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 Amendment
The Amendments filed 01/14/2026 responsive to the Office Action filed 09/15/2025 has been entered. Claim 1 has been amended. Claim 2 has been canceled. Claims 4-6 maintain withdrawn. Claims 1 and 3-6 are pending in this application.
Response to Arguments
Applicant's arguments, filed 01/14/2026 in pages 4-7, with respect to claim 1 under 103 rejection, have been considered but are moot because the new ground of rejection does not rely on the combination applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. (US 2021/0002414 -of record) in view of Taruno et al. (US 5,698,152 -of record) and Sugita et al. (WO 2018/016405A1 - Machine Translation provided herewith). Additional supporting evidence provided herewith by Wikipedia.org, “Carnauba wax”, 2020/02/12 -of record).
With respect to claim 1, Kotani teaches a method for producing an encapsulated structure (“A method for forming the encapsulating member”, Pa [0140]), the method comprising:
forming granules or powder formed from an epoxy resin composition (“The mixing step is a step of mixing raw material components to prepare a mixture.”, Pa [0128]; “a step of pulverizing the mixture into a granular resin composition for encapsulation”, Pa [0135]);
obtaining a tablet formed from the epoxy resin composition (“molding the granular resin composition for encapsulation into tablets”, Pa [0135]);
a step of transferring the tablet to a transfer molding machine having a molding mold in which an object to be encapsulated is disposed; and a step of obtaining an encapsulated structure by encapsulating the object to be encapsulated in the molding mold with the epoxy resin composition by a transfer molding method of using the transfer molding machine (“using a low pressure transfer molding machine, the resin compositions for encapsulation of Examples 1 to 10 and Comparative Example 1 were injection-molded under the conditions of a mold temperature of 175° C., an injection pressure of 10 MPa, and a curing time of 120 seconds to have a diameter of 100 mm and a thickness of 2 mm, and thus cured products were obtained.”, Pa [0201]),
wherein the epoxy resin composition (“the resin composition for encapsulation”, Pa [0039]) includes:
an epoxy resin (Pa [0041]);
a curing agent (Pa [0048]);
an inorganic filler (Pa [0060]);
a curing accelerator (Pa [0116]); and
a wax (“carnauba wax”, Pa [0113]) having a melting point of equal to or higher than 30° C. and equal to or lower than 90° C (“Melting point: 82–86 °C”, Additional supporting evidence by Wikipedia.org, “Carnauba wax-Technical characteristics”).
Kotani teaches that as a molding step of preparing a tablet resin composition for encapsulation, for example, a step of pulverizing the mixture into a granular resin composition for encapsulation, and then molding the granular resin composition for encapsulation into tablets may be used (Pa [0135]), but does not explicitly teach a step of supplying granules or powder formed from an epoxy resin composition to an extruder equipped with a screw and a die provided at a tip of the screw, and heating and melting the granules or powder formed from the epoxy resin composition; a step of extruding the molten epoxy resin composition through the die having a predetermined opening shape by rotation of the screw at a temperature of equal to or higher than 80°C and equal to or lower than 100°C, and wherein the die has a temperature of equal to or higher than 80°C and equal to or lower than 100°C; a step of cutting the extruded epoxy resin composition using a cutter into a predetermine
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length to obtain a tablet formed from the epoxy resin composition, where the tablet has dimensions with a diameter of equal to or more than 40 mm and equal to or less than 100 mm and a length of equal to or more than 50 mm and equal to or less than 300 mm.
In the same field of endeavor, a resin tablet for sealing a semiconductor, Taruno teaches that the thermosetting resin composition comprises a thermosetting resin such as an epoxy resin as the main component (co 3 li 45-47), the resin tablet is used in the case of sealing a semiconductor chip by transfer molding (co 9 li 3-4), and the form and the size of the resin tablet of the present invention is that the outer diameter (D) is at least 20 mm and the ratio L/D of the length (L) to the outer diameter (D) is usually 1 or less (co 4 li 56, 60-62). Taruno further teaches that for producing the semiconductor sealing resin tablets comprising an epoxy resin composition, the epoxy resin composition is supplied to the kneading extruder 1, kneading in the kneading extruder 1 and the molten resin composition (having a temperature of from 80° C. to 120° C.) is supplied into one tablet molding mold 4 (kept at about 40° C.) through the resin supplying passage member 2 by the screw extruding force of the kneading extruder 1 while stirring the resin composition with the stirrer in the resin supplying passage member 2 (co 8 li 10-11 and 18-27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kotani with the teachings of Taruno and form a resin tablet with the dimensions taught by Taruno for the purpose of using the tablets in transfer molding. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. (See MPEP 2144.05 (I)).
Furthermore, in the same field of endeavor, encapsulation for semiconductor devices, Sugita teaches that the method for producing the tablet of the present invention is not particularly limited, specifically, examples include a method using a mold and a press, a method using a tablet press equipped with a mortar and pestle-like jig, and a method in which strands are discharged using an extruder and cut at equal intervals (pg 64 li 3-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kotani in view of Taruno with the teachings of Sugita and substitute a method in which strands are discharged using an extruder and cut at equal intervals for Taruno’s injection molding method for the purpose of producing tablets, since it has been held that where the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143 (I)(B)). In the combination, Taruno teaches extruding temperature of from about 60° to 150° C (co 7 li 5-7) and supplying temperature of from about 80° C. to 120° C (co 7 li 48-50), thus one would have found it obvious to use these temperature ranges during extruding for the purpose of producing tablets. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. (See MPEP 2144.05 (I)).
With respect to claim 3, Kotani as applied to claim 1 above further teaches that the step of encapsulating is carried out at a temperature of equal to or higher than 120° C. and equal to or lower than 200° C. and a pressure of equal to or higher than 3 MPa and equal to or lower than 15 MPa (“using a low pressure transfer molding machine, the resin compositions for encapsulation of Examples 1 to 10 and Comparative Example 1 were injection-molded under the conditions of a mold temperature of 175° C., an injection pressure of 10 MPa, …and thus cured products were obtained.”, Pa [0201]).
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 YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742