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 .
Remarks
The amendment filed on April 23, 2026 has been acknowledged. By this amendment, claim 1 has been amended. Accordingly, claims 1-10 are pending in the present application in which claim 1 is in independent form. Applicant’s amendment to claim 1 has overcome the 112(b) issue in the previous office action. Newly submitted IDS filed on march 16th, 2026 has been considered.
Response to Applicant’s Amendment and Arguments
Applicant’s arguments, see remarks on page 5, line 18 to page 6, line 7, filed April 23rd, 2026, with respect to the rejection(s) of claim(s) 1-10 under 35 U.S.C. § 103 as being unpatentable over WO 2021/157472 have been fully considered and are persuasive. Particularly, Applicant states that, no later than the effective filing date of the present application, both WO 2021/157472 and the claimed invention of the present application were owned by, or subject to an obligation of assignment to Panasonic Intellectual Property Management, Co., Ltd., within the meaning of 35 U.S.C. § 102(b(2)(C) and thus, the rejection has been obviated. However, upon further consideration, a new ground(s) of rejection is made in view of JP-2015-153765 A, cited in the IDS filed on 09/27/2023 and WO 2012/165259 A1, cited in the IDS filed on 03/16/2026.
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 JP-2015-153765 A, cited in the IDS filed on 09/27/2023 in view of WO 2012/165259 A1, cited in the IDS filed on 03/16/2026.
In re claim 1, JP-2015-153765 A discloses a side-filling resin composition for use to form a side-filling member 13 to be interposed between a base member 1 and a peripheral edge portion of a surface, facing the base member 1, of a mounted component 3 that is surface-mounted on the base member 1 (see paragraphs [0035], [0059], [0061] and figs. 4(a)-(d)).
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JP-2015-153765 A is silent to wherein the side-filling resin composition containing a cationic polymerizable component (A) and a photo-cationic polymerization initiator (B), 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), and proportion by mass of the at least one compound selected from the group consisting 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 70% by mass.
However, WO 2012/165259 A1 discloses an energy ray curable resin composition that can be used for mounting a semiconductor component to a base (see paragraphs [0002], [0052], [0059]-[0068] and Table 3) containing a cationic polymerizable component (A) and a photo-cationic polymerization initiator (B), 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) (70 % by mass of 3,4-epoxycyclohxylmethyl methacrylate “Cyclomer M-100”) corresponding to the alicyclic epoxy compound), and proportion by mass of the at least one compound selected from the group consisting 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 (70% by mass 70 % by mass of 3,4-epoxycyclohxylmethyl methacrylate “Cyclomer M-100”) corresponding to the alicyclic epoxy compound) and (1% by mass of aromatic sulphonium SbF6 salts “Adeka Optomer SP-170”, corresponding to the photo-cationic polymerization initiator. Example 15 further discloses in which (30% by mass of (E-2) di (1-ethyl-3-oxetanyl methyl ether) “OXT221”) corresponding to the oxetane compound)
Therefore, 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 to incorporate the technique as taught by WO 2012/165259 A1 into the device of JP-2015-153765 A in order to replace the resin composition of JP-2015-153765 A with the side-filling resin composition containing a cationic polymerizable component (A) and a photo-cationic polymerization initiator (B), 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), and proportion by mass of the at least one compound selected from the group consisting 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 70% by mass of WO 2012/165259 A1 in order to obtain a resin composition has rapid curability, high adhesiveness, and chemical resistance (see English Abstract and paragraphs [0008] and [0076] of WO 2012/165259 A1). Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 2, as applied to claim 1 above, JP-2015-153765 A in combination with WO 2012/165259 A1 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 (1% by mass of aromatic sulphonium SbF6 salts “Adeka Optomer SP-170” corresponding to the “photo-cationic polymerization initiator”) (see paragraphs [0059]-[0068] and Table 3 of WO 2012/165259 A1).
In re claim 3, as applied to claim 1 above, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses wherein the side-filling resin composition further containing an inorganic filler (C) (see paragraph [0048] of WO 2012/165259 A1).
In re claim 4, as applied to claim 3 above, JP-2015-153765 A and WO 2012/165259 A1 are silent to 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.
However, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art to optimize the proportion by mass of the inorganic filler (C) to a total content of the side-filling resin composition to be equal to or greater than 10% by mass and to be equal to or less than 90% by mass during routine experimentation corresponding the requirements for the coefficient of thermal expansion since it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955).
In re claim 5, as applied to claim 1 above, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses wherein the cationic polymerizable component (A) includes both the oxetane compound (A1) and the alicyclic epoxy compound (A2) (see paragraphs [0059]-[0068] and Table 3 of WO 2012/165259 A1), (70 % by mass of 3,4-epoxycyclohxylmethyl methacrylate “Cyclomer M-100”) corresponding to the alicyclic epoxy compound and example 15 further discloses in which (30% by mass of (E-2) di (1-ethyl-3-oxetany methyl ether) “OXT221”) corresponding to the oxetane compound) (see paragraphs [0059]-[0068] and Table 3 of WO 2012/165259 A1).
In re claim 6, as applied to claim 1 above, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses wherein the side-filling resin composition further containing an epoxy compound (A3) other than the alicyclic epoxy compound (A2) (see paragraph [0048] of WO 2012/165259 A1, the resin composition preferably contains an oligomer having an epoxy group). WO 2012/165259 A1 is silent to 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.
However, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art to optimize the proportion by mass of the epoxy compound (A3) to the total content of the cationic polymerizable compound (A) to be greater than 0% by mass and to be less than 30% by mass during routine experimentation since it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955).
In re claim 7, as applied to claim 1 above, JP-2015-153765 A and WO 2012/165259 A1 are silent to 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. However, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art to optimize the viscosity of the side-filling resin composition to be equal or greater than 10 Pa·s and to be equal to or less than 2000 Pa·s at 25° C during routine experimentation since it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955).
In re claim 8, as applied to claim 1 above, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses a semiconductor device comprising a base member 1; a mounted component 3 that is surface-mounted on the base member 1; and a side-filling member 13 interposed between the base member 1 and a peripheral edge portion of a surface, facing the base member, of the mounted component 3 (see paragraphs [0035], ]0059], [0061] and figs. 4(a)-(d) of JP-2015-153765 A), the side-filling member being made of a cured product of the side-filling resin composition of claim 1 (see paragraphs [0059]-[0068] and Table 3 of WO 2012/165259 A1).
In re claim 9, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses a method for removing a side-filling member, the method comprising removing the side-filling member 13 of the semiconductor device of claim 8 from between a peripheral edge portion of the mounted component 3 and the base member 1 while heating the side-filling member 13 to a temperature equal to or higher than 200° C (see paragraph [0068] and figs. 4(a)-(d) of JP-2015-153765 A).
In re claim 10, JP-2015-153765 A in combination with WO 2012/165259 A1 discloses a method for fabricating a semiconductor device, the semiconductor device 1 including: a base member 1; a mounted component 3 that is surface-mounted on the base member 1; and a side-filling member 13 interposed between the base member 1 and a peripheral edge portion of a surface, facing the base member 1, of the mounted component 3 (see paragraphs [0035], [0059], [0061] and figs. 4(a)-(d) of JP-2015-153765 A), the side-filling member being made of a cured product of the side-filling resin composition of claim 1 (see paragraphs [0059]-[0068] and Table 3 of WO 2012/165259 A1); 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 1, 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 paragraph [0065] and figs. 4(a)-(d) of JP-2015-163765 A and paragraph [0074] of WO 2012/165259 A1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cyr et al. (U.S. Patent 9,989,713) discloses a side-filling resin composition for use to form a side-filling member 210 to be interposed between a base member 10 and a peripheral edge portion of a surface, facing the base member, of a mounted component 12 that is surface-mounted on the base member 10 (see col. 3, lines 53-60, col. 5, lines 26-31 and fig. 3A).
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/KHIEM D NGUYEN/Primary Examiner, Art Unit 2892
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