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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5) in the reply filed on 7/22/2026 is acknowledged.
Groups II-IV (claims 6-10) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/22/2026.
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20200339782 A1).
Regarding claim 1, Sato teaches a sheet-like material comprising an epoxy resin composition disposed on a release film [0156]. The epoxy resin composition is an adhesive [0028].
Compared to Fig. 1 of the current invention comprising the claimed film adhesive and a release film, Sato’s sheet-like material comprising an epoxy resin composition is equivalent to the claimed film adhesive.
The epoxy resin composition comprises coated particles of an epoxy resin curing agent (A), an epoxy resin, and a thermoplastic resin including phenoxy resin [0082, 0099 and 0118].
The epoxy resin curing agent (A) includes a dicyandiamide including DICY7 [0056, 0103], which is the same as the claimed epoxy resin curing agent (B) as specified in the specification [0123 and 0125 pgpub, Table 1].
The epoxy resin includes a bisphenol A type epoxy resin JER828EL manufactured by Mitsubishi Chemical Corporation [0085, 0187], which is the same as the claimed epoxy resin (A) as specified in the specification [0123 pgpub and Table 1].
The phenoxy resin includes Mitsubishi 1256 [0120], which is the same as the claimed phenoxy resin (C) as specified in the specification [0086 and 0123 pgpub, Table 1].
It would have been obvious to one of ordinary skill in the art at the time of filing to select bisphenol A type epoxy resin JER828EL as the epoxy resin, select DICY7 as the epoxy resin curing agent, and select Mitsubishi 1256 as the phenoxy resin in Sato’s epoxy resin composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The epoxy resin composition includes the coated particles in an amount of preferably 0.5 to 30 mass % [0098]. The coated particles comprises 0.4 to 25 mass % of Group 4 or Group 13 element-containing compound (B) with respect to 100 mass % of the epoxy resin curing agent particle (A) [0074]. Examples of the coated particles are shown with 10 parts of (B) with respect to 100 parts of (A) [Table 1], which corresponds to 90% of (A) in the coated particles, as calculated by the examiner. Therefore, the epoxy resin composition includes the epoxy resin curing agent in an amount of 0.45 to 27 mass %, as calculated by the examiner, overlapping the claimed 0.30 to 12.0 mass %. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The recited “wherein a light transmittance T1 of the film adhesive at a wavelength of 400 nm is 90% or less, a light transmittance T2 of a cured product obtained by thermally curing the film adhesive at a wavelength of 400 nm is 85% or more, and T1<T2 is satisfied” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 2, Sato teaches that the average particle size of the epoxy resin curing agent particle (A) is not limited but preferably 2.5 to 25 μm [0053], overlapping the claimed D90 of 20.0 μm or less.
Sato teaches adding the epoxy resin curing agent particle (A) into the epoxy resin [0187]. Therefore, it is expected that the epoxy resin curing agent is dispersed in the film adhesive.
Regarding claims 4-5, coloring agent and filler are only optional in Sato’s epoxy resin composition [0099].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20200339782 A1) as applied to claim 1 above, further in view of Tetsuya et al (JP 2005015506 A, machine translation is referenced herein).
Regarding claim 3, Sato teaches the film adhesive in claim 1. Sato does not teach the thickness of the film adhesive. Sato’s adhesive is used in semiconductors [0140].
In the same field of endeavor, Tetsuya teaches an adhesive composition for semiconductors comprising an epoxy resin, a phenoxy resin, and a curing agent [abstract]. The thickness of the adhesive is about 10 μm [0036].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a film adhesive according to Sato having thickness of 10 μm, as Tetsuya demonstrates this thickness to be suitable for similar adhesives. This represents the use of a suitable thickness for film adhesives which are compositionally similar and used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The thickness of 10 μm falls within the claimed range of 1 to 20 μm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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