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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments to claims 1, 2, 4, 6-8, and 13-14 as well as the cancelation of claims 9-10, and the addition of claims 16-17. Claims 1-8 and 11-17 are pending.
Claim Rejections - 35 USC § 112
The applicant has amended claim 13. As a result, the previous 112 rejection of claim 13 has been withdrawn.
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 1-6, 8, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nishitani (WO 2019083004, herein using English version US 20200308340).
Regarding Claims 1 and 16-17,
Nishitani teaches a curable resin composition that comprises a benzoxazine compound (Abstract), an epoxy compound (Abstract), a phenolic curing agent (Paragraphs 92 and 93), and an inorganic filler (Abstract). Nishitani further teaches that the epoxy resins are a mixture of an epoxy containing a norbornane structure (Abstract) and a naphthylene ether type epoxy (Abstract) and that the ratio between the number of epoxy groups and the number of benzoxazine rings plus the number of hydroxyl groups is preferred to be 0.5 to 1.5 (Paragraph 96), which when converted to be in the same format as the instant claims corresponds to a ratio of 0.66 to 2, overlaps with the ranges of the instant claims. Nishitani teaches that this range affords better heat resistance and temperature stability, affording the ordinarily skilled artisan with motivation to work within this range. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the amount of alicyclic epoxy compound, Nishitani teaches in Example 5 (Table 1 at page 16) a composition in which the alicyclic compound is present in an amount of 11% by weight relative to the total of epoxy resins, curing agent, and benzoxazine resin, meeting the requirements of the instant claims. Nishitani further teaches that the ratio of the alicyclic epoxy compound can be present in an amount of 10 to 90% by weight of the combined epoxy components (Paragraph 89), which overlaps with the range of the instant claims. Nishitani teaches that compositions within this range afford excellent heat resistance and temperature stability (Paragraph 89), giving the ordinarily skilled artisan motivation to stay within this range. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the amount of inorganic filler, Nishitani teaches that the amount is not particularly limited (Paragraph 102), but that it is preferred to be between 500 and 950 parts by weight relative to the total of the resins and curing agent, which represent 100 parts by mass (Paragraph 103). This would equate to amounts of 80 to 90% by mass of the total composition, which is contained within the range of the instant claims.
Regarding Claim 2,
Nishitani teaches that the benzoxazine resin can be structure of the following types on page 3:
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where Z is hydrogen or an alkyl group of 1 to 8 carbons (Paragraph 35), R is a linear alkyl group of 1-12 carbons, a cyclic alkyl of 3 to 8 carbons or an aryl group of 6 to 14 carbons (Paragraph 35) and where L is a divalent organic group with 1 to 5 aromatic rings or alkylene group of 2 to 10 carbons, both of which can optionally contain oxygen and/or sulfur (Paragraph 36).
Regarding Claims 3-5,
Nishitani teaches that the alicylic epoxy resin contains one of the following moieties on page 7:
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and can have a final structure of one of the following:
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where no glycidyl group is present and the structure contains at least two epoxy groups, meeting the requirements of the instant claims.
Regarding Claim 6,
Nishitani teaches that the inorganic filler can be mixed with a silane coupling agent (Paragraph 118).
Regarding Claim 8,
Nishitani teaches that the composition may further contain a curing accelerator (Paragraph 105).
Regarding Claims 11 and 12,
Nishitani teaches that the composition is curable (Paragraph 127) and can be disposed on a semiconductor element (Paragraph 142), meeting the requirements of the instant claims.
Regarding Claims 13 and 14,
Nishitani teaches the required composition as discussed above in regard to claim 1. Nishitani further teaches that the components are mixed (Paragraphs 122 and 123) and processed into a powder or pellet (Paragraph 124). Nishitani also teaches the use of silane coupling agents (Paragraph 118) and curing accelerators (Paragraph 105), which Nishitani teaches are also mixed (Paragraph 122).
Regarding Claim 15,
Nishitani teaches that the composition is heated to 150 to 300 °C for 20 seconds to 5 hours (Paragraph 137), which is contained within the range of the instant claim.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nishitani (WO 2019083004, herein using English version US 20200308340) as applied to claims 1-6, 8, and 11-17 above, and further in view of Nishiya (JP 2019-019217).
Regarding Claim 7,
Nishitani teaches the use of silane coupling agents (para 118), but does not specify of what type. Nishiya teaches the use of silane coupling agents (Paragraph 36) and further teaches that the coupling agent preferably contains one or more amines (Paragraph 38) which may be primary, secondary, or tertiary (Paragraph 38). Nishiya also teaches that primary and secondary amines are more preferred (Paragraph 40). As the amine groups would be reactive with the epoxy groups of the composition, it would logically follow that the presence of more than one amine would improve the reactivity of the coupling agent. Further, it would necessarily follow that based upon the preferred structure disclosed by Nishiya:
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the inclusion of more than one amine would have to occur on a single substituent, meaning that at least one of the amines would likely have to be secondary. Additionally, because Nishitani teaches the general class of coupling agents but does not teach specific species, one of ordinary skill in the art would look to the prior art for guidance. Nishiya teaches similar compositions, which like Nishitani, are directed towards heat resistant cured articles (Abstract). As a result, it would have been obvious prior to the effective filing date of the instant application to have used a silane coupling agent that contained primary and secondary amines (the preferred groups of Nishiya) as the silane coupling agent that is generically taught by Nishitani.
Double Patenting
The applicant has amended claim 1 to include amounts of inorganic filler, which is not a limitation in the claims of the US Patents 11,897998, 12,258,472, and 12,441, 833. As a result, the double patenting rejections are withdrawn.
Response to Arguments
Applicant's arguments filed 7/22/2026 have been fully considered but they are not persuasive for the following reasons.
Firstly, the examiner has applied new prior art as a result of the applicant’s amendments.
While on pages 10-12, the applicant argues about the unexpected results obtained when working within the bounds of the amended claims, the examiner points out that these properties are not currently limitations of the claims and are therefore not given patentable weight.
On page 13, the applicant argues no rational to modify the resins contained. This has been addressed in the new grounds of rejection.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
