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
Upon entry of the amendment filed on 23 March 2026, Claim(s) 22 and 23 are added and Claim(s) 15-21 is/are withdrawn. The currently pending claims are Claims 1-23.
Applicants’ remarks and amendments have been carefully considered:
they area found persuasive regarding the Bai reference and the rejections based on Bai are withdrawn; and
they are not found persuasive regarding the combination of Motomura and Capote and the rejections are maintained.
Allowable Subject Matter
Claim 23 is allowed; however, Claim 23 is 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. None of the cited references disclose the claimed relative amounts of the cyano to (meth)acrylate components.
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) 1-15 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motomura (US-20200109292-A1) in view of Capote (US-20010020071-A1).
Claims 1, 2, 8: Motomura discloses an underfill composition comprising a polymer with cyano and acrylic units and a maleimide compound (abs, ¶13-30, 45-59). Further, Motomura discloses 10-60 wt. % of the polymer and 20-70 wt. % of the maleimide (¶45-59 and Tables 1 and 2 with accompanying text). The Motomura reference discloses the claimed invention but does not explicitly disclose the claimed content range. The Motomura reference discloses the claimed invention but does not explicitly disclose the cyano content amount. In an analogous art, the Capote reference discloses that optimizing the cyano amount, the polymer amount and the maleimide amount in an underfill composition is well known in the art to gain the benefit of enhancing the curing, adhesion and stability parameters of the composition (Capote: abs, ¶41-49, 74-79). One of ordinary skill in the art would have recognized that applying the known technique of Capote to the teachings of Motomura would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the curing, adhesion and stability parameters of the composition. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the optimization would be repugnant to a skilled artisan.
Claim 3: Motomura and Capote disclose methyl ethyl ketone (Motomura: example 1); the same solvent recited in applicant’s specification – thus the same solubility is expected.
Claims 4-6 and 13: Motomura and Capote disclose the thermosetting resin, additional curable groups such an acrylic and acrylonitrile – thus meeting the claimed formula (I) (Motomura: ¶45-52).
Claim 7: Motomura and Capote disclose a MW of 100,000 to 1,2000,000 (Motomura: ¶15, 22, 50, 121 and Tables 1 and 2 with accompanying text).
Claims 8-10: Motomura and Capote disclose the maleimide compound such as bismaleimide at various loading amounts such as 20-70% wt. (Motomura: ¶13-30 and 59).
Claims 11 and 12: Motomura and Capote disclose the allylphenol at various loading amounts such as 15-200 pbm (Motomura: ¶62 & Capote: ¶82 and 97).
Claims 14 and 15: Motomura and Capote disclose the coating and cured film (Motomura: abs, Figs 1 and 7-9 with accompanying text & Capote Fig 1 with accompanying text).
Response to Arguments
Applicant’s arguments, see pg. 8-10, filed 23 March 2026, with respect to the Bai reference have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant's arguments filed 23 March 2026 regarding Motomura and Capote have been fully considered but they are not persuasive.
Applicant argues that the cited references does not disclose the content of the cyano group being 0.1-6 mmol/g for 1 g of the polymer (pg. 9).
The respectfully disagrees and notes that the claimed range is equivalent to a range of about 0.6 to 15.6 wt. % - thus, the limitation is met by the formula as shown in Capote in ¶43-44 in which the CN groups accounts for about 13 wt. %.
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.
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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