DETAILED ACTION
Pending Claims
Claims 1-11 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Iimura et al. (US 2020/0385580 A1) in view of Yabuno et al. (CN 106715593 A).
Regarding claims 1-3, 5, 6, 10, and 11, Iimura et al. disclose: (1) a curable silicone composition (Abstract; Examples in Table 1) comprising:
(A) at least one curing reactive organopolysiloxane in an amount of 65% by weight or more relative to the total weight of the composition (Examples in Table 1: see “(A)” and “(B)”; see also paragraphs 0081-0082); and
(C) at least one additive selected from
(C1) organopolysiloxane having at least one organic functional group including at least one polyether structure at molecular side chain and/or molecular terminal (Examples in Table 1: see “(C)”; see also paragraph 0083);
(C2) organosilane compound comprising at least one organic functional group selected from a C1-C6 alkyl group, aryl group, and epoxy group (optional component not required);
(C3) organopolysiloxane having at least one hydroxy group and at least one aryl group (optional component not required);
(C4) organosiloxane oligomer having at least one epoxy group (optional component not required);
(C5) unsaturated carboxylic acid or an ester thereof, and combinations thereof (optional component not required);
(2) wherein the (A) curing reactive organopolysiloxane is hydrosilylation reaction-reactive organopolysiloxane (Examples in Table 1: see “(A)” and “(B)”; see also paragraphs 0081-0082);
(5) comprising (C1) organopolysiloxane having at least one organic functional group including at least one polyether structure at molecular side chain and/or molecular terminal (Examples in Table 1: see “(C)”; see also paragraph 0083); (6) wherein the (C1) organopolysiloxane is present in an amount of 0.01% by weight or more and 10% by weight or less relative to the total weight of the composition (Examples in Table 1: see “(C)”; see also paragraph 0083);
(10) a sealing material formed with the curable silicone composition (Abstract; paragraph 0091); and (11) an optical semiconductor device provided with the sealing material (Abstract; paragraph 0091).
The exemplary embodiments of Iimura et al. are not formulated with: (1) (B) at least one inorganic filler selected from silica, silica-titania composite oxide particle, and a combination thereof. However, the general teachings of Iimura et al. contemplate the use of inorganic fillers, including silica (see paragraph 0070).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Iimura et al. with the instantly claimed filler because: (a) the general teachings of Iimura et al. contemplate the use of inorganic fillers; and (b) the inorganic fillers of Iimura et al. include silica.
Iimura et al. fail to disclose: (1) wherein the (B) inorganic filler is present in an amount of 1% by weight or more relative to the total weight of the composition; and (3) wherein the (B) inorganic filler is present in an amount of more than 1.5% by weight and 30% by weight or less relative to the total weight of the composition.
Yabuno et al. disclose a related curable silicone composition used for optical semiconductor devices (see Abstract; paragraphs 0019-0047). The composition of Yabuno et al. is formulated with a silica filler (see paragraphs 0204-0213), which provides stress mitigation effect, thermal shock resistance, improved adhesion strength, and reduced stickiness (see paragraph 0204). In addition, the amount of their silica filler is preferably 0.1 to 20% by weight of the overall composition. This amount helps suppress the decrease in viscosity upon heating, improve the thermal shock resistance of the cured product, improve adhesion, and reduce viscosity (see paragraph 0213).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Iimura et al. with the instantly claimed amount of filler (1% by weight or more; more than 1.5% by weight and 30% by weight or less) because: (a) the general teachings of Iimura et al. contemplate the use of inorganic fillers, including silica; (b) Yabuno et al. disclose a related curable silicone composition used for optical semiconductor devices, which is formulated with a silica filler; (c) the silica filler of Yabuno et al. helps to provide stress mitigation effect, thermal shock resistance, improved adhesion strength, and reduced stickiness; (d) Yabuno et al. preferably provide their silica filler in an amount of 0.1 to 20% by weight of the overall composition; and (e) this amount helps suppress the decrease in viscosity upon heating, improve the thermal shock resistance of the cured product, improve adhesion, and reduce viscosity.
Regarding claim 4, the combined teachings of {Iimura et al. and Yabuno et al.} are as set forth above and incorporated herein. Iimura et al. fail to explicitly disclose: (4) wherein the (C3) organopolysiloxane having at least one hydroxy group comprises the hydroxy group(s) in an amount of 0.1 mol% or more relative to the total amount of the silicon atom-bonded functional groups. However, it should be noted that this material is not required because the scope of the claim remains open to at least one additive of (C1), (C2), (C3), (C4), and (C5). Accordingly, the claim is obviously satisfied by the combined teachings of {Iimura et al. and Yabuno et al.}, which feature (C1).
Regarding claims 7-9, the combined teachings of {Iimura et al. and Yabuno et al.} are as set forth above and incorporated herein. The exemplary embodiments Iimura et al. are formulated with an adhesion promoter, (8) present in an amount of 0.01% by weight or more and 5% by weight or less relative to the total weight of the composition (see Examples in Table 1: see “(F)”; see also paragraph 0086). Accordingly, these exemplary embodiments fail to disclose: (7 & 9) (C2) organosilane compound comprising at least one organic functional group comprising at least one C1-C6 alkyl group, aryl group, and/or epoxy group; (8) wherein the (C2) organosilane compound is present in an amount of 0.01% by weight or more and 5% by weight or less relative to the total weight of the composition. However, the general teachings of Iimura et al. contemplate various adhesion promoters, in addition to the adhesion promoters used in the exemplary embodiments (see paragraphs 0064-0067). These other, equally suitable, adhesion promoters include epoxy-silanes (see paragraph 0065). In light of this, it has been found that combining and substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition resulting from the combined teachings of {Iimura et al. and Yabuno et al.} with the instantly claimed (C2) organosilane because: (a) the exemplary embodiments Iimura et al. are formulated with an adhesion promoter; (b) the general teachings of Iimura et al. contemplate various adhesion promoters, in addition to the adhesion promoters used in the exemplary embodiments; (c) these other, equally suitable, adhesion promoters of Iimura et al. include epoxy-silanes; and (d) it has been found that combining and substituting equivalents known for the same purpose is prima facie obvious.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 5, 2026
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