DETAILED ACTION
Pending Claims
Claims 1-23 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 10-15, 17-20, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onizuka et al. (WO 2018/169059 A1). Note: all citations are directed to the equivalent US Pat. No. 11,104,760.
Regarding claims 1, 3, 10-15, 17-20, and 23, Onizuka et al. disclose: (1) an epoxy resin composition (column 4, line 35 through column 5, line 23) comprising: an epoxy resin (A) (column 4, line 61 through column 5, line 23); and a latent curing agent (B), wherein the latent curing agent (B) is solid at 25°C (column 5, lines 24-34; column 7, lines 52-61; column 9, line 63 through column 19, line 9);
(3) wherein the latent curing agent (B) is an amine-based curing agent having an amine moiety (column 9, line 63 through column 12, line 2);
(10) wherein the epoxy resin composition further comprises one or more curing agents selected from the group consisting of a phenol-based curing agent, an active ester curing agent, an amine-based curing agent, an acid anhydride-based curing agent, and a thiol-based curing agent, other than the latent curing agent (B) (column 7, lines 52-57; column 8, line 63 through column 9, line 22);
(11) wherein the epoxy resin composition further comprises a film-forming polymer (D) (column 19, lines 39-46; column 20, lines 56-60);
(12) wherein the epoxy resin composition further comprises a filler (E) (column 19, lines 39-46; column 20, lines 46-51);
(13) wherein the filler (E) is an inorganic filler (column 19, lines 39-46; column 20, lines 46-51);
(14) wherein the epoxy resin composition further comprises an additive (F) (column 19, lines 39-46);
(15) an adhesive film comprising: a support; and a resin layer comprising the epoxy resin composition on the support (column 22, lines 37-43);
(17) wherein the adhesive film is an adhesive film for forming a build-up layer of a printed wiring board (column 22, lines 20-43);
(18) wherein the adhesive film is an adhesive film for an insulating layer of a semiconductor chip package (column 21, lines 20-22; see also column 21, line 65 through column 22, line 9; column 31, lines 40-44);
(19) a printed wiring board comprising a layer obtained by curing the adhesive film (column 22, lines 20-43);
(20) a semiconductor chip package comprising a layer obtained by curing the adhesive film (column 21, lines 20-22: die bonding materials; see also column 31, lines 40-44); and (23) a semiconductor device comprising the semiconductor chip package (column 21, lines 20-22: die bonding materials; see also column 31, lines 40-44).
Claims 1, 3-6, 10-15, 17-20, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kinoshita et al. (JP 2015-221859 A).
Regarding 1, 3-6, 10-15, 17-20, and 23, Kinoshita et al. disclose: (1) an epoxy resin composition (Abstract; paragraph 0106) comprising: an epoxy resin (A) (paragraph 0106; see also paragraph 0099); and a latent curing agent (B), wherein the latent curing agent (B) is solid at 25°C (paragraph 0106; see also paragraphs 0016-0095);
(3) wherein the latent curing agent (B) is an amine-based curing agent having an amine moiety (paragraphs 0018-0043);
(4) wherein the latent curing agent (B) has a particle diameter D50 at an undersize fraction of 50% of more than 0.3 mm and 10 mm or less (paragraph 0049), and a particle size distribution represented by a ratio (D99/D50) of a particle diameter D99 at an undersize fraction of 99% to the particle diameter D50 at the undersize fraction of 50% of 6 or less (paragraph 0050);
(5) wherein the latent curing agent (B) satisfies a relationship represented by the following expression (2) with a specific surface area value (= Y (m2/g)) and the particle diameter D50 at the undersize fraction of 50%(= X (mm)):
4.0X-1 ≤ Y ≤ 8.3X-1 (2)
wherein when the latent curing agent (B) is obtained by encapsulating a curing agent component with an encapsulating agent, the curing agent component before encapsulation satisfies the above expression (2) (paragraph 0048);
(6) wherein the latent curing agent (B) comprises a core (c) that is a curing agent component and a shell (s) covering the core (c), and wherein the shell (s) comprises at least a bonding group (x) absorbing an infrared radiation having a wave number of 1630 cm-1 or more and 1680 cm-1 or less, a bonding group (y) absorbing an infrared radiation having a wave number of 1680 cm-1 or more and 1725 cm-1 or less, and a bonding group (z) absorbing an infrared radiation having a wave number of 1730 cm-1 or more and 1755 cm-1 or less (paragraph 0052);
(10) wherein the epoxy resin composition further comprises one or more curing agents selected from the group consisting of a phenol-based curing agent, an active ester curing agent, an amine-based curing agent, an acid anhydride-based curing agent, and a thiol-based curing agent, other than the latent curing agent (B) (paragraph 0109-0111);
(11) wherein the epoxy resin composition further comprises a film-forming polymer (D) (paragraph 0117: urethane resin; paragraph 0121: phenoxy resin);
(12) wherein the epoxy resin composition further comprises a filler (E) (paragraphs 0108 & 0118);
(13) wherein the filler (E) is an inorganic filler (paragraphs 0108 & 0118);
(14) wherein the epoxy resin composition further comprises an additive (F) (paragraph 0108);
(15) an adhesive film comprising: a support; and a resin layer comprising the epoxy resin composition on the support (paragraphs 0118 & 0121);
(17) wherein the adhesive film is an adhesive film for forming a build-up layer of a printed wiring board (paragraph 0121);
(18) wherein the adhesive film is an adhesive film for an insulating layer of a semiconductor chip package (paragraphs 0117, 0120 & 0170);
(19) a printed wiring board comprising a layer obtained by curing the adhesive film (paragraph 0121);
(20) a semiconductor chip package comprising a layer obtained by curing the adhesive film (paragraphs 0117: die bonding; paragraphs 0120 & 0170); and (23) a semiconductor device comprising the semiconductor chip package (paragraphs 0117: die bonding; paragraphs 0120 & 0170).
Claim Rejections - 35 USC § 102/103
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Onizuka et al. (WO 2018/169059 A1). Note: all citations are directed to the equivalent US Pat. No. 11,104,760.
Regarding claim 21, the teachings of Onizuka et al. are as set forth above and incorporated herein. Onizuka et al. disclose a printed wiring board (see column 22, lines 20-23). They fail to explicitly disclose: (21) a semiconductor device comprising the printed wiring board. However, the future use of this printed wiring board would have satisfied the instantly claimed semiconductor device (comprising the printed wiring board). At the very least, the future use of this printed wiring board would have obviously satisfied the instantly claimed semiconductor device (comprising the printed wiring board).
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kinoshita et al. (JP 2015-221859 A).
Regarding claim 21, the teachings of Kinoshita et al. are as set forth above and incorporated herein. Kinoshita et al. disclose a printed wiring board (see paragraph 0121). They fail to explicitly disclose: (21) a semiconductor device comprising the printed wiring board. However, the future use of this printed wiring board would have satisfied the instantly claimed semiconductor device (comprising the printed wiring board). At the very least, the future use of this printed wiring board would have obviously satisfied the instantly claimed semiconductor device (comprising the printed wiring board).
Claim Rejections - 35 USC § 103
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Onizuka et al. (WO 2018/169059 A1) in view of Morita et al. (US 2019/0181113 A1). Note: all citations of Onizuka et al. are directed to the equivalent US Pat. No. 11,104,760.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kinoshita et al. (JP 2015-221859 A) in view of Morita et al. (US 2019/0181113 A1).
Regarding claim 16, the teachings of Onizuka et al. and Kinoshita et al. are as set forth above and incorporated herein. Both Onizuka et al. (see column 21, lines 44-64; column 22, lines 37-43) and Kinoshita et al. (see paragraphs 0118 & 0121) disclose film forming techniques for forming adhesive films with their resin compositions. They both fail to disclose: (16) wherein the adhesive film has a thickness of 20 mm or less. However, the teachings of Morita et al. demonstrate that thicknesses within the instantly claimed thickness range are recognized in the art as suitable thicknesses for this type of adhesive film (see Abstract; paragraphs 0077-0079).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the prepare the adhesive film of Onizuka et al. and the adhesive film of Kinoshita et al. with the instantly claimed thickness because: (a) both Onizuka et al. and Kinoshita et al. disclose film forming techniques for forming adhesive films with their resin compositions; and (b) the teachings of Morita et al. demonstrate that thicknesses within the instantly claimed thickness range are recognized in the art as suitable thicknesses for this type of adhesive film.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Onizuka et al. (WO 2018/169059 A1) in view of Ko et al. (US 2017/0162531 A1). Note: all citations of Onizuka et al. are directed to the equivalent US Pat. No. 11,104,760.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kinoshita et al. (JP 2015-221859 A) in view of Ko et al. (US 2017/0162531 A1).
Regarding claim 22, the teachings of Onizuka et al. and Kinoshita et al. are as set forth above and incorporated herein. Both Onizuka et al. (see column 21, lines 44-64; column 22, lines 37-43) and Kinoshita et al. (see paragraph 0118 & 0121) disclose film forming techniques for forming adhesive films with their resin compositions. Both Onizuka et al. (see column 22, lines 37-43) and Kinoshita et al. (see paragraph 0121) disclose curing temperatures of 180 to 200 oC after lamination. They both fail to disclose: (22) laminating the adhesive film under a condition of a pressure bonding pressure of 40 MPa or less.
Ko et al. disclose a related conductive adhesive film (see Abstract). They demonstrate that pressures within the instantly claimed pressure range are recognized in the art as suitable laminating pressures for this type of adhesive film (see paragraph 0123; see also paragraphs 0118-0122).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to laminate the adhesive film of Onizuka et al. and the adhesive film of Kinoshita et al. at the instantly claimed laminating pressure because: (a) both Onizuka et al. and Kinoshita et al. disclose film forming techniques for forming adhesive films with their resin compositions; (b) both Onizuka et al. and Kinoshita et al. disclose curing temperatures of 180 to 200 oC after lamination; and (c) Ko et al. disclose a related conductive adhesive film and demonstrate that pressures within the instantly claimed pressure range are recognized in the art as suitable laminating pressures for this type of adhesive film.
Claims 2 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kinoshita et al. (JP 2015-221859 A) in view of Akatsuka et al. (JP 2005-220205 A).
Regarding claims 2 and 7, the teachings of Kinoshita et al. are as set forth above and incorporated herein. Kinoshita et al. disclose the use of additional curing agents as additives (see paragraph 0108). These additional curing agents include phenol-based curing agents (see paragraph 0108). They fail to disclose: (2) wherein the epoxy resin composition further comprises an alcohol (C) represented by the following formula (1):
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192
420
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wherein R1 to R9 are each independently one selected from the group consisting of a hydrogen atom, a hydroxyl group, an alkyl group, an aromatic group, a substituent including a hetero atom, and a substituent including a halogen atom; R1 to R9 are the same or different; and any selected from R5 to R9 optionally bonds with each other to form a ring structure, and the ring structure is optionally a ring condensed with a benzene ring shown in the formula; (7) wherein R1 in the formula (1) is a hydroxyl group.
Akatsuka et al. disclose a phenol-based curing agent for epoxy resins having the following formula:
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134
242
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(see paragraphs 0007-0008).
The R group represents a hydrogen or an alkyl group, corresponding to R1 to R9 of hydrogen and/or alkyl. The second –OCH2CH(OH)CH2OH corresponds to R1 to R9 of a substituent including a hetero atom. These curing agents can be combined with other curing agents (see paragraph 0018) and are suitable for use in adhesive and lamination formulations (see paragraph 0009). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Kinoshita et al. with the instantly claimed alcohol because: (a) Kinoshita et al. disclose the use of additional curing agents as additives; (b) the additional curing agents of Kinoshita et al. include phenol-based curing agents; (c) Akatsuka et al. disclose a phenol-based curing agent for epoxy resins, corresponding to the instantly claimed phenol; (d) the phenol-based curing agent of Akatsuka et al. can be combined with other curing agents and is suitable for use in adhesive and lamination formulations; and (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 8 and 9, the combined teachings of {Kinoshita et al. and Akatsuka et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (8) wherein the epoxy resin composition comprises the alcohol (C) in an amount of 0.001 parts by mass or more and 20 parts by mass or less per 100 parts by mass in total of the epoxy resin (A) and the latent curing agent (B); and (9) wherein the epoxy resin composition comprises the alcohol (C) in an amount of 0.1 parts by mass or more and 20 parts by mass or less per 100 parts by mass in total of the epoxy resin (A) and the latent curing agent (B). Rather, the primary teachings of Kinoshita et al. disclose that these additives can be provided in amount of less than 30% by mass (see paragraph 0108). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition resulting from the combined teachings of {Kinoshita et al. and Akatsuka et al.} with the instantly claimed amount of phenol because: (a) the primary teachings of Kinoshita et al. disclose that these additives can be provided in amount of less than 30% by mass; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 8, 9, 11, 14, 15, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/578,389 (US 2024/0376291 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 2, and 14 are anticipated by copending claims 1-15.
Claims 8 and 9 are anticipated by copending claim 9.
Claim 11 is anticipated by copending claim 13.
Claims 15, 17, and 18 are anticipated by copending claims 12-17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 10, and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,104,760. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 3 are anticipated by patented claims 1-14.
Claims 10 and 14 are anticipated by patented claim 14.
Claims 12-14 are anticipated by patented claim 12.
International Search Report
The international search report cited seven X-references. All seven references have been considered, and one has been applied as prior art.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
March 28, 2026
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