DETAILED ACTION
This communication responds to the Amendment filed 04/16/2026. Claims 10 was added. Claims 1-10 are currently pending and are under examination. The rejections of claims 2-3 under 35 U.S.C. 112 set forth in the Office Action dated 03/02/2026 are WITHDRAWN due to Applicant's responsive amendments.
In view of the amendment, a new ground of rejections of claims 1 -10 under 102 and 103 are made.
This office action is made final.
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.
Claim 4 is 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 1 excludes a dimethylurea-based curing accelerator represented by chemical formulae (1). Claim 4 recites “1,1'-(4-methyl-m-phenylene)bis(3,3-dimethylurea)” that corresponds to a dimethylurea-based curing accelerator represented by chemical formulae (1), which is no consistent with the negative citation of instant claim 1.
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 (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.
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitada et al. (WO2021/025146 A; US PG Pub 2022/0315695 A/256647 A1 as listed on the IDS dated 8/16/2023 is being used as English Translation herewith).
Regarding claims 1 and 10, Kitada an encapsulating resin composition (title) comprising a thermosetting resin containing an epoxy resin (claims 3 and 6), a curing agent (claim 4), an inorganic filler (claim 3) and an curing accelerator comprising dimethyl urea (which correspond to the curing accelerator of claim 10) [0044] and imidazole-based curing accelerator (claim 5). It is noted that the encapsulating resin composition of Kitada does not comprise a dimethylurea-based accelerator represented by the chemical formulae (1) to (3) as recited in the instant claim. Kitada discloses that a differential scanning calorimetry (DSC) curve of the encapsulating resin composition obtained in a case where a temperature is increased from 30° C. to 200° C under conditions of a temperature increase rate of 10° C/min using a DSC meter, a maximum heat release peak temperature is equal to or higher than 100° C. and equal to or lower than 163° C., and a half-value width of a maximum heat release peak is equal to or higher than 5° C. and equal to or lower than 25° C, wherein example 3 (Table 1) discloses a maximum heat release peak temperature of 157 °C and a half-value width of a maximum heat release peak of 18 °C, as required by the instant claim.
Kitada does not specifically disclose the molding method. 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 (composition) 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 In re Otto, 136 USPQ 458, 459 (CCPA 1963). Therefore, the encapsulating resin composition of Kitada is considered to read on the limitation “ for injection molding”.
Regarding claims 2-3, Kitada 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 Kitada, the composition of Kitada 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, Kitada teaches examples of the curing accelerator includes dimethylurea and the imidazole compounds are not limited thereto ([0044], Table 1), as required by the instant claim.
Regarding claim 5, Kitada teaches examples of the epoxy resin includes bisphenol-A, phenol novolac, orthocresol novolac ([0050],[0110], Table 1), as required by the instant claim.
Regarding claim 6, Kitada teaches novolac type phenolic resin as the curing agent ([0066], [Table 1), as required by the instant claim.
Regarding claim 7, Kitada teaches the average particle diameter of the inorganic filler (B) is not particularly limited, but is typically 0.1 μm to 100 μm, and preferably 0.2 μm to 50 μm, wherein the examples of table 1 discloses an average diameter of the inorganic filler of 23 μm, as required by the instant claim [0113].
Regarding claim 8, Kitada teaches examples of the inorganic filler include fused crushed silica [0059]. Although fused crushed silica is listed as one possible selection out of many inorganic fillers, the MPEP 2131.02 teaches: Il. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, the above claims are anticipated.
Regarding claim 9, Kitada teaches a circuit board is encapsulated by an encapsulating body that is a cured product of the encapsulating resin composition [0027], as required by the instant claim.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogami et al. (WO2014065152 (A1); full English Machine translation incorporated herewith) as evidenced by Goto et al. (US2009/0104429 for instant claim 7).
Regarding claim 1, Ogami et al. teach an encapsulating resin composition [0010] for injection molding [0049] comprising an epoxy resin, a phenolic curing agent, a curing catalyst including imidazoles and an inorganic filler (claims 1 and 2), characterized in that when the epoxy resin composition is subjected to differential scanning calorimetry under a heating rate of 10°C/min, the exothermic peak top is 150°C or higher, wherein examples of table 1 discloses heat peak temperature between 155-161°C, as required by the instant claim [0066]. It is noted that the encapsulating resin composition of Ogami et al. do not comprise a dimethylurea-based accelerator represented by the chemical formulae (1) to (3) as recited in the instant claim.
Ogami et al. are silent on the width in a half value of the maximum exothermic peak.
The thermal properties depends on the composition. In view of the substantially identical encapsulating resin composition of Ogami et al., the composition of Ogami et al. will possess the claimed properties. 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, Ogami et al. teach the epoxy resin composition provides a cure product with excellent heat resistance, thermal decomposition stability and mechanical strength retention ability, while exhibiting excellent fluidity during molding (abstract).
Ogami 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 Ogami et al., the composition of Ogami et al. 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 claims 4 and 10, Ogami et al. teach 2-phenyl-4,5-dihydroxymethylimidazole as the curing accelerator ([0025], [0055],[0057], examples 1-4 and 7 [0066]), as required by the instant claims.
Regarding claim 6, Ogami et al. teach a phenol-based curing agent is used as the hardening agent ([0027], examples 1-4 and 7 [0066]), as required by the instant claim.
Regarding claim 7, Ogami et al. teach as examples of inorganic filler spherical or crushed fused silica [0041]. Ogami et al. further teach silica FB-8S manufactured by Denki Kagaku Kogyo Co., Ltd. [0057], wherein silica FB-8S has an average particle diameter of 6.5 µm as evidenced by Goto et al. [0163].
Regarding claim 8, Ogami et al. teach as example of inorganic filler crushed fused silica [0041], as required by the instant claim. Although fused crushed silica is listed as one possible selection out of many inorganic fillers, the MPEP 2131.02 teaches: Il. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, the above claims are anticipated.
Regarding claim 9, Ogami et al. teach an epoxy resin composition which is capable of providing a cured product (abstract) and is used as a encapsulant in a semiconductor device ([0001]-[0002], [0009], [0010], claim 5), as required by the instant claim.
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.
Claims 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ogami et al. (WO2014065152 (A1); full English Machine translation incorporated herewith).
Regarding claim 5, Ogami et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference. Ogami et al. teach the epoxy resin can be used individually or as a mixture of two or more types, wherein in addition to the epoxy resin represented by general formula (1), other epoxy resins such as bisphenol A, 1,1,2,2-tetrakis(4-hydroxyphenyl)ethane, phenol novolac, and o-cresol novolac are blended [0040] as the epoxy resin component [0040], thereby reading on the claimed epoxy resins.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/
Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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