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 § 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.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Emmerson et al. (US 2010/0076120).
Regarding claims 1-2, Emmerson et al. disclose a resin adhesive composition (see paragraphs 0001 and 0076) comprising bismaleimide (see paragraph 0017), free radical initiator (see paragraph 0033), 10-90 wt.% conductive filler (see paragraphs 0034-0035), acrylic resin (see paragraph 0070), and tackifier (see paragraph 0091). The adhesive composition is used for EMI shielding (see paragraph 0072).
In light of the overlap between the claimed adhesive and that disclosed by Emmerson et al., it would have been obvious to one of ordinary skill in the art to use an adhesive that is both disclosed by Emmerson et al. and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 4, Emmerson et al. disclose that the bismaleimide includes that of the formula:
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where C36 is a linear hydrocarbon chain (see paragraph 0029) and which corresponds to the claimed bismaleimide when n=36 and R is C3 linear divalent hydrocarbon group.
Regarding claim 5, the recitation in the claims that the adhesive is “for use in assembling a camera module or sensor” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Emmerson et al. disclose adhesive as presently claimed, it is clear that the adhesive of Emmerson et al. would be capable of performing the intended use, i.e. for use in assembling a camera module or sensor, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 6, Emmerson et al. disclose that the adhesive is cured (see paragraph 0033).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Emmerson et al. (US 2010/0076120) as applied to claim 1 above, and further in view of Jozuka et al. (US 2012/0189829).
Emmerson et al. disclose adhesive as set forth above. Emmerson et al. also disclose the adhesive is used with electronics (see paragraphs 0071-0073 and 0077).
Emmerson et al. disclose a tackifier but do not disclose specific tackifier as presently claimed.
Jozuka et al. disclose adhesive to join electronic parts (see paragraph 0001) where the adhesive comprises a (meth)acrylic polymer (see paragraph 0029), polymerization initiator (see paragraphs 0052-0053), metallic powder, i.e. conductive filler (see paragraph 0073), and tackifier (see paragraph 0067). The tackifier includes that having softening point of 80 C to 170 C to produce an adhesive having high adhesiveness and compatibility with the acrylic polymer (see paragraph 0070).
In light of the motivation for using a tackifier disclosed by Jozuka et al. as described above, it would have been obvious to one of ordinary skill in the art to use the tackifier in the adhesive of Emmerson et al. in order to produce an adhesive with high adhesiveness ad compatibility.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Herr et al. (US 2002/0007042) in view of Jozuka et al. (US 2012/0189829).
Regarding claims 1 and 3, Herr et al. disclose an adhesive for bonding an electronic component to a substrate (see Abstract). The adhesive comprises maleimide (see paragraph 0009) including bismaleimide (see paragraph 0091, Example C), free-radical initiator (see paragraph 0014), conductive filler (see paragraph 0017), and polyacrylate, i.e. acrylic resin (see paragraph 0050).
Herr et al. do not disclose a tackifier as presently claimed.
Jozuka et al. disclose adhesive to join electronic parts (see paragraph 0001) where the adhesive comprises a (meth)acrylic polymer (see paragraph 0029), polymerization initiator (see paragraphs 0052-0053), metallic powder, i.e. conductive filler (see paragraph 0073), and tackifier (see paragraph 0067). The tackifier includes that having softening point of 80 C to 170 C to produce an adhesive having high adhesiveness and compatibility with the acrylic polymer (see paragraph 0070).
In light of the motivation for using a tackifier disclosed by Jozuka et al. as described above, it would have been obvious to one of ordinary skill in the art to use the tackifier in the adhesive of Herr et al. in order to produce an adhesive with high adhesiveness and compatibility.
While there is no disclosure in Herr et al. in view of Jozuka et al. that the adhesive is an “EMI shielding” adhesive as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. EMI shielding” adhesive, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art adhesive and further that the prior art structure which is an adhesive identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 2, Herr et al. disclose the adhesive contains the conductive filler in an amount of, for instance, 78 wt% (23.794/30) (see Example AA, paragraph 0109).
Regarding claim 4, Herr et al. disclose bismaleimide of the formula (see paragraph 0091, Example C):
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which corresponds to the bismaleimide presently claimed when n = 10 and R is C3 linear divalent hydrocarbon group.
Regarding claim 5, the recitation in the claims that the adhesive is “for use in assembling a camera module or sensor” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Emmerson et al. disclose adhesive as presently claimed, it is clear that the adhesive of Emmerson et al. would be capable of performing the intended use, i.e. for use in assembling a camera module or sensor, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 6, Herr et al. in view of Jozuka et al. disclose that the adhesive is cured (see paragraph 0016).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yeh et al. (US 2021/0246015) in view of Emmerson et al. (US 2010/0076120).
Yeh et al. disclose a sensor device package (see paragraph 0001) that is manufactured by a process that includes bonding electronic components to a substrate using an adhesive film (see paragraph 0027).
Yeh et al. do not disclose adhesive as presently claimed.
Emmerson et al. disclose a resin adhesive composition (see paragraphs 0001 and 0076) comprising bismaleimide (see paragraph 0017), free radical initiator (see paragraph 0033), conductive filler (see paragraphs 0034-0035), acrylic resin (see paragraph 0070), and tackifier (see paragraph 0091). The adhesive composition is used for EMI shielding (see paragraph 0072).
In light of the motivation for using an adhesive disclosed by Emmerson et al. as described above, it would have been obvious to one of ordinary skill in the art to use the adhesive as the adhesive in the method of making a sensor device package, i.e. method of assembling a sensor, of Yeh et al. in order to produce a sensor with EMI shielding.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yeh et al. (US 2021/0246015) in view of Herr et al. (US 2002/0007042) in view of Jozuka et al. (US 2012/0189829).
Yeh et al. disclose a sensor device package (see paragraph 0001) that is manufactured by a process that includes bonding electronic components to a substrate using an adhesive film (see paragraph 0027).
Yeh et al. do not disclose adhesive as presently claimed.
Herr et al. disclose an adhesive for bonding an electronic component to a substrate (see Abstract). The adhesive comprises maleimide (see paragraph 0009) including bismaleimide (see paragraph 0091, Example C), free-radical initiator (see paragraph 0014), conductive filler (see paragraph 0017), and polyacrylate, i.e. acrylic resin (see paragraph 0050). The adhesive has strength and flexibility and can be reworkable, i.e. removed without destroying the substrate (see paragraph 0005-0006).
In light of the motivation for using an adhesive disclosed by Herr et al. as described above, it would have been obvious to one of ordinary skill in the art to use the adhesive as the adhesive in the method of making a sensor device package, i.e. method of assembling a sensor, of Yeh et al. in order to produce a sensor where the adhesive has strength and flexibility as well as reworkability.
Yeh et al. in view of Herr et al. do not disclose tackifier as presently claimed.
Jozuka et al. disclose adhesive to join electronic parts (see paragraph 0001) where the adhesive comprises a (meth)acrylic polymer (see paragraph 0029), polymerization initiator (see paragraphs 0052-0053), metallic powder, i.e. conductive filler (see paragraph 0073), and tackifier (see paragraph 0067). The tackifier includes that having softening point of 80 C to 170 C to produce an adhesive having high adhesiveness and compatibility with the acrylic polymer (see paragraph 0070).
In light of the motivation for using a tackifier disclosed by Jozuka et al. as described above, it would have been obvious to one of ordinary skill in the art to use the tackifier in the adhesive of the method of assembling a sensor of Yeh et al. in view of Herr et al. in order to produce a sensor where the adhesive has high adhesiveness and compatibility.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mushashijima et al. (JP 2013049764) disclose conductive adhesive tape for EMI shielding comprising acrylic polymer, initiator, tackifier, and conductive filler.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Callie Shosho whose telephone number is (571)272-1123. The examiner can normally be reached Monday-Friday, 6:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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