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 .
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, 3-8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tazawa (JP-2018039889-A, English translation provided).
Regarding claims 1, 5-6, and 12, Tazawa teaches a curable composition ([0001]). The composition is used in an adhesive ([0053]) (claim 12) and comprises an epoxy resin, a polythiol resin, and a latent curing agent ([0008]). A polythiol compound reads on a thiol compound (A2). The latent curing agent can be Novacure HX-7322 ([0028]). Novacure HX-7322 reads on an anion polymerization initiator (D) containing a microencapsulated curing catalyst (D1) (curing catalyst #2 in instant [0100]). The composition can further include additives including fillers, antioxidants, storage stabilizers, a compound having a (meth)acrylic group, and a compound that generates a radical by light irradiation ([0027]). A compound having a (meth)acryl group, such as ethylene glycol diacrylate and 1,6-hexanediol diacrylate ([0038]), reads on an ene compound (A1). Tazawa teaches that the filler that can be silicone rubber powder ([0032]), reading on a filler (C) containing silicone powder (C1). The storage stabilizer can be a boric acid ester such as tributyl borate ([0029]), reading on a stabilizer (B) that contains an anion polymerization inhibitor (claim 5) that contains an organoborate compound (claim 6) (stabilizer #2 in instant [0100]).
Tazawa lacks sufficient specificity for anticipation of the composition of (A1), (A2), (B), (C), and (D).
However, it would have been obvious to prepare a curable composition comprising (A1), (A2), (B), (C), and (D) because Tazawa teaches that all of these components can be included in the curable composition.
Regarding claim 3, Tazawa teaches the curable composition of claim 1. Tazawa further teaches 0.1-200 parts by mass of the filler (silicone rubber powder) with respect to 100 parts by mass of the epoxy component ([0032]). Based on 100 parts by mass of the epoxy component, the composition further comprises 20-100 parts thiol component ([0022]), 0.01-5 parts storage stabilizer ([0029]), and 3-30 parts of the latent curing agent ([0027]). This corresponds to about 0.1-200 parts filler per about 123-235 parts of other solid components or a range of about 0-62% by mass relative to a solid content of the curable composition (0.1/(235+0.1)=0.0004 and 200/(123+200)=0.62).
Tazawa does not anticipate the claimed filler (C) content.
However, it would have been obvious to one of ordinary skill to have selected any filler content in the range of 0-62% by mass because Tazawa teaches this range. A range of 0-62% by mass overlaps with the claimed range of 10-65% by mass relative to a solid content of the curable composition. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 4, Tazawa teaches the curable composition of claim 1. The silicone rubber powder may be used as the only filler, reading on wherein a percentage of the silicone powder (C1) is 100% by mass relative to the filler (C).
Regarding claims 7-8, Tazawa teaches the curable composition of claim 1. The composition can further comprise a compound that generates a radical by light irradiation ([0040]) and an antioxidant ([0036]). A compound that generates a radical by light irradiation reads on a radical polymerization initiator (F) (claim 7). The antioxidants taught by Tazawa include hydroxyquinone and phenothiazine ([0036]), reading on wherein the stabilizer (B) contains a radical polymerization inhibitor (claim 8).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tazawa (JP-2018039889-A, English translation provided)as applied to claim 1 above, and further in view of Ruiz Orta (US-2018/0230267-A1).
Modified Tazawa teaches the composition of claim 1 comprising additives.
Tazawa does not teach a carbodiimide compound (E).
However, prior to the effective filing date, carbodiimide compounds were known as hydrolysis stabilizers in adhesive compositions, as taught by Ruiz Orta. Ruiz Orta teaches adhesive compositions (Ruiz Orta, title) and teaches that aromatic carbodiimides can be used as hydrolysis stabilizers (Ruiz Orta, [0238]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have included the aromatic carbodiimide of Ruiz Orta in the curable composition of Tazawa in order to reduce hydrolysis in the composition.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tazawa (JP-2018039889-A, English translation provided) as applied to claim 1 above, and further in view of Ueda (US-2020/0317972-A1).
Tazawa teaches the curable composition of claim 1 comprising a silicone rubber powder.
Tazawa does not teach a silicone composite powder.
However Ueda teaches that coating silicone particles is useful for minimizing adhesive layer expansion. Ueda teaches adhesive compositions (Ueda, abstract). Ueda’s compositions may comprise silicone rubber particles, silicone resin particles, or composite particles thereof (Ueda, [0039]). Ueda teaches that it is preferable to coat the surface of the silicone particles with silica or a resin other than silicone because the moisture permeability is much lower and the adhesive layer is much less likely to undergo expansion (Ueda, [0039]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the silicone rubber powder of Tazawa with a coated silicone rubber powder because Ueda teaches that coating silicone particles reduces moisture permeability and expansion. A coated silicone rubber powder reads on a silicone composite powder.
Claims 1-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Iwaya (WO-2018/047849-A1, cite no. 3 on 2/29/2024 IDS, English translation provided) in view of Tadokoro (US-2021/0147614-A1).
Regarding claims 1, 3-4, 7-8, and 11-12, Iwaya teaches a curable resin comprising an acrylic resin, a thiol compound, a latent curing accelerator, a radical polymerization inhibitor, and an anionic polymerization inhibitor ([0003]). The resin preferably includes a radical polymerization initiator ([0050]) (claim 7). The resin can be used as an adhesive ([0001]) (claim 12). The acrylic resin can be a diacrylate or a methacrylate ([0016]), reading on an ene compound (A1). The thiol compound reads on a thiol compound (A2). The latent curing accelerator can be Novacure HXA9332HP ([0037]), reading on an anion polymerization initiator (D) containing a microencapsulated curing catalyst (D1) (see curing catalyst #1 in instant [0100]). A radical polymerization inhibitor reads on a stabilizer (B) wherein the stabilizer (B) contains a radical polymerization inhibitor (claim 8). The composition can further comprise other additives ([0051]).
Iwaya does not teach a filler containing silicone powder (C1).
However, prior to the effective filing date of the claimed invention, silicone composite powder was known to be useful as a filler in curable compositions, as taught by Tadokoro. Tadokoro teaches a thermosetting composition capable of reducing warpage (Tadokoro, [0008]). Tadokoro’s composition includes an organic filler (Tadokoro, [0140]). The organic filler is preferably a silicone composite powder, from the viewpoint of being excellent in low thermal expansion, flexibility, and reduction of warpage (Tadokoro, [0143]). Tadokoro teaches silicone composite powder (organic filler) in an amount of 10-50 parts by mass based on 100 parts by mass of the solids of the composition from the viewpoint of being excellent in low thermal expansion, flexibility, and reduction of warpage (Tadokoro, [0147]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have included 10-50 parts silicone composite powder as an additive in the composition of Iwaya as taught by Tadokoro in order to reduce warpage. Silicone composite powder reads on a filler (C) containing a silicone powder (C1) containing silicone composite powder (claim 11) in an amount of 100% by mass relative to the filler (claim 4). An amount of 10-50 parts by mass based on 100 parts by mass of the solids of the composition corresponds to 10-50% by mass of the filler (claim 3).
Regarding claim 2, modified Iwaya teaches the composition of claim 1. Iwaya further teaches that a ratio of the thiol equivalent of the thiol compound to the acrylic equivalent of the acrylic compound is 0.5-2 ([0038]).
Iwaya does not anticipate the claimed functional group equivalent ratio of the thiol compound (A2) to the ene compound (A1).
However, it would have been obvious to one of ordinary skill to have selected any functional group equivalent ratio of the thiol compound to the ene compound in the range of 0.5-2 because teaches this range. A range of 0.5-2 overlaps with the claimed range of greater than or equal to 0.5 and less than or equal to 1.5. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claims 5-6, modified Iwaya teaches the composition of claim 1. Iwaya further teaches that the composition can comprise an anionic polymerization inhibitor ([0044]), reading on wherein the stabilizer (B) contains an anion polymerization inhibitor (claim 5). The anionic polymerization inhibitor can be a boric acid ester, such as triisopropyl borate ([0044]), reading on wherein the anion polymerization inhibitor contains an organoborate compound (claim 6).
Regarding claim 10, modified Iwaya teaches the composition of claim 1. Iwaya exemplifies compositions with 90% by mass of ene and thiol compounds (A, B, B’, and B’’ compounds in Table 1). It would have been obvious to one of ordinary skill to use the ene compound and the thiol compound in a combined amount of about 90% by mass relative to a portion obtained by excluding the filler (C) from a solid content of the curable composition because Iwaya exemplifies this.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Iwaya (WO-2018/047849-A1, cite no. 3 on 2/29/2024 IDS, English translation provided) in view of Tadokoro (US-2021/0147614-A1) as applied to claim 1 above, and further in view of Ruiz Orta (US-2018/0230267-A1).
Modified Iwaya teaches the composition of claim 1. Iwaya uses a specific combination of thiols to maintain moisture resistance ([0027]). Iwaya further teaches that ester linkages are susceptible to hydrolysis and that cured products derived from ester linkage containing components may not have sufficient moisture resistance ([0028]). Given this disclosure, one of ordinary skill would have recognized that Iwaya aims to reduce hydrolysis in the curable composition.
Iwaya does not teach a carbodiimide compound (E).
However, prior to the effective filing date, carbodiimide compounds were known as hydrolysis stabilizers in adhesive compositions, as taught by Ruiz Orta. Ruiz Orta teaches adhesive compositions (Ruiz Orta, title). Ruiz Orta teaches that aromatic carbodiimides can be used as hydrolysis stabilizers (Ruiz Orta, [0238]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have included the aromatic carbodiimide of Ruiz Orta in the curable composition of Iwaya in order to reduce hydrolysis in the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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