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 .
Claim Objections
Claim 24 is objected to because of the following informalities: claim 24 does not end in a period. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim(s) 11-21, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amano (US 6,140,454) in view of Komiyatani (US 6,447,915).
Amano teaches an example having 15.7 parts phenolic novolac type epoxy resin, 9.1 parts phenolic resin, 1.2 parts polycarbodiimide resin powder, 75 parts fused silica (Table 1) normalizes to 100 parts phenolic novolac type epoxy resin, 58 parts phenolic resin, 7.6 parts polycarbodiimide resin powder, 478 parts fused silica. These amounts meet claim 1. The ratio of carbodiimide to epoxy resin is 1.2 : 15.7, which is 0.07:1 which meets the range of claim 20.
Amano does not explicitly recite the presence of a modified polymer selected from polyethersulfone or polyamideimide.
However, Komiyatani teaches adhesives for circuit boards which contain an epoxy resin and a component (a) sulfur containing thermoplastic (abstract) where the component (a) includes polysulfone and polyethersulfone (col. 3, ln. 10-11). Komiyatani teaches the component (a) is present in 20-70 wt% of the total resin (col. 3, ln. 19-21) which falls within the ranges of claims 11 and 21 when the parts by weight are normalized to wt% of the total resin (giving about 7-70 wt% modified polymer).
It would have been obvious to use the polyethersulfones of Komiyatani because it has a high reactivity with epoxy resins and as a result suppresses the phase separation and gives improved heat resistance (col. 3, ln. 10-18).
Amano teaches the epoxy resin includes bisphenol A, bisphenol F and the like, naphthalene type epoxy resins, and the epoxy resins can be used in combination of two or more (col. 2, ln. 22-32) which meets the limitations of claim 12.
Amano teaches the phenolic resin includes cresol novolac resins (col. 2, ln. 36-40). As there are only three isomers of cresol (o-, m-, and p-), one of ordinary skill in the art would have instantly envisaged each isomer, including the claimed o-cresol. This meets claim 13.
Komiyatani teaches that component (a) (corresponding to the claimed modified polymer, polyethersulfone) has a molecular weight of 103 to 105 (col. 2, ln. 50-52) or 1000 to 100,000 which overlaps claim 14.
To the extent that claim 15 further limits an optional component (polyamide-imide), the Komiyatani meets claim 15.
The amount of silica in the example of Amano corresponds to about 75 wt% (Table 1) which falls in the range of claim 16 and Amano teaches the amount of inorganic filler can be 60-95 pbw of the tala weight of the composition (col. 4, ln. 10-15) which overlaps the range of claim 16.
Amano teaches using a curing accelerator in an amount of 0.3 pbm (Table 1) which falls in the range of claim 17.
Komiyatani teaches using the adhesive as a varnish using a solvent (col. 3, ln. 57-65; col. 5, ln. 27-34) and forming a film (col. 1, ln. 50) or coating (col. 5, ln. 27-34) which meets claims 18-19.
Amano teaches the composition is used in a circuit package composition (claim 3) and Komiyatani teaches the composition is used in a circuit board (abstract) which meets claim 27.
Amano and Komiyatani teach amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Amano and Komiyatani suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Amano and Komiyatani. See MPEP 2123.
Claim(s) 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amano (US 6,140,454) in view of Komiyatani (US 6,447,915) and Goto (US 2011/0244183).
The discussion with respect to Amano and Komiyatani above is hereby incorporated by reference.
Amano and Komiyatani do not explicitly recite the silica (silicon dioxide) is spherical with the particle size in the claimed range.
However, Goto teaches resin compositions comprising an epoxy resin (abstract) used in circuit substrates (¶ 143-144) which includes a silica component (abstract) which has a particle diameter of 0.2-1.0 micron (abstract) and has a spherical shape (¶ 104) and have a surface treatment (abstract). This meets claims 22-23, 26. Goto teaches the silica can include an amount of silica having a particle diameter smaller than 0.2 micron in an amount of 0-50 vol% of the silica (¶ 97) which gives a size that overlaps the claimed 10-100 nm and an amount that overlaps the claimed amounts. For example, 0-50 vol.% of 75 parts silica is about 0-37.5 wt% silica, which overlaps 1-10 mass%.
It would have been obvious to one of ordinary skill in the art to use the silica of Goto because it increases the dispersibility of the silica component (¶ 108) and a more homogeneous composition can be obtained (¶ 113). It would have been obvious to use an amount of silica having a small diameter because it increases the adhesive strength (¶97) and lowers the water absorption rate and thus increases insulation performance (¶97).
Goto teach amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Goto suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Goto. See MPEP 2123.
Claim(s) 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amano (US 6,140,454) in view of Komiyatani (US 6,447,915) and Du (CN 104558688). As the CN document is not in English, citations are made to the attached translation.
The discussion with respect to Amano and Komiyatani above is hereby incorporated by reference.
Amano and Komiyatani do not explicitly recite the silica (silicon dioxide) is spherical with the particle size in the claimed range.
Du teaches a filler composition for printed circuit boards (¶ 2) where the spherical fillers are used (¶ 5). Du teaches the silica is 85-99 wt% silica with a D50 of 1-15 microns and a nano silica with a D50 of 10-100 nm (¶ 23). This corresponds to claims 23-25. Du teaches a surface treatment of the silica (¶34-36).
It would have been obvious to use a spherical silica because a spherical shape has lower viscosity and is easier to add (¶5). It would have been obvious to use a small amount of nano-silica because it allows it to adhere to the silica surface, forming a better ball-bearing effect and increasing the fluidity of the silica mixture, and the nano silica has a large surface area, which can adsorb resin or solvent onto the filler surface, thereby increasing the stability of the system (¶ 26).
Conclusion
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764