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 .
Preliminary Amendment
The preliminary amendment filed on September 27th, 2023 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The IDS filed on September 27th, 2023 has been considered.
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 1-10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the cationic polymerizable component (A) including at least one compound selected from the group consisting of an oxetane compound (A1) and an alicyclic epoxy compound (A2)” on lines 6-7, and the claim also recites “proportion by mass of the oxetane compound (A1) and the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) being equal to or greater than 70% by mass”, on lines 8-10 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Note that, claim 1 as recited on lines 6-7, only at least one of oxetane compound (A1) or an alicyclic epoxy compound (A2) can be included in the cationic polymerizable component (A). However, claim 1 further recited on lines 8-10 that proportion by mass of both the oxetane compound (A1) and the alicyclic epoxy compound (A2) which is narrower of the limitation and being indefinite. It is unclear if the proportion by mass is of the sum of the oxetane compound (A1) and the alicyclic epoxy compound (A2) or of an individual of the oxetane compound (A1) or alicyclic epoxy compound (A2). It is suggested that Applicant may amend claim 1 to include “proportion by mass of the oxetane compound (A1) and/or the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) being equal to or greater than 70% by mass” in order to overcome the 112(b) issue and improve clarity. For the purpose of examination, examiner interprets the limitation to be “proportion by mass of the oxetane compound (A1) and/or the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) being equal to or greater than 70% by mass”.
Clarification is thus respectfully requested.
Claims 2-10 depend directly or indirectly on base claim 1 and inherit these deficiencies.
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.
Claims 1-10 is/are rejected under 35 U.S.C. 103 as being obvious over WO 2021/157472 A1, cited in the IDS filed on 09/27/2023 (Fukamoto et al. (U.S. Pub. 2023/0054960 A1) is being used as English language equivalent).
The applied reference has a common assignee to Panasonic Intellectual Property Management Co., Ltd. with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
In re claim 1, Fukamoto discloses a side-filling resin composition for use to form a side-filling member 4 to be interposed between a base member 2 and a peripheral edge portion of a surface, facing the base member 2, of a mounted component 3 that is surface-mounted on the base member 2 (see paragraph [0019] and fig. 1), the side-filling resin composition containing a cationic polymerizable component (A) and a photo-cationic polymerization initiator (B) (see paragraphs [0034], [0035], [0040]), the cationic polymerizable component (A) including at least one compound selected from the group consisting of an oxetane compound (A1) (see paragraphs [0036], [0038], [0040]) and an alicyclic epoxy compound (A2) (see paragraphs [0036], [0037], [0040]), and proportion by mass of the oxetane compound (A1) and the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) is preferably equal to or greater than 5% by mass and equal to or less than 100% by mass (see paragraphs [0040], [0043] and fig. 1) but is silent to wherein the proportion by mass of the oxetane compound (A1) and the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) being equal to or greater than 70% by mass.
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However, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated base on the technique as taught by Fukamoto to optimize the proportion by mass of the oxetane compound (A1) and the alicyclic epoxy compound (A2) to a total content of the cationic polymerizable component (A) during routine experimentation to being equal to or greater than 70% by mass since it is respectfully submitted there is no evidence indicating that the proportion by mass of the oxetane compound (A1) and the alicyclic epoxy compound (A2) to the total content of the cationic polymerizable component (A) is critical and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955).
In re claim 2, as applied to claim 1 above, Fukamoto discloses wherein proportion by mass of the photo-cationic polymerization initiator (B) to the total content of the cationic polymerizable component (A) is equal to or greater than 0.1% by mass and equal to or less than 10% by mass (see paragraph [0049], note that, Fukamoto discloses that the proportion by mass of the photo-cationic polymerization initiator to the total content of the cationic polymerizable component is preferably equal to or greater than 0.1% by mass and equal to or less than 3% by mass).
In re claim 3, as applied to claim 1 above, Fukamoto discloses wherein the side-filling resin composition further containing an inorganic filler (C) (see paragraph [0051], note that, Fukamoto discloses that adding the inorganic filler (C) to the side-filling resin composition would lower the coefficient of thermal expansion (CTE) of the cured product of the side-filling resin composition).
In re claim 4, as applied to claim 3 above, Fukamoto discloses wherein proportion by mass of the inorganic filler (C) to a total content of the side-filling resin composition is equal to or greater than 10% by mass and equal to or less than 90% by mass (see paragraph [0052]).
In re claim 5, as applied to claim 1 above, Fukamoto discloses wherein the cationic polymerizable component (A) includes both the oxetane compound (A1) and the alicyclic epoxy compound (A2) (see paragraphs [0036], [0037], 0038], [0040]).
In re claim 6, as applied to claim 1 above, Fukamoto discloses wherein the side-filling resin composition further containing an epoxy compound (A3) other than the alicyclic epoxy compound (A2), wherein proportion by mass of the epoxy compound (A3) to the total content of the cationic polymerizable component (A) is greater than 0% by mass and less than 30% by mass (see paragraph [0044]).
In re claim 7, as applied to claim 1 above, Fukamoto discloses wherein the side-filling resin composition has a viscosity equal to or greater than 10 Pa·s and equal to or less than 2000 Pa·s at 25° C (see paragraph [0064]).
In re claim 8, Fukamoto discloses a semiconductor device 1 comprising: a base member 2 (see paragraph [0020] and fig. 1); a mounted component 3 that is surface-mounted on the base member 2 (see paragraph [0020] and fig. 1); and a side-filling member 4 interposed between the base member 2 and a peripheral edge portion of a surface, facing the base member, of the mounted component 3, the side-filling member 4 being made of a cured product of the side-filling resin composition 4 of claim 1 (see paragraphs [0021], [0036], [0037], [0040] and 1).
In re claim 9, Fukamoto discloses a method for removing a side-filling member, the method comprising removing the side-filling member 4 of the semiconductor device 1 of claim 8 from between a peripheral edge portion of the mounted component 3 and the base member 2 while heating the side-filling member 4 to a temperature equal to or higher than 200° C (see paragraphs [0010], [0093] and fig. 1).
In re claim 10, Fukamoto discloses a method for fabricating a semiconductor device 1, the semiconductor device 1 including: a base member 2 (see paragraph [0020] and fig. 1); a mounted component 3 that is surface-mounted on the base member 2 (see paragraph [0020] and fig. 1); and a side-filling member 4 interposed between the base member 2 and a peripheral edge portion of a surface, facing the base member 2, of the mounted component 3, the side-filling member 4 being made of a cured product of the side-filling resin composition of claim 1 (see paragraphs [0019], [0021], [0036], [0037], [[0040]; the method comprising: an application step including applying the side-filling resin composition onto the peripheral edge portion of the surface, facing the base member 2, of the mounted component 3; and a curing step including curing the side-filling resin composition that has been applied, the curing step further including irradiating the side-filling resin composition with light (see paragraphs [0066], [0069] and fig. 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kong et al. U.S. Pub. 2007/0034515 February 15, 2007.
Nakata et al. U.S. Pub. 2005/0009241 January 13, 2005.
Asada et al. U.S. Patent 6,589,802 July 8, 2003.
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/KHIEM D NGUYEN/Primary Examiner, Art Unit 2892