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 .
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 12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation "the crystalline radically polymerizable compound" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 2 is the first time the crystalline radically polymerizable compound is recited.
Claim Rejections - 35 USC § 102
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, 7, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muenz et al, US20090298960.
Regarding claims 1 and 7, Muenz teaches a method of making a solid object where a thermally curable composition ¶[0024] in the form of a binder mixture is heated to a preferable temperature of 70-90°C in an injection molding unit, ¶¶[0026-0027, 0061], which reads on the first heating step, and injected into an injection mold where the shaped part is cooled to temperatures below 50°C, and the part is removed from the mold, ¶¶[0027, 0062], which reads on the first cooling step. The shaped part at this point is not cured, Muenz teaches that during the final use of the shaped part it is heated to temperatures between 110-200°C to cure the resin matrix, ¶[0028], which reads on the second heating step of claim 7. The first heating step in a temperature range of 70-90°C falls within the claimed range of the melting onset temperature to less than the curing onset temperature because Muenz teaches the curing temperature is 110-200°C, ¶[0028], and see ¶[0072] where the examples are cured at 175°C.
Muenz does not explicitly state that there is a second cooling step after the curing step (second heating step), but allowing the article to cool to room temperature for use or testing inherently satisfies the second cooling step of claim 7. Additionally, Muenz teaches compression testing at 0°C and -20°C after heat curing the test samples, ¶[0072], which also reads on the second cooling step.
Regarding claim 13, Muenz teaches the solid object is for stiffening or reinforcing household or kitchen appliances, ¶[0025], which reads on the attachment to an electric component.
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.
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 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Muenz et al, US20090298960.
Regarding claims 8-9, Muenz teaches the invention according to claim 1 as explained above. Muenz does not explicitly teach performing the second heating step collectively or sequentially for a plurality of the solid objects. But Muenz teaches that the inventive and comparative test articles are heat cured in an oven at 175°C, which is the second heating step, ¶[0072], this can be interpreted as both test articles being cured at the same time (collectively) or they can be cured sequentially since those are logically the only two options for the order of curing the separate test articles, which renders the claimed order obvious. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have performed the second heating step collectively or sequentially for a plurality of the solid objects because the selection of any order of steps has been held to be prima facie obvious. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) which states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Claims 1, 7-9, 13 rejected under 35 U.S.C. 103 as being unpatentable over Shinozuka et al, US5397522.
Regarding claims 1 and 7, Shinozuka teaches a method of encapsulating an article comprising: (a) powder coating the article with a thermosetting resin powder coating composition to form a melted layer of the thermosetting resin composition around the article, which reads on the first heating step; (b) molding the melted layer of the thermosetting resin composition obtained in step (a) in a mold under pressure while maintaining the mold at a temperature lower than the softening point of the thermosetting resin composition, which reads on the first cooling step, so that a solidified, molded layer of the thermosetting resin composition having a predetermined shape is formed around the article; and (c) heating the solidified layer obtained in step (b) to cure the thermosetting resin, which reads on the second heating step of claim 7, Col. 1 lines 50-62. Shinozuka does not explicitly teach a second cooling step after heat curing, but allowing the cured part to cool to room temperature for use as an electric part, Col. 4 line 5, inherently satisfies the second cooling step of claim 7.
Furthermore, Shinozuka teaches that the first heating step, where the powder is melted, can be performed by a fluidized method where the article to be encapsulated is preheated to a temperature higher than the melting point of the powder, Col. 2 lines 20-23, but is silent to the upper limit of the temperature range for step (a). Shinozuka exemplifies heating the article to the recommended curing temperature of the resin powders of example 1 and example 2, Col. 3 line 54 and Col. 4 line 33. This suggests that the temperature range for preheating the article to be encapsulated is anywhere greater than the melting temperature up to and including the curing temperature of the resin powder, which overlaps with the claimed temperature range.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges taught by Shinozuka because selection of overlapping portion of ranges has been held to be prima facie obvious. 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).
Regarding claim 13, Shinozuka teaches the articles for encapsulation are electronic and electric parts, Col. 1 lines 1-5, Col. 3 lines 20-25, and Col. 4 line 4.
Regarding claims 8-9, Shinozuka teaches a large number of moldings may be made in a short period of time with one molding device before the molding is cured with each one taking 1-15 seconds, Col. 3 lines 10-15, which means that a plurality of objects can be molded in a short amount of time. Shinozuka is silent as to the order of curing a plurality of the molded objects, but it would be obvious to perform the second heating step (curing step) collectively on a plurality of the same molded object because it would save time by curing them all at once at the same temperature. Additionally, Shinozuka exemplifies two parts made from two different resins with different curing temperatures, examples 1 and 2, Col. 3-4, they are not cured at the same time because they require different temperatures, therefore it can be interpreted that they are cured sequentially and render obvious the claimed sequential heating step for a plurality of solid objects.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have performed the second heating step collectively or sequentially for a plurality of the solid objects because the selection of any order of steps has been held to be prima facie obvious. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) which states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Claims 2-6, 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shinozuka et al, US5397522 in view of Ozawa et al US20200231714.
Regarding claims 2 and 12, Shinozuka teaches the invention according to claim 1 as explained above. Shinozuka teaches that the thermosetting resin powder can be any known powder coating composition suitable for the purpose, and it generally contains a thermosetting resin such as epoxy, polyester, or acrylic, a curing agent, a curing accelerator, an inorganic filler and a coloring agent, Col. 2 lines 11-17.
Shinozuka does not teach that the thermoset resin includes a crystalline radically polymerizable compound.
Ozawa discloses a crystalline radically polymerizable composition for sealing electrical and electronic components, abstract, which also has excellent thermal conductivity ¶[0020]. The composition comprises a crystalline radical polymerizable compound selected from one or more of an unsaturated polyester, epoxy (meth) acrylate, urethane (meth) acrylate, polyester (meth) acrylate, and a polyether (meth) acrylate, which reads on claim 12, see abstract and ¶[0023]. Ozawa discloses the resin is used in a step of molding the composition by means of any one of an injection molding, transfer molding, compression molding, or hot melt molding method to obtain the molded body of the electrical and electronic component ¶[0045]; and the resin can be in the form of a granular material, powder, or tablet, ¶[0050]. Therefore the resin of Ozawa would be suitable for use in the method of encapsulating articles for electric components of Shinozuka. It is prima facie obvious to select a known material based upon its suitability for the intended use. Ozama and Shinozuka are analogous to the claimed invention because both are in the field of thermosetting resins for electrical components.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have practiced the method of Shinozuka for encapsulating an article but using the radically polymerizable composition comprising a crystalline radically polymerizable compound of Ozawa because it is a thermosetting resin composition which can be in the form of a powder suitable for melt molding of electric parts and would produce the predictable result of an encapsulated electric part with excellent thermal conductivity.
Regarding claims 3 and 10, Ozawa discloses radical polymerization initiators such as the thermal decomposition types of organic peroxides, ¶[0095], and lists dicumyl peroxide as a preferred peroxide, ¶[0097], which releases radicals during heat curing. The initiators read on the claimed free radical generators. Additionally, Ozawa discloses polymerization inhibitors of quinones such as parabenzoquinone ¶¶[0098, 0208], which reads on the claimed scavengers because applicant exemplifies quinones and parabenzoquinone as a free radical scavenger in ¶[0054] and in the examples of table 1 of the instant specification.
Regarding claims 4-6, Ozawa nor Shinozuka disclose that the melting onset temperature is the heat absorption onset temperature. But Ozama discloses compositions in examples 5, 6, and 11, shown in table 2 pages 15-16, which are substantially similar to the compositions of applicant’s examples 1, 2, and 4 respectively. Example 5 is 70 parts crystalline resin compound 2: urethane methacrylate (2-HEMA adduct of 1,6-HDI) ¶[0194] and 30 parts crystalline monomer 1: ethoxylated isocyanuric acid triacrylate ¶[0196], 650 parts fused silica, 3 parts methacrylic silane, 1-part dicumyl peroxide, 10 parts zinc stearate, 0.1 part parabenzoquinone, and 0.2 parts carbon black. Example 6 is of the same components but with a 50/50 mix of the two crystalline resins. Example 11 is a 50/50 blend of the crystalline urethane methacrylate with amorphous BPA epoxy methacrylate, the remaining additives are the same as Ex. 5 and 6; this example is substantially similar to applicant’s example 4.
Therefore one of ordinary skill in the art is reasonably suggested that the compositions of Ozama must have the properties of claims 4-6 because they are substantially similar to applicant’s compositions and applicant’s compositions have the claimed properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also, a chemical composition and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 11, Ozawa discloses the composition may further comprise an amorphous radically polymerizable compound ¶[0061], and exemplifies an amorphous unsaturated polyester and an amorphous BPA epoxy methacrylate, ¶¶[0251-0252].
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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