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 .
Response to Amendments
The Amendment filed June 02, 2026 has been entered. Claims 3-17 remain pending in the application. Claims 1-2 are canceled. Claims 3-11 and 13-17 are amended and support for amendments are found in the Claims and Specification as originally filed. Applicant’s amendments to the claims and have overcome objections and 35 USC 112(b) rejections previously set forth in the Non-Final Office Action mailed March 05, 2026.
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 3-17 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (JP 2018/048276A; 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 Claims 3 and 5, Masuda teaches an electrical component [Claim 1], corresponding to the epoxy resin composition of Claim 3, said component comprising:
Epoxy resin [Claim 1], corresponding to the epoxy resin of Claim 3;
Curing agent [Claim 1], corresponding to the curing agent of Claim 3;
Filler [Claim 1], corresponding to the filler of Claim 3;
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 3.
a dispersant having ammonium groups [¶ 0024], thereby reading on wherein the ionic compound contains an ammonium-based cation of Claim 3;
Wherein said dispersant has ammonium groups [¶ 0024], thereby reading on wherein the ionic compound contains an ammonium-based ionic compound of Claim 3, and corresponding to wherein the ionic compound has a reactive group of Claim 5.
Regarding Claims 3-4 and 8, 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.
Regarding Claims 6-7, and 9-12, Masuda further teaches:
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 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; and
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.
Regarding Claim 13, Masuda further teaches filler with an average particle size of 0.05 μm to 20 μm [¶ 0020], which is equivalent to 50-20,000 nm, which overlaps with an average particle diameter is from 5 nm to 120 nm of Claim 13.
However, Masuda does not explicitly teach an average particle diameter is from 5 nm to 120 nm of Claim 13.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Masuda for the average particle diameter (50-20,000 nm) overlaps the instantly claimed range (5-120 nm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 14-15, Masuda further teaches:
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 of Claims 16-17; 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.
Response to Arguments
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive. Applicant argues (1) that there is no teaching, suggestion, or motivation to repurpose the phase transfer catalyst as a dispersant, or as a means for suppressing filler separation as addressed by the claimed invention. However, the instant claims are directed to a product so the prior art is only required to teach the composition of the product in order to render the claimed invention anticipated or obvious. In this case, the prior art teaches the structure of tetrabutylammonium hexafluorophosphate which reads on the claimed tetrabutylammonium hexafluorophosphate even if the prior art classifies the tetrabutylammonium hexafluorophosphate as a catalyst instead of a dispersant. Furthermore, it is noted that the features upon which applicant relies (i.e., use of tetrabutylammonium hexafluorophosphate as a dispersant, or as a means for suppressing filler separation) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the Applicant’s argument is not persuasive.
Applicant argues (2) neither Masuda nor Guo mentions or even suggests the problem addressed by the claimed invention. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, the Applicant’s argument is not persuasive.
Applicant argues (3) one of ordinary skill in the art has no apparent reason to look to Guo to modify Masuda, and (4) Masuda and Guo are directed to addressing different problems, having different design objectives, and have different technical concepts. However, Guo offers the motivation of using tetrabutylammonium hexafluorophosphate as a phase transfer catalyst due to its solubility in an aqueous phase [¶ 0025, 0030]. This would motivate one of ordinary skill to modify the electrical component of Masuda. Furthermore, 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 so it would be obvious to one of ordinary skill to at Masuda in view of Guo in the first place. Thus, the Applicant’s argument is not persuasive.
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 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
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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