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 Objections
Claims 1-18 are objected to because of the following informalities: Claims 1-18 lack status identifiers, such as (new); (amended); (withdrawn); etc. Appropriate correction is required.
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.
Claims 1-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear in claim 1 if applicant intends for the phrase within the parenthesis, e.g. (excluding the diglycidyl ether compound) to be a positive claim limitation or not. Please clarify with appropriate action.
Claim Rejections - 35 USC § 102/35 USC § 103
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.
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.
Claim(s) 1-6 and 11-15 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shinji (JP2005-015622A).
Shinji sets forth epoxy resin compositions for encapsulating photo-semiconductors. Said epoxy resin compositions comprising (A) at least one epoxy resin having two or more epoxy groups in one molecule; (B) an acid anhydride curing agent; (C) a curing accelerator; and (D) glass particles containing silicone oxide; calcium oxide; and aluminum oxide; and (E) a benzophenone UV absorber—see [0009]. The epoxy resin composition is useful for sealing an optical semiconductor and has excellent transparency and solder resistance—see [0008].
Shinji sets forth epoxy resin (A) is selected from the group consisting of a bisphenol-type epoxy resin represented by general formula (2) and a heterocyclic epoxy resin which is a triglycidyl isocyanurate—see [0011]- [0014]. Shinji sets forth the epoxy resin represented by general formula (2) and triglycidyl isocyanurate can be used in combination—see [0020]- [0021].
Regarding claims 1-6 and 15: Shinji explicitly sets forth, by example, an epoxy resin composition comprising 25.96 parts of an epoxy resin represented by general formula (2) [see 0043]; 10.39 parts of triglycidyl isocyanurate; 15.58 parts of Celloxide 2021P (a difunctional cycloaliphatic epoxy resin having formula:
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182
357
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); 40.07 parts of nadic anhydride (curing agent); 1.0 parts 1,8-diazabicyclo(5.4.0)undec-7-ene (hardening accelerator); 5.0 parts of spherical glass particles A1; 0.50 parts of UV absorber: 4-dodecyloxy-2-hydroxybenzophenone; 0.50 parts carnauba wax; 0.50 parts of antioxidant, 2-6-di-t-butyl-methylphenol; and 0.50 parts of silane coupling agent, glycidoxypropyltrimethoxysilane—see example 14, Table 1 in [0045]. Said composition comprises 49 wt. % of the epoxy resin of formula (2) (corresponding to claimed diglycidyl ether having a bisphenol skeleton); 20 wt. % of triglycidyl isocyanurate (corresponding to the claimed trifunctional epoxy compound having an isocyanurate ring structure); and 30 wt. % of Celloxide 2021P (corresponding to applicant’s bifunctional alicyclic epoxy compound) as resin components—claims 1-5 are anticipated. The epoxy compound of formula (2) has a bisphenol a skeleton:
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184
557
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, wherein R is -C(CH3)-. This anticipates claim 6. The cured product of example 14 is deemed to anticipate the cured product in claim 15.
Regarding property claims 11-14: Shinji fails to expressly set forth the breaking stress, breaking elongation, tensile modulus, or Abbe number of the compositions disclosed. However, it is deemed thermoplastic compositions, such as the disclosed encapsulant composition, inherently has a breaking stress, breaking elongation, and tensile modulus. The breaking stress, the maximum force per unit area that a material can endure before failure occurs, is a critical property in engineering and materials science used to determine the safety and reliability of materials under load. The breaking elongation, also called percent elongation or fracture strain, measures how much a material can stretch before it snaps, wherein it is expressed as a percentage of the material’s original length and is a key indicator of ductility, elasticity, and impact resistance. The tensile modulus, also known as Young's modulus, is a measure of a material's stiffness and its ability to resist deformation under tensile stress. Shinji sets forth said composition has excellent solder resistance, i.e. resistance to cracking and peeling—see [0047]. The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In the alternative, the courts have upheld where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the breaking stress; breaking elongation, and tensile modulus of the composition in order to achieve the desired fracture, peeling and/or impact resistance of the cured product such that it functions properly in low temperature environments, in absence of evidence to the contrary and/or unexpected results.
Additionally, it is deemed because the encapsulant set forth by Shinji is optical encapsulant and Shinji is concerned with the optical clarity (transparency [0047]) it should inherently have an Abbe number. The Abbe number is an approximate measure of a material's dispersion (change in refractive index as a function of wavelength) and since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In the alternative, the courts have upheld where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the Abbe number of the composition in order to achieve the desired optical transparency in absence of evidence to the contrary and/or unexpected results.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinji (cited above).
Shinji does not explicitly set forth an epoxy resin composition comprising a hydrogenated bisphenol A diglycidyl ether compound; however, in the overall teachings of the reference Shinji sets forth the epoxy resin compound represented by formula (1) can be chosen from a hydrogenated bisphenol A epoxy (glycidyl ether) compound—see [0020]. Thus, from the overall teachings of the reference, it would have been within the skill level of an ordinary artisan to obtain an epoxy resin composition comprising a hydrogenated bisphenol A skeleton as component (A) with an expectation of successfully obtaining an encapsulant having excellent transparency and solder resistance in absence of evidence to the contrary and/or unexpected results.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinji (cited above) in view of Fujikawa et al (2017/0232695).
Shinji is set forth a anticipating the curable resin composition in the rejection below. The primary difference is the compositions of Shinji do not comprise an oxetane compound. However, it is known in the art, as set forth by Fujikawa, the addition of an oxetane compound to an epoxy resin composition comprising an alicyclic epoxy resin and an epoxy resin comprising a bisphenol skeleton improves the curability (see [0086] and [0096] of Fujikawa) of the epoxy resin composition. Fujikawa sets forth epoxy resin compositions for use in optical devices comprises (A) a curable epoxy compound having an alicyclic structure [0063 and 0065] and a glycidyl ether epoxy compound having a bisphenol skeleton [0063 and 0082]; (B) an oxetane compound [0085]; and a cationic photoinitiator [0099]—see examples. Shinji and Fujikawa are analogous art because they are from the same field of endeavor, that is the art of epoxy resin compositions for optical usage. Therefore, it would have been within the skill level of an ordinary artisan to add an oxetane compound to the composition set forth by Shinji with an expectation of improving/increasing the curability of the composition, as taught by Fujikawa in absence of evidence to the contrary and/or unexpected results. The claim 8 is deemed obvious in view prior art.
Additionally, Shinji differs from instant claims 9 and 10, i.e., is curable by ultraviolet radiation or further comprises an ultraviolet cationic polymerization initiator. A skilled artisan, from the overall teachings Fujikawa, would understand compositions comprising epoxy groups, as well as, oxetane groups can be cure by ultraviolet radiation with an expectation of obtaining a high curability (rapid cure) and excellent heat resistance or thermally (heat cure) [see [0100] and [0104] and [0138]) and provides excellent storage stability [0112] with the substitution of initiating catalyst, such as a cationic photoinitiator. Shinjini and Fujikawa are analogous art for the reasons set forth above. Thus, it would have been obvious to a skilled artisan to use a cationic photoinitiator in the compositions of Shinjini and using an ultraviolet radiation exposure to cure said composition, as evidenced by Fujikawa, with an expectation of obtaining a rapid cure (high curability), excellent heat resistance, and excellent storage stability in absence of evidence to the contrary and/or unexpected results.
Allowable Subject Matter
Claims 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited references above do not alone or in combination set forth a lens or substrate-attached lens comprising the cured product of the instantly claimed composition. Furthermore, as of the date of this Office action, the Examiner has not located or identified any reference that can be used singularly or in combination with another reference including Shinji or Fujikawa, to render the present claims 16-18 anticipated or obvious to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO01/83580 to Watanabe sets forth polymerizable compositions comprising alicyclic epoxy compounds; diglycidyl ethers having bisphenol skeletons; oxetane compounds; and cationic photoinitiators that are curable by exposure to ultraviolet radiation. Watanabe differs from the instant invention because Watanabe does not require a trifunctional or higher polyfunctional epoxy compound having an isocyanurate ring structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
