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 .
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.
Claim Interpretation
Due to the phrase “or a combination thereof;” at the end of claim 1, the claim was interpreted as comprising an epoxy resin or a bismaleimide resin or a hardener or a combination of any or all these materials.
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 – 2, 4 and 6 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200190313 A1 to Moon et al. hereinafter “Moon”.
Moon is directed to thermosetting resin compositions for semiconductor packaging [0002].
Regarding claims 1 – 2, Moon teaches a composition for a thermosetting resin comprising a binder containing an epoxy resin, a special resin and at least three kinds of fillers having different average particle diameters in a specific ratio [0025]. The special resin can comprise a bismaleimide resin (BMI resin) [0027]. Examples 1 – 3 comprise an epoxy resin, BMI resin and benzoxazine curing agent. The particle sizes and amounts of the three fillers are included in the following Table.
Filler
Particle size
(microns) [0077 – 0079]
Parts
[0084]
Claim 1
(microns)
F-1 – first
0.7 – 1.2
280-400
>0.5 - <1
F-2 – second
0.09 – 0.3
30-90
>0.1 - <0.3
F-3 - third
0.01 – 0.05
35-60
<0.1
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP 2144.05
Therefore, it would have been obvious to use three fillers with the different particle size ranges as claimed as Moon directly teaches these ranges.
As to claims 4 and 6, Moon teaches the fillers that can be used can include silica aluminum trihydroxide (silica + aluminum trihydroxide), alumina (aluminum oxide) in [0088]. The first to third fillers having different average particle diameters may use at least one of the materials selected in [0088]. See [0089]. Therefore, the first through third fillers can be the same filler or three different materials specified in [0088]. It would have been obvious to one of ordinary skill to choose silica or alumina as they are directly taught by Moon.
Regarding claim 7 and 9, Moon teaches at least at Example 3 (Table 1) a composition comprising 57.6% of a first filler, 14.4% of a second filler and 8% of a third filler and 20% of a binder. The sum of the first through third fillers are greater than 20% (binder).
Allowable Subject Matter
Claims 3, 5 and 10 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.
Prior Art of Record
US 20200190313 A1 to Moon et al.
Conclusion
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PAS 9/3/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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