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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/15/2025, 10/30/2025 and 01/24/2024 have been considered by the examiner.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kohara et al. (WO 2012105071 A1), in view of Hiramoto et al. (WO 2021/002248 A1).
Regarding claims 1, 3-4, 15, Kohara discloses a resin sealing material – (construed as a liquid compression molding material) for a semiconductor. The material to include an epoxy resin composition containing an epoxy resin (A), a filler (C), and a core shell rubber (D) – (construed as an elastomer), see page 30 paragraph 2 and a curing accelerator (F), see page 33 paragraph 7.
Kohara does not explicitly disclose the claimed blending ratio of: wherein blending ratio of the filler (C) to the epoxy resin composition is 73.0 mass% or more, and blending ratio of the elastomer (D) to a total of components excluding the filler (C) from the epoxy resin composition is 7.0 mass% or more. However, as the filler is provided in an amount of 30 to 80 ppm and is suitable for contributing to the improvement of heat resistance and moisture resistance of the composition, see page 32 paragraphs 1-2. And the core shell rubber (D) is provided in an amount of 3 to 55 ppm of 100 ppm of the epoxy resin (A) and is suitable for suppressing the occurrence and the development of fillet cracks, see page 30 paragraphs 5, 9. One of ordinary skill as a matter of routine experimentation blend the filler and core shell rubber in the claimed ratios, while fully expecting the composition to retain its aforementioned benefits. Furthermore, by example 12 of Table 2: A total composition amount minus filler = 176.55, and elastomer amount of 15 gives a blending ratio of the elastomer (D) to a total of components excluding the filler (C) from the epoxy resin composition is 8.5 mass% - (construed as and overlaps 7.0 mass% or more; and 7.0 mass% to 16.5 mass%).
To the extent Kohara does not explicitly disclose the claimed filler blending amount. Hiramoto discloses an adhesive composition. The composition to include an epoxy resin (A), a filler (D), and an elastomer (C), see page 46 paragraph 6 and a curing accelerator (E), see page 49 paragraph 5. The filler provided in an amount of 50 to 90 mass % of the total amount of the adhesive composition and is suitable for reducing the linear expansion coefficient having excellent processability and low-temperature application, see page 45 paragraph 6. Thus, one would have good reason to provide the filler in the claimed amounts of 73.0 mass% or more; and 73.0 mass% to 87.5 mass% where doing so predictably improves the processability of the composition. It being noted the composition is substantially similar to that Kohara which presents a reasonable expectation of success in modifying Kohara’s filler as suggested by Hiramoto.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kohara’s filler content to have a blending ratio of the filler (C) to the epoxy resin composition is 73.0 mass% or more and 73.0 mass% to 87.5 mass% as taught by Hiramoto to provide the composition with aforementioned benefits. Concerning the claimed ranges: Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the blending ratio of the filler that corresponds to the claimed range and taught by the prior art. See MPEP 2144.05.
Regarding claims 2, 13-14, 16, as previously discussed, modified Kohara discloses “the blending ratio of the elastomer (D) to the components excluding the filler (C) from the epoxy resin composition is 7.0 mass% to 16.5 mass%” and “the blending ratio of the filler (C) to the epoxy resin composition is 73.0 mass% to 87.5 mass%”, see the rejections above. And as modified Kohara discloses an amount of core-shell rubber is used with regards to increasing the viscosity of the resin materials which could reduce the injectability of the material, see Kohara page 33 paragraph 2; and as Kohara contemplates the materials having a viscosity of 300 Pa s at room temperature, see page 30 paragraph 9. It is considered, the test of obviousness is not express suggestion of the claimed invention in any or all references but rather what the references taken collectively would suggest to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 146 USPQ 183 (CCPA 1965); In re Hedges, 783 F.2d 1038.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Kohara’s elastomer to have the claimed viscosity since: the prior art discloses the general conditions and composition of the sealing resin to include a measure of viscosity within the claimed range. And further restricting the elastomer (D) is at least one kind of substance selected from the group consisting of a solid substance and a liquid substance having a viscosity of 110 Pa·s or more at room temperature would be a matter of routine experimentation. Concerning the claimed ranges: Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the claimed blending ratios and viscosity as the prior art provides a benefit to doing so as discussed above. See MPEP 2144.05.
Regarding claims 5, 17-20, while modified Kohara discloses a semiconductor device comprising a substrate a semiconductor element disposed on the substrate; and a sealing material containing a cured product of the liquid compression molding material that seals a gap between the semiconductor element and the substrate, see the discussions of claims 11-12; modified Kohara does not explicitly disclose a viscosity at 120°C is 0.5 Pa·s to 40.0 Pa·s. However, as modified Kohara discloses the claimed invention except for the viscosity at 120°C. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the materials to have the claimed viscosity, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to have a viscosity at 120°C is 0.5 Pa·s to 40.0 Pa·s for the purpose of favorability influencing the injectability of the composition.
Regarding claim 6, modified Kohara discloses the curing accelerator (F) comprises imidazole type curing accelerators, see page 33 paragraphs 7-8 – (construed as the curing accelerator (B) contains a nitrogen-containing heterocyclic compound).
Regarding claims 7-8, modified Kohara discloses the composition comprises an amine type curing agent (B), see page 30 paragraph 2 – (construed as the curing agent (E) contains at least one selected from the group consisting of a phenolic curing agent, an amine-based curing agent, and an acid anhydride-based curing agent).
Regarding claim 9, modified Kohara discloses the epoxy resin (A) comprises bisphenol A type epoxy resin, see page 30 paragraph 11 - (construed as the epoxy resin (A) contains at least one selected from the group consisting of an aliphatic epoxy resin and an aromatic epoxy resin).
Regarding claim 10, modified Kohara discloses an electronic component in which a sealing portion is sealed by using the semiconductor resin sealing material of the present invention, see page 30 paragraph 8 – (construed as an electronic component comprising a sealing material containing a cured product of the liquid compression molding material).
Regarding claims 11-12, modified Kohara discloses the semiconductor resin sealing material of the present invention is filled in the gap between the substrate and the semiconductor element, see Kohara page 35 paragraph 3 –(construed as a semiconductor device comprising a substrate; a semiconductor element disposed on the substrate; and a sealing material containing a cured product of the liquid compression molding material according to claim 1 that seals a gap between the semiconductor element and the substrate). Moreover, as Kohara discloses using a pressure difference during processing and heating the material to curing the material, see Kohara page 35 paragraph 3 and Hiramoto discloses a method of producing a semiconductor device to include a pressure bonding and heat for curing technique, see page 52, paragraph 7. Then one of ordinary skill would readily envision a processing technique of (press clamping after a gap between a substrate and a semiconductor element disposed on the substrate is filled with the liquid compression molding material according to claim 1 by a compression molding method; and curing of the liquid compression molding material). It being considered, as the test of obviousness is not express suggestion of the claimed invention in any or all references but rather what the references taken collectively would suggest to those of ordinary skill in the art presumed to be familiar with them. In re Rosselet, 347 F.2d 847, 146 USPQ 183 (CCPA 1965); In re Hedges, 783 F.2d 1038.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Kohara’s method in the claimed manner as the general conditions and techniques are met by the prior art and would be practiced at least as part of routine experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571)272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
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, Katelyn Smith can be reached on 5712705545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749
Prosecution Insights