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 .
The Office Action is in response to the application filed August 15, 2023.
Claim Analysis
Summary of Claim 1:
An epoxy resin composition, comprising:
(A) an epoxy resin;
(B) a curing agent;
(C) a filler; and
(D) an ionic compound in which at least one of a cation or an anion is organic matter.
Claim Objections
Claims 6-7 and 11 recite “with respect to an entire amount of the epoxy resin composition” which is redundant. It is suggested to remove “an entire amount of” to change the claim language to “with respect to the epoxy resin composition.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 13 recites the broad recitation “an average particle diameter of less than 0.2 μm”, and the claim also recites “the average particle diameter …is from 5 nm to 120 nm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 10 and 14 use the term “type” in “bisphenol F-type epoxy resin; a bisphenol A-type epoxy resin; a biphenyl-type epoxy resin; an aminophenol-type epoxy resin; and a naphthalene-type epoxy resin”, and “core-shell type rubber particles”, respectively. The word “type” is considered indefinite because the addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). The word "type" does not distinctly point out the intended claimed matter and is considered indefinite.
Claim Rejections - 35 USC § 102
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 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 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 1-2, 5-7, and 9-17 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Masuda et al. (JP2018048276A; as cited in the IDS mailed on 08/15/2023; English translation incorporated herein; hereafter as “Masuda”).
Regarding Claim 1, Masuda teaches an electrical component [Claim 1], corresponding to the epoxy resin composition of Claim 1, said component comprising:
Epoxy resin [Claim 1], corresponding to the epoxy resin of Claim 1;
Curing agent [Claim 1], corresponding to the curing agent of Claim 1;
Filler [Claim 1], corresponding to the filler of Claim 1;
Dispersant having a cationic functional group, such as poly(meth)acrylate-based polymer [Claim 1; ¶ 0026], corresponding to an ionic compound in which at least one of a cation or an anion is organic matter of Claim 1.
Regarding Claims 2, 5-7, 9-15, Masuda further teaches:
Wherein said dispersant has ammonium groups [¶ 0024], thereby reading on wherein the ionic compound contains an ammonium-based ionic compound of Claim 2, and corresponding to wherein the ionic compound has a reactive group of Claim 5;
Said dispersant is 0.05-1.5 % by mass based on the total amount of the material [¶ 0026], corresponding to wherein the ionic compound is from 0.0001 mass % to 3.1 mass % with respect to an entire amount of the epoxy resin of Claim 6, and to wherein the ionic compound is from 0.001 mass % to 1.2 mass % with respect to an entire amount of the epoxy resin of Claim 7;
liquid epoxy resin [Examples 1-3; ¶ 0053], corresponding to the liquid epoxy resin of Claim 9;
epoxy resin such as bisphenol A [¶ 0011], thereby reading on the bisphenol A-type epoxy resin of Claim 10;
filler with an average particle size of 0.05 μm to 20 μm [¶ 0020], corresponding to a large-diameter filler having an average particle diameter of 0.2 μm or more of Claim 11, an average particle diameter of 0.2 μm to 3.0 μm of Claim 12, an average particle diameter of less than 0.2 μm of Claim 13;
40 % by mass to 80 % by mass of filler [¶ 0021], corresponding to a content ratio of the large-diameter filler is from 35 mass % to 70 mass % of Claim 11;
core-shell type acrylic rubber particles [¶ 0028], corresponding to the core-shell type rubber particles of Claim 14; and
sealing element for semiconductor chips [Claim 10; ¶ 0046], corresponding to the sealing material for a semiconductor device of Claim 15.
Regarding Claims 16-17, Masuda further teaches a method of fabricating a semiconductor device [¶ 0051 - 0052], corresponding to the semiconductor device of Claim 16, and to a method of producing a semiconductor device of Claim 17. The semiconductor device comprising:
Wiring board [¶ 0051 - 0052], corresponding to the substrate; and
Cured underfill material between the semiconductor element and the wiring board [¶ 0051 - 0052], corresponding to a cured product of an epoxy resin composition sealing a gap between the semiconductor element and the substrate of Claim 16, and filling a gap between a substrate, and a semiconductor element arranged on the substrate with an epoxy resin composition of Claim 17.
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 3-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (JP2018048276A; as cited in the IDS mailed on 08/15/2023; English translation incorporated herein; hereafter as “Masuda”) in view of Guo et al. (US 2014/0275342 A1; hereafter as “Guo”).
Regarding Claim 1, Masuda teaches the epoxy resin, curing agent, filler, and ionic compound of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 3, Masuda teaches a dispersant having ammonium groups [¶ 0024], thereby reading on wherein the ionic compound contains an ammonium-based cation of Claim 3.
However, Masuda is silent on the anion of Claim 3, and wherein the ionic compound is an ionic liquid of Claim 4, and the ionic compounds of Claim 8.
Nevertheless, Guo teaches a curable epoxy resin [Abstract], comprising tetrabutylammonium hexafluorophosphate [¶ 0025], thereby reading on the hexafluorophosphate anion of Claim 3, and corresponding to the ionic liquid of Claim 4, and reading on the tetrabutylammonium hexafluorophosphate of Claim 8.
Guo offers the motivation of using tetrabutylammonium hexafluorophosphate as a phase transfer catalyst due to its solubility in an aqueous phase [¶ 0025, 0030].
Masuda and Guo are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing epoxy resin compositions comprising epoxy resin, ionic liquid, and curing agent.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the tetrabutylammonium hexafluorophosphate due to its ability to act as a phase transfer catalyst, with the electrical component of Masuda thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764