CTNF 18/277,517 CTNF 98021 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This communication responds to the application and amended claim set filed August 16,2023. Claims 1-9 are currently pending. Priority This application is the national stage entry of PCT/JP2022/001779, filed January 19,2022, which claims priority to JP2021-023120, filed January 17,2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 AIA Claim s 2-3 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. Claim 2 recites in line 4-6 and lines 8-10 respectively “ wherein in a case where a torque value is measured over time under conditions of a rotation speed of 30 rpm and a measurement temperature of 130°C by using a Labo Plastomill, a time T1 at which the torque value is equal to or less than twice a minimum torque value a is equal to or more than 65 seconds and equal to or less than 200 seconds, and in a case, where a torque value is measured over time…. a time T1’ at which the torque value is equal to or less than twice a minimum torque value b is equal to or more than 35 seconds and equal to or less than 200 seconds” is unclear and inconsistent. As written, it appears that the torque values are expressed with time units. What the applicant is intended to mean? The term “the torque value is equal to or less than twice a minimum torque value a is equal to or more than 65 seconds..” is confusing. Does it mean the torque value is equal to “2a” or any torque value below “2a”?. It is noted that the same issues are observed where a torque value is measured at a temperature of 150°C. For purposes of examination and in view of [0078] of the instant specification “a time T1 at which the torque value is equal to or less than twice a minimum torque value a is equal to or more than 35 seconds and equal to or less than 200 seconds” is interpreted as the time T1 at which the torque reaches twice the minimum torque value “a” or any value below “2a”, wherein the time T1 is in the range of 65 to 200 seconds. Claim 3 is rejected as being dependent on a rejected base claim. Claim Analysis Summary of Claim 1: An encapsulating resin composition for injection molding, comprising: (A) a thermosetting resin; (B) a curing agent; (C) an inorganic filler; and (D) a curing accelerator, wherein in a DSC curve obtained in a case where a temperature is raised from 30°C to 330°C by using a differential scanning calorimeter under a condition of a temperature rise rate of 10°C/min, a peak temperature of a maximum exothermic peak is equal to or higher than 155°C and lower than 175°C, and width in a half value of the maximum exothermic peak, which is obtained by adopting a straight baseline that connects a point of a minimum heat flow before the maximum exothermic peak and a point of a minimum heat flow after the maximum exothermic peak, is equal to or lower than 32°C. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-6 and 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Kawamura et al. (JP 2001-106771 A as listed on the IDS dated 8/16/2023; English Translation provided by Applicant ) . Regarding claim 1 , Kawamara teaches an epoxy resin composition for injection molding (abstract, claim 1) comprising an epoxy resin including a bisphenol-A epoxy resin and/or an orthocresol novolac type epoxy resin (claim 3); a novolac phenolic resin as a curing agent (claim 2); an inorganic filler such as fused silica [0011] and a dimethylurea-based curing accelerator including 1,1'-(4-methyl- m-phenylene)bis(3,3-dimethylurea) (Formula (1) [0005]), thereby reading on the claimed components (A)- (D). Kawamara further teaches the epoxy resin composition is suitable as an epoxy resin molding material for injection molding because it can easily and efficiently produce moldings such as small electric parts and electronic parts that require sealing with excellent electrical insulation and water resistant [0019]-[0021]. While Kawamara does not disclose that the epoxy resin molding composition is used as an encapsulating resin composition, it is noted that case law holds that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation." See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). Kawamara is silent on the peak temperature of a maximum exothermic peak as recited in the instant claim. Kawamara is further silent on the width in a half value of the maximum exothermic peak. The properties of the peak temperature and the width in a half value of the maximum exothermic peak depend on the composition. In view of the substantially identical resin composition of Kawamara, the composition of Kawamara will possess the claimed property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claims 2-3 , Kawamara teaches the epoxy resin composition for injection molding has excellent fluidity of the injection resin, high curability in the mold, and excellent molding strength [0019]. Kawamara is silent on the torque value, time T1 and T1’ under the conditions of temperature and rotation speed as recited in the instant claims. In view of the substantially identical resin composition of Kawamara, the composition of Kawamara will possess the claimed properties as recited on the instant claims 2 and 3. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claim 4 , Kawamara teaches 1,1'-(4-methyl- m-phenylene)bis(3,3-dimethylurea) as the curing accelerator(Formula (1) [0005] and example 1 [0017]), as required by the instant claim. Regarding claim 5 , Kawamara teaches bisphenol-A epoxy resin and/or an orthocresol novolac type epoxy resin (claim 3), as required by the instant claim. Regarding claim 6 , Kawamara teaches novolac type phenolic resin as the curing agent (claim 2, example 1 [0017]), as required by the instant claim. Regarding claim 9 , Kawamara teaches the epoxy resin molding composition produce moldings such as small electric parts and electronic parts that require sealing having excellent mechanical properties, electrically insulating and water resistant ([0015], [0019]-[0020]). Kawamura further teaches the molding was performed by curing at 165°C for 5 minutes [0015], thereby reading on the structure comprising a cure product of the resin composition . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. (JP 2001-106771 A) in view of Maeda (WO 2018/083885 as listed on the IDS dated 8/16/2023; US PG Pub 2019/256647 A1 is being used as English Translation herewith ) . Regarding claims 7-8 , Kawamura teaches the composition according to claim 1 as set forth above and incorporated herein by reference. Kawamura teaches fused silica is added in an amount to impart thixotropy to the molten resin [0011]. Kawamara is silent on the average particle diameter of the inorganic filler. Kawamara is further silent on the fused crushed silica. However, Maeda teaches an epoxy resin composition comprising an epoxy resin, a curing agent, an inorganic filler, and a curing accelerator [0001],[005]-[0009], wherein the resin composition is used in a resin composition for sealing electronic components such as a semiconductor chip [0081[, wherein the inorganic filler include fused silica such as fused crushed silica [0045] with an average particle diameter (D50) of 1 µm to 50 µm [0046]. Maeda offers the motivation of using the specific fused crushed silica due to its ability to improve the fluidity of the epoxy resin composition and thus improve the moldability more effectively [0046]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the fused crushed silica as taught by Maeda on the epoxy resin composition of Kawamara, thereby arriving at the claimed invention . 07-21-aia AIA Claim s 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Noro et al. (US PG Pub 2010/0148379 A1 as listed on the IDS dated 08/16/2023) . Regarding claim 1 , Noro et al. teach an encapsulating resin composition for molding, comprising: an epoxy resin such as bisphenol-A epoxy resins, phenol-novolac epoxy resins, cresol novolac epoxy resins or combinations thereof [0013]; a phenol based curing agent [0014]; an inorganic filler including crushed silica [0025] and a curing accelerator including quaternary phosphonium salt and 2-phen yl-4,5-dihydroxy dimethylimidazole ([0012],[0041]-[0044]), claim 1, thereby reading on the components (A), (B), (C) and (D), wherein the epoxy resin composition for semiconductor encapsulation has a reaction exothermic peak temperature of 150°C to 200°C as measured by a differential scanning calorimeter with heating at a temperature increase rate of 10°C/min (claim 3), which overlaps with the claimed range (155°C-175°C). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Noro et al. Noro et al. teach the encapsulating resin composition is used for any known molding method (i.e. transfer molding) [0032]. The statement “ for injection molding” is considered to be an intention of use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and /n re Otto, 136 USPQ 458, 459 (CCPA 1963). Therefore, the encapsulating resin composition of Noro et al. is considered to read on the limitation “ for injection molding”. Noro et al. teach the composition has a reaction exothermic calorific value accounting for not less than 80% of a total reaction exothermic calorific value as measured within a temperature range of the reaction exothermic peak temperature +-.30° C., the curing reaction evenly proceeds without local variation, thereby allowing for advantageous resin encapsulation [0011]. Noro et al. are silent on the width in a half value of the maximum exothermic peak. In view of the substantially identical encapsulating resin composition of Noro et al., the composition of Noro et al. is expected to possess the claimed property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claims 2-3 , Noro et al. teach the epoxy resin composition is an encapsulation material excellent in pot life, fluid ity and curability. The epoxy resin composition provides a highly reliable semiconductor device excellent in moisture resistant reliability (abstract). Noro et al. are silent on the torque values, time T1 and T1’ under the conditions of temperature and rotation speed as recited in the instant claims. In view of the substantially identical resin composition of Noro et al., the composition of Noro et al. is expected to possess the claimed properties as recited on the instant claims 2 and 3. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claim 4 , Noro et al. teach a curing accelerator including 2-phen yl-4,5-dihydroxy dimethylimidazole ([0012],[0044], table 1), as required by the instant claim. Regarding claim 5 , Noro et al. teach an epoxy resin such as bisphenol-A epoxy resins, phenol-novolac epoxy resins, cresol novolac epoxy resins or combinations thereof [0013], as required by the instant claim. Regarding claim 6 , Noro et al. teach a phenol based curing agent including cresol novolac resins, phenol novolac resins, dicyclopentadiene phenol resins, among others and combinations thereof[0014], as required by the instant claim. Regarding claim 9 , Noro et al. teach a semiconductor device produced by encapsulating a semiconductor element with the epoxy resin composition for semiconductor encapsulation (claim 4), wherein the epoxy resin composition has a reaction exothermic peak temperature of 150-200 °C, and the curing reaction proceeds without local variation, thereby allowing for advantageous resin encapsulation [0011], thereby reading on the structure comprising a cure product of the resin composition . 07-21-aia AIA Claim s 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Noro et al. (US PG Pub 2010/0148379 A1) in view of Maeda (WO 2018/083885; US PG Pub 2019/256647 A1 is being used as English Translation herewith ) . Regarding claims 7-8 , Noro et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference. Noro et al. teach the encapsulating epoxy resin composition further comprises an inorganic filler including spherical silica, crushed silica, among others and combinations thereof [0025]. Noro et al. are silent on the average particle diameter of the inorganic filler. Noro et al. are further silent on the fused crushed silica. However, Maeda teaches an epoxy resin composition comprising an epoxy resin, a curing agent, an inorganic filler, and a curing accelerator [0001],[005]-[0009], wherein the resin composition is used in a resin composition for sealing electronic components such as a semiconductor chip [0081[, wherein the inorganic filler include fused silica such as fused crushed silica [0045] with an average particle diameter (D50) of 1 µm to 50 µm [0046]. Maeda offers the motivation of using the specific fused crushed silica due to its ability to improve the fluidity of the epoxy resin composition and thus improve the moldability more effectively [0046]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the fused crushed silica as taught by Maeda on the epoxy resin composition of Noro et al., thereby arriving at the claimed invention . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (both listed on the IDS): Ogami et al. (WO 2014/065152) Kitada (WO 2021-025146) Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OLGA LUCIA DONAHUE/ Examiner, Art Unit 1763 /CATHERINE S BRANCH/Primary Examiner, Art Unit 1763 Application/Control Number: 18/277,517 Page 2 Art Unit: 1763 Application/Control Number: 18/277,517 Page 3 Art Unit: 1763 Application/Control Number: 18/277,517 Page 4 Art Unit: 1763 Application/Control Number: 18/277,517 Page 5 Art Unit: 1763 Application/Control Number: 18/277,517 Page 6 Art Unit: 1763 Application/Control Number: 18/277,517 Page 7 Art Unit: 1763 Application/Control Number: 18/277,517 Page 8 Art Unit: 1763 Application/Control Number: 18/277,517 Page 9 Art Unit: 1763 Application/Control Number: 18/277,517 Page 10 Art Unit: 1763 Application/Control Number: 18/277,517 Page 11 Art Unit: 1763