler does not clog gaps between electrodes in the electrical parts, which causes insufficient filling of the resin; furthermore, the size ensures that the resin has optimized fluidity (paragraph [0052]).
It is noted that the particle size range of Kojima includes the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silica of Iwamura in the amount prescribed by Kojima. The motivation for doing so would have been that the amount ensures that the silica particles can beneficially lower the thermal expansion coefficient of the resin. Furthermore, the particle size optimizes the fluidity of the composition.
Regarding the content of silicone rubber particles, amount thereof, average particle size thereof, and hardness thereof:
Fujisawa discloses an insulating liquid for a semiconductor structure (paragraph [0001]).
Fujisawa further discloses that the insulating liquid comprises 5 to 50 parts by mass of insulating spherical silicone rubber particles having an average diameter of 0.1 to 50 μm and having a type A durometer hardness according to JIS K 6253 equal to or below 80 (paragraph [0007]).
It is noted that the ranges disclosed by Fujisawa overlap or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Fujisawa teaches that the silicone rubber particles adjust the viscosity and thixotropic properties of the composition which prevents excessive spreading of the composition that may cause contamination, and avoids the formation of voids between the interface of the composition and semiconductor chip (paragraphs [0031; 0033]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silicone rubber particles of Fujisawa in the composition of Iwamura. The motivation for doing so would have been to optimize the viscosity and thixotropic properties of the insulating composition to avoid excessive contamination and void formation.
Regarding the content of carbon pigment:
Takeuchi discloses an embedding resin for chip resistors, wherein the resin assumes a color (paragraph [0003]).
Takeuchi further discloses an embedding resin is generally colored black in order to prevent random reflection of light or to reduce non-uniformity in color of the resin during a curing process (paragraph [0009]).
Takeuchi further discloses that the resin is inclusive of an epoxy-type resin (paragraph [0054]).
Takeuchi further discloses that black carbonaceous powder such as carbon black, graphite, and mixtures thereof are incorporated into the embedding resin to impart a black color (paragraph [0042]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the black carbonaceous powder of Takeuchi into the epoxy-based insulating composition of Iwamura. The motivation for doing so would have been to prevent the random reflection of light by the finished product and to reduce non-uniformity in color of the finished product.
Regarding the thickness of the resistor body and the undercoat:
Hirano discloses a chip resistor including an undercoat film formed of glass to cover a resistive film (paragraph [0010]).
Hirano discloses that the thickness of the resistive film has a thickness of 5 to 15 μm (paragraph [0016]).
Hirano further discloses that the glass undercoat film has a thickness of about 5 to 15 μm (paragraph [0017]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to form the resistor and glass material layer of Iwamura to the thicknesses described by Hirano. The motivation for doing so would have been that Hirano provides an art-recognized, specified thickness to form such layers when Iwamura generally describes the presence of the layers without specificity or criticality.
Therefore, it would have been obvious to combine Kojima, Fujisawa, Takeuchi, and Hirano with Iwamura to obtain the invention as specified by the instant claims.
Regarding instant claim 3:
Iwamura further discloses that the insulating composition contains a photocurable polyfunctional epoxy resin inclusive of hydroxyphenyl type epoxy resins (paragraphs [0013; 0024]).
The suggestion of polyfunctional hydroxyphenyl type epoxy resins suggests that the scope of Iwamura includes the claimed tetrafunctional hydroxyphenyl epoxy resins (i.e., a specific multifunctional hydroxyphenyl-type epoxy resins).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iwamura in view of Kojima, Fujisawa, Takeuchi, and Hirano, as applied to claim 1, above, and further in view of Kambra et al. (US Patent Application Publication No. US 2002/0118094 A1) (Kambra).
Regarding instant claim 5:
Iwamura in view of Kojima, Fujisawa, Takeuchi, and Hirano discloses the chip resistor comprising a glass material layer as cited in the rejection of claim 1, above. Said glass material layer meets the claimed undercoat protective film.
Iwamura does not explicitly disclose the undercoat protective film made of an inorganic material containing alumina.
However, Kambra discloses a chip resistor comprising a sapphire glass layer that is easily processed due to its low hardness (paragraph [0045]). One of ordinary skill in the art would readily know that that sapphire is a composed of aluminum oxide (i.e., alumina).
Before the effective filing date of the claimed invention, it would have been obvious one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the sapphire glass of Kambra to form the glass material layer of Iwamura. The motivation for doing so would have been that sapphire glass is an art-recognized glass-containing component for the product of chip resistors, wherein said sapphire glass is easily processed.
Therefore, it would have been obvious to combine Kambra with Iwamura in view of Kojima, Fujisawa, Takeuchi, and Hirano.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Iwamura in view of Kojima, Fujisawa, Kambra, and Hirano.
Regarding instant claims 13-14 and 16-17:
Iwamura discloses a chip resistor <100> comprising a resistor <50>, a glass material layer <60> covering the resistor <50>, and an insulating layer <60> covering the glass material layer <60> (FIG. 1; paragraph [0046]). Said glass material layer <60> meets the claimed undercoat protective film.
Iwamura further discloses that the thickness of the insulating layer <70> is 5 μm or more and 40 μm or less (paragraph [0040], which overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Iwamura further discloses that the insulating composition contains a photocurable multifunctional epoxy resin, a curing agent, and inorganic particles (paragraph [0017]).
The presence of said curing agent implies that the intended form of the insulating composition is a cured product.
Iwamura further discloses that the inorganic particles are inclusive of silica (paragraph [0031]).
Iwamura does not explicitly disclose the claimed content of the silica particles and the claimed average particle size thereof. Iwamura does not explicitly disclose the content silicone rubber particles, amount thereof, average particle size thereof, and hardness thereof. Iwamura does not explicitly disclose the undercoat protective film made of an inorganic material containing alumina. Iwamura does not disclose the thickness of the resistor body and undercoat.
Regarding the content and average particle size of the silica particles:
Kojima discloses an embedding resin for embedding an electronic part such as a chip resistor in a wiring circuit board (paragraph [0002]).
Kojima further discloses the embedding resin comprises an epoxy resin (paragraph [0041]).
Kojima teaches that an inorganic filler is included in the embedding resin in an amount of 60 to 75 wt%, based on the embedding resin in order to sufficiently perform its intended effect of lowering thermal expansion coefficient (paragraph [0047]).
Kojima discloses that the diameter of the inorganic filler is 0.5 μm to 10 μm in order to ensure that the filler does not clog gaps between electrodes in the electrical parts, which causes insufficient filling of the resin; furthermore, the size ensures that the resin has optimized fluidity (paragraph [0052]).
It is noted that the particle size range of Kojima includes the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silica of Iwamura in the amount prescribed by Kojima. The motivation for doing so would have been that the amount ensures that the silica particles can beneficially lower the thermal expansion coefficient of the resin. Furthermore, the particle size optimizes the fluidity of the composition.
Regarding the content of silicone rubber particles, amount thereof, average particle size thereof, and hardness thereof:
Fujisawa discloses an insulating liquid for a semiconductor structure (paragraph [0001]).
Fujisawa further discloses that the insulating liquid comprises 5 to 50 parts by mass of insulating spherical silicone rubber particles having an average diameter of 0.1 to 50 μm and having a type A durometer hardness according to JIS K 6253 equal to or below 80 (paragraph [0007]).
It is noted that the ranges disclosed by Fujisawa overlap or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Fujisawa teaches that the silicone rubber particles adjust the viscosity and thixotropic properties of the composition which prevents excessive spreading of the composition that may cause contamination, and avoids the formation of voids between the interface of the composition and semiconductor chip (paragraphs [0031; 0033]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silicone rubber particles of Fujisawa in the composition of Iwamura. The motivation for doing so would have been to optimize the viscosity and thixotropic properties of the insulating composition to avoid excessive contamination and void formation.
Regarding the undercoat protective layer being made of an inorganic material containing alumina:
Kambra discloses a chip resistor comprising a sapphire glass layer that is easily processed due to its low hardness (paragraph [0045]). One of ordinary skill in the art would readily know that that sapphire is a composed of aluminum oxide (i.e., alumina).
Before the effective filing date of the claimed invention, it would have been obvious one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the sapphire glass of Kambra to form the glass material layer of Iwamura. The motivation for doing so would have been that sapphire glass is an art-recognized glass-containing component for the product of chip resistors, wherein said sapphire glass is easily processed.
Regarding the thickness of the resistor body and the undercoat:
Hirano discloses a chip resistor including an undercoat film formed of glass to cover a resistive film (paragraph [0010]).
Hirano discloses that the thickness of the resistive film has a thickness of 5 to 15 μm (paragraph [0016]).
Hirano further discloses that the glass undercoat film has a thickness of about 5 to 15 μm (paragraph [0017]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to form the resistor and glass material layer of Iwamura to the thicknesses described by Hirano. The motivation for doing so would have been that Hirano provides an art-recognized, specified thickness to form such layers when Iwamura generally describes the presence of the layers without specificity or criticality.
Therefore, it would have been obvious to combine Kojima, Fujisawa, Kambra, and Hirano with Iwamura to obtain the invention as specified by the instant claims.
Regarding instant claim 15:
Iwamura further discloses that the insulating composition contains a photocurable polyfunctional epoxy resin inclusive of hydroxyphenyl type epoxy resins (paragraphs [0013; 0024]).
The suggestion of polyfunctional hydroxyphenyl type epoxy resins suggests that the scope of Iwamura includes the claimed tetrafunctional hydroxyphenyl epoxy resins (i.e., a specific multifunctional hydroxyphenyl-type epoxy resins).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Iwamura in view of Kojima, Fujisawa, Kambra, and Hirano as applied to claim 13 above, and further in view of Takeuchi.
Regarding instant claim 18:
Iwamura in view of Kojima, Fujisawa, Kambra, and Hirano discloses the chip resistor as cited in the rejection of claim 13, above.
Iwamura in view of Kojima, Fujisawa, Kambra, and Hirano does not explicitly disclose the coating agent contains carbon as a pigment.
However, Takeuchi discloses an embedding resin for chip resistors, wherein the resin assumes a color (paragraph [0003]).
Takeuchi further discloses an embedding resin is generally colored black in order to prevent random reflection of light or to reduce non-uniformity in color of the resin during a curing process (paragraph [0009]).
Takeuchi further discloses that the resin is inclusive of an epoxy-type resin (paragraph [0054]).
Takeuchi further discloses that black carbonaceous powder such as carbon black, graphite, and mixtures thereof are incorporated into the embedding resin to impart a black color (paragraph [0042]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the black carbonaceous powder of Takeuchi into the epoxy-based insulating composition of Iwamura. The motivation for doing so would have been to prevent the random reflection of light by the finished product and to reduce non-uniformity in color of the finished product.
Therefore, it would have been obvious to combine Takeuchi with Iwamura in view of Kojima, Fujisawa, Kambra, and Hirano to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments are fully considered, but are moot due to the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 03/11/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788