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 § 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.
Claim 7 is 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.
Claim 7 claims “the polysilsesquioxane resin comprises at least one of polypropylene silsesquioxane, polyphenyl silsesquioxane, or polymethylene silsesquioxane”, but the examples in the specification disclose PMSQ as the PSQ resin, and PMSQ is polymethyl silsesquioxane. Considering the present disclosure exemplifies only polymethylsilsesquioxane, it is not clear if applicant intends claim 7 to recite “at least one of polypropylene silsesquioxane, polyphenyl silsesquioxane, or polymethylene silsesquioxane” or “at least one of polypropylsilsesquioxane, polyphenyl silsesquioxane, or polymethylsilsesquioxane”.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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(s) 1, 4-5, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (KR 10-2010-0009541A). Sumitomo is cited in the IDS filed March 20, 2024.
Regarding claim 1, Sumitomo discloses a composition for bonding chips to a support (title, [1], [5], [28], [130]). Sumitomo discloses that the composition comprises a silver powder ([37-39], “silver powder is particularly preferred” [44]). Sumitomo discloses that the composition comprises an epoxy resin as one from a list of preferred resins [49-51], in selecting resin materials for the composition disclosed by Sumitomo, it would have been obvious for one of ordinary skill in the art, at the time of filing, to select from resin materials which Sumitomo discloses as preferred. Sumitomo discloses that the composition comprises a curing agent and a catalyst (curing accelerator) [51]. Sumitomo discloses that the composition comprises a glycidyl ether-based diluent [57]. Sumitomo discloses an embodiment comprising polysilsesquioxane (PSQ) particles, coated with a conductive material, which Sumitomo discloses may be silver [40]. Sumitomo does not disclose a single embodiment comprising both silver particles and PSQ particles in a common composition. Sumitomo discloses that different types of filler particles may be used in combination [42], and Sumitomo identifies both silver particles and the PSQ particles quotes with silver as conductive particles [40]. Sumitomo discloses that by using silver powder as the filler particles, it is possible to obtain a hardened product with excellent thermal conductivity and electrical conductivity [44]. Sumitomo further discloses that siler particles react with other constituents of the composition and exhibit good mechanical properties when the adhesive composition is cured [44]. Considering the favorable properties which Sumitomo discloses for silver particles [44], and considering Sumitomo discloses that the composition may comprise a combination of conductive particles [42], it would have been obvious for one of ordinary skill in the art to include at least some silver particles in the embodiment of the composition comprising polysilsesquioxane (PSQ) particles disclosed by Sumitomo [40].
Regarding claim 4, Sumitomo discloses an acid anhydride curing agent as an appropriate curing agent for the composition [58]. In selecting a curing agent for the composition disclosed by Sumitomo, it would have been obvious to one of ordinary skill in the art, at the time of filing to select an option which Sumitomo discloses for that purpose.
Regarding claim 5, Sumitomo discloses the catalyst comprises an imidazole-based catalyst [62]. In selecting the catalyst (curing accelerator) for the composition disclosed by Sumitomo, it would have been obvious for one of ordinary skill in the art, at the time of filing to select a catalyst which Sumitomo discloses for such a purpose.
Regarding claim 9, Sumitomo measures shear strength with a 6x6 mm2 measured at 260°C (page 88 of the description section of the description translation). Sumitomo is silent on the room temperature shear strength which the chip bonding composition would attain by a die shear tester after dispensing the chip bonding composition on a substrate, placing a 5 mm×5 mm chip on the substrate, and heat-treating the chip at 240°C. The shear strength, that a composition attains when applied to a particular substrate and heat treated, is a material property that inseparable from the chemical composition of the material and conditions of applying the composition. See MPEP2112.01(II). When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP2112(I). Considering the constituents disclosed by Sumitomo [37-44], [50-62] and considering Sumitomo discloses achieving at least some shear strength when the disclosed composition is applied to a chip (page 88 of the description section of the translation), Sumitomo establishes a sound basis for believing that the composition disclosed by Sumitomo, applied to claim 1 above, would attain a chip bonding strength measured at room temperature using a die shear tester after dispensing the chip bonding composition on a substrate, placing a 5 mm×5 mm chip on the substrate, and heat-treating the chip at 240° C, at least under some conditions of applying the composition. Applicant is reminded that claim 9 is directed to the composition and not to the chip assembly.
Regarding claim 10, in discussing the prior art, Sumitomo notes that adhesive compositions with a low elastic modulus generally tend to have poor adhesive properties [6], but Sumitomo is silent on the storage modulus. A storage modulus is a material property that is inseparable from the chemical composition of the material. See MPEP2112.01(II). When the claimed and prior art products are substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of obviousness has been established. See MPEP.2112.01(I). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer See MPEP2112(I). Considering the constituents [037-44], [50-62] disclosed by Sumitomo, considering Sumitomo’s discussion of low modulus adhesive compositions in the prior art [6], and considering the mechanical properties which Sumitomo discloses when the composition is applied (page 88 of the description of the translation), Sumitomo establishes a sound basis for believing that composition disclosed by Sumitomo, applied to claim 1 above, has a storage modulus of 3 to 7 GPa, wherein the storage modulus is measured at 200° C. at a frequency of 1 Hz using a dynamic mechanical analyzer.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (KR 10-2010-0009541A) as applied to claim 1 above, and further in view of Elgimiabi (US20190382634). Elgimiabi is cited in the IDS filed March 20, 2024.
Regarding claim 2, Sumitomo discloses embodiments wherein the epoxy resin comprises a bisphenol A epoxy resin in combination with another epoxy resin [55-56]. Sumitomo does not disclose that the composition comprises both a glycidyl amine-based epoxy resin and a bisphenol A epoxy resin.
Elgimiabi teaches a bonding composition [0001], [0022-27]. Elgimiabi teaches that the composition comprises an epoxy resin [0030-32]. Elgimiabi teaches that the epoxy resin comprises a first component comprising a glycidyl amine based epoxy resin [0078-79], [0088] and a second component comprising a bisphenol A epoxy resin [0091]. Elgimiabi teaches that the first epoxy resin has the effect of an improved mechanical stability of the cured composition at higher temperatures [0076], and that the combination of epoxy resins gives rise to a favorable combination of mechanical stability of the cured composition such as overlap shear strength at both elevated and low temperatures and adhesive performance during adhesion between adherends that are made of various materials [0076].
Both Sumitomo and Elgimiabi teach a bonding composition comprising a combination of epoxy references.
It would have been obvious for one of ordinary skill in the art, at the time of filing, to provide an epoxy resin comprising both a glycidyl amine-based epoxy resin and a bisphenol A epoxy resin as the epoxy resin disclosed by Sumitomo, applied above because Elgimiabi teaches that a combination of epoxy resins gives rise to a favorable combination of mechanical stability of the cured composition such as overlap shear strength at both elevated and low temperatures and adhesive performance during adhesion between adherends that are made of various materials [0076], and Elgimiabi teaches a glycidyl amine-based epoxy resin as one constituent of the combination [0078-79], [0088] and a bisphenol A epoxy resin as a second epoxy resin of such a combination [0091]. Sumitomo’s breadth regarding selection of epoxy resins is open to such a combination [55-56] and in view of Elgimiabi, one of ordinary skill in the art would predict that such a combination would give rise to a favorable combination of mechanical stability of the cured composition such as overlap shear strength at both elevated and low temperatures and adhesive performance during adhesion between adherends that are made of various materials [0076].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (KR 10-2010-0009541A) as applied to claim 1 above, and further in view of Hariharan (US20140153167).
Regarding claim 6, Sumitomo discloses selecting the glycidyl ether-based diluent from phenyl glycidyl ether and cresyl glycidyl ether, and aliphatic glycidyl ethers [57], which are categories open to the specific ethers recited in claim 6, but Sumitomo does not disclose one of the specifically named glycidyl ethers recited in claim 6.
Hariharan teaches a chip bonding composition (title, [0002], [0005], [0024], [0027], [0031]). Hariharan teaches that the composition comprises silver powder [0006], [0012] an epoxy resin [0006], [0012]; a curing agent (anhydride) [0006], [0014-15], [0096-97], a catalyst [0032], and a glycidyl ether-based diluent [0033]. Hariharan teaches electing diluent from the specific examples: t-butylphenyl glycidyl ether, alkyl C8-C14 glycidyl ether, butyl glycidyl ether, cresyl glycidyl ether, phenyl glycidyl ether, nonylphenyl glycidyl ether, 2-ethylhexyl glycidyl ether, and combinations thereof [0033].
Both Sumitomo and Hariharan teach substantially similar compositions for the same purpose (chip bonding).
It would have been necessary for one of ordinary skill in the art to select specific chemicals from the categories of glycidyl ethers disclosed by Sumitomo. In selecting a glycidyl ether, it would have been obvious for one of ordinary skill in the art to choose a t-butylphenyl glycidyl ether, alkyl C8-C14 glycidyl ether, butyl glycidyl ether, cresyl glycidyl ether, phenyl glycidyl ether, nonylphenyl glycidyl ether, 2-ethylhexyl glycidyl ether, or combinations thereof because Hariharan teaches such ethers as appropriate for chip bonding compositions comprising silver powder, epoxy resin, and a catalyst [0006], [0012], [0014-15], [0032-33]. Considering Hariharan teaches such ethers as effective diluents [0033], the glycidyl ethers taught by Hariharan [0033] would predictably function as epoxy diluents. Butyl glycidyl ether, and 2-ethylhexyl glycidyl ether are two of the options which Hariharan names [0033] and recited in present claim 6.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (KR 10-2010-0009541A) as applied to claim 1 above, and further in view of Trumble (US20180251663). Trumble is cited in the IDS filed March 20, 2024.
Regarding claim 7, Sumitomo discloses polysilsesquioxane following a listing of copolymers [40], which suggests that Sumitomo is open to a broad spectrum of polysilsesquioxane resins. Sumitomo does not disclose one of the option for polysilsesquioxane recited in claim 7.
Trumble teaches a 1. A chip bonding composition (abstract, [0002-04], Fig. 1). Trumble teaches that the composition comprises a silver powder [0053-54] an epoxy resin [0087], [0133], [0178], and a polysilsesquioxane (PSQ) resin [0057]. Trumble teaches a polysilsesquioxane copolymer containing contains (R—SiO3/2)n, wherein the organic group (R) can be methyl, ethyl, propyl, butyl, cycloalkyl, vinyl, phenol, epoxy, or amino, for which the methyl group is preferred [0100-101].
Both Sumitomo and Trumble teach similar chip bonding compositions comprising silver powder and epoxy resin.
The polysilsesquioxane disclosed by Sumitomo [40] must necessarily comprise some specific polysilsesquioxane. It would have been obvious to one of ordinary skill in the art, at the time of filing, to provide the polysilsesquioxane disclosed by Sumitomo, applied above, as a poly- methyl, ethyl, propyl, butyl, cycloalkyl, vinyl, phenol, epoxy, or amino -silsesquioxane because Trumble teaches that poly- methyl, ethyl, propyl, butyl, cycloalkyl, vinyl, phenol, epoxy, or amino -silsesquioxane resins as appropriate choices for binding compositions comprising silver particles and an epoxy resin, thereby establishing poly- methyl, ethyl, propyl, butyl, cycloalkyl, vinyl, phenol, epoxy, or amino -silsesquioxane resins as effective polysilsesquioxane additives as effective for chip binding compositions. Polymethylsilsesquioxane is the polysilsesquioxane shown in examples in the present disclosure.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (KR 10-2010-0009541A) as applied to claim 1 above, and further in view of Shingai (US20170120394).
Regarding claim 8, Sumitomo discloses that the bonding composition may comprise dispersants (coupling agent or surfactant [126]), but Sumitomo does not disclose a dispersant from among those recited in present claim 8.
Shingai teaches a semiconductor bonding composition [0001]. Shingai teaches that the composition comprises a silver powder [0001], [0014], [0016] and an epoxy resin [0121]. Shingai teaches that the composition preferably comprises a dispersant in order to disperse the fine silver particle [0024]. Shingai teaches that the dispersant is preferably a phosphoric acid-based dispersant [0024-25]. Shingai teaches that since phosphor P and oxygen O pull with each other through a metal M, a phosphoric acid based dispersant is most effective for the adsorption of a metal or a metal compound, and thus, the suitable dispersing property can be obtained by the minimum adsorption amount [0024-25].
Both Sumitomo and Shingai teach a semiconductor bonding composition comprising silver powder and epoxy resin.
It would have been obvious to one of ordinary skill in the art, at the time of filing to supply a phosphoric acid based dispersant to the composition disclosed by Sumitomo, applied above because Shingai teaches that a phosphoric acid based dispersant is most effective for the adsorption of a metal or a metal compound, and thus, the suitable dispersing property can be obtained by the minimum adsorption amount in a bonding composition comprising silver powder [0024-25]. Sumitomo is open to dispersants in general [126], and Sumitomo discloses the composition is preferably liquid at room temperature [57]. A phosphoric acid based dispersant would be predicted to effectively adsorb to the silver powder of the composition and disperse the powder [0024-25].
Allowable Subject Matter
Claim 3 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 1 claims a chip bonding composition. Claim 1 claims that the composition comprises a silver powder; an epoxy resin; a curing agent; a catalyst; a glycidyl ether-based diluent; and a polysilsesquioxane (PSQ) resin. Claim 3 depends on claim 1. Claim 3 claims that the composition comprises 1 to 7 parts by weight of the epoxy resin, 0.01 to 5 parts by weight of the catalyst, 0.2 to 3 parts by weight of the glycidyl ether-based diluent, and 1 to 6 parts by weight of the polysilsesquioxane (PSQ) resin, based on 100 parts by weight of the silver powder. Claim 3 further claims a mixing ratio of the epoxy resin to the curing agent is a weight ratio of 1:1 to 1:2.
The present office action rejects independent claim 1 over Sumitomo (KR 10-20100009541A). Sumitomo is the closest prior art reference of record to claim 3. The present office action relies on an embodiment of Sumitomo comprising polysilsesquioxane (PSQ) filler material [40] in combination with Sumitomo’s teachings of silver powder [44]. While the disclosure of Sumitomo is sufficient to lead one of ordinary skill in the art at the time of filing to a bonding composition comprising polysilsesquioxane (PSQ) and silver powder in some unspecified proportions, Sumitomo does not provide suggestion or guidance on scaling proportions of polysilsesquioxane (PSQ) and silver powder, particularly relative to each other. Claim 3 defines over Sumitomo at least in claiming 1 to 6 parts by weight of the polysilsesquioxane (PSQ) resin, based on 100 parts by weight of the silver powder.
The present office action rejects dependent claims over Sumitomo in view of Elgimiabi (US20190382634), Hariharan (US20140153167), Trumble (US20180251663) or Shingai (US20170120394). None of Elgimiabi, Hariharan, Trumble, or Shingai discloses a composition comprising a silver powder; an epoxy resin; a curing agent; a catalyst; a glycidyl ether-based diluent; and a polysilsesquioxane (PSQ) resin; therefore, Elgimiabi, Hariharan, Trumble, or Shingai provides guidance on scaling the constituents recited in claim 3 in proportion to one another. Claim 3 defines over Sumitomo in view of the cited secondary references, at least in claiming that the composition comprises 1 to 7 parts by weight of the epoxy resin, 0.01 to 5 parts by weight of the catalyst, 0.2 to 3 parts by weight of the glycidyl ether-based diluent, and 1 to 6 parts by weight of the polysilsesquioxane (PSQ) resin, based on 100 parts by weight of the silver powder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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