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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: line 3 of the claim has a parentheses bracket before “excluding” but does not have a closing parentheses bracket before the semicolon, examiner suggests deleting the lone parentheses bracket before “excluding”.
Appropriate correction is required.
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gondaira et al, US20210311389A1 in view of Aoshima, K. US20080193685A1 further in view of Tanaka et al US6838170B2.
Regarding claims 1-4, Gondaira teaches a resin composition for solder resist films or an interlayer adhesive for a semiconductor package ¶¶[0001, 0103] comprising a (meth)acrylic photocurable polymer, a thermosetting agent, and a polymerization initiator, where the glass transition temperature of the (meth)acrylic photocurable polymer is 20°C or less, abstract. The thermosetting agent (thermal curing agent) can be a bisphenol A type epoxy resin, ¶¶[0059-0060].
Gondaira exemplifies in example 3, page 11, table 1, a composition comprising (meth)acrylic photocurable polymer (A), which has a Tg of 0°C and comprises units derived from (meth)acrylate monomers and glycidyl methacrylate, ¶[0118], which reads on claim 3, and thermal curing agent (J) which is a bisphenol A epoxy resin JER1001, and reads on the epoxy of claim 4, see below the table 1-continued, page 12. The blend ratio is 70 parts epoxy (J) to 100 parts (meth)acrylic polymer (A), which equals 41.17/58.83 and is within the claimed ratio of claim 2.
Gondaira is silent to the addition of a cationic polymerization initiator, but states in ¶[0066] that the photopolymerization initiator is not particularly limited and lists acylphosphine oxides as an example. Gondaira is also silent to the elastic modulus at 80°C of the composition.
Aoshima discloses a photocurable composition comprising (meth)acrylic polymers, and epoxy resins ¶[0082]. The composition uses photopolymerization initiators for curing and Aoshima discloses that these initiators include radical and cationic polymerization initiators, such as acylphosphine oxides and sulfonium salts, ¶[0063]. It is prima facie obvious to substitute one material for another to obtain predictable results when the materials are recognized as functional equivalents in the art.
Regarding the elastic modulus of the composition at 80°C, applicant states in ¶¶[0348, 0350] of the instant specification that the claimed elastic modulus range is achieved due to the ratio of the acrylic resin to the epoxy resin and due to the Tg of the acrylic resin being 0°C or lower. Therefore, one of ordinary skill in the art is reasonably suggested, the composition of Gondaira must have the claimed elastic modulus at 80°C because the composition contains the required ratio of epoxy to acrylic polymer and the acrylic polymer has a Tg of 0°C.
Additionally, Tanaka discloses an adhesive composition for semiconductors comprising epoxy resins and epoxidized acrylic copolymers, abstract. Tanaka discloses the composition has an elastic storage modulus of 20-2,000 MPa at 25°C, and it decreases to 3-50 MPa as the temperature is increased to 260°C, Col. 15 lines 14-20, which overlaps with the claimed range at 80°C. Tanaka further discloses that compositions with the storage modulus in this range are effective at releasing thermal stress preventing peeling, cracking, and reflow cracking, and are not difficult to handle when forming accurate adhesive layers, Col. 15 lines 23-33. Also, the low elastic modulus ensures reliability by releasing thermal stress, Col. 16 lines 43-46.
Gondaira and Aoshima, are analogous to the claimed invention because they are in the field of photocurable compositions comprising (meth)acrylic polymers and epoxy resins.
Tanaka is analogous to the claimed invention because it is in the field of compositions used in electronic components, such as semiconductors, comprising epoxy and acrylic resins.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Gondaira but substituting the photopolymerization initiator for a cationic photopolymerization initiator because it is the simple substitution of initiators that are light activated and polymerize the curing reaction, and further obtain a composition with an elastic modulus of 20-2,000 MPa at 25°C and 3-50 MPa at 260°C with the motivation of producing an adhesive for semiconductors that releases thermal stress when cured preventing peeling, cracking, reflow cracking, is easy to handle, and ensures reliability as disclosed by Aoshima and Tanaka.
Regarding claim 5, Gondaira teaches the photopolymerization initiator is 2-20 parts by mass per 100 parts (meth)acrylic polymer, ¶[0067]. This amount would make the range for example 3, 2-20 parts/170 parts, where there are 100 parts (meth)acrylic polymer and 70 parts epoxy resin, which is equal to 1.18-11.8 parts per 100 parts total (meth)acrylic polymer and epoxy resin. This range overlaps with the claimed range. Therefore, 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 Gondaira because selection of the overlapping portion of ranges has been held to be prima facie obvious. 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).
Regarding claim 7, Gondaira teaches a solder resist film is made with the photocurable composition, ¶[0103].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gondaira et al, US20210311389A1 in view of Aoshima, K. US20080193685A1 further in view of Tanaka et al US6838170B2 further in view of Ichikawa et al US5744282 A.
Regarding claim 6, modified Gondaira teaches the invention according to claim 1 as explained above and applied here. Gondaira teaches a solder resist film is made with the photocurable composition, ¶[0103]. A resist pattern is made by a method comprising laminating the solder resist film on a substrate (reads on support), irradiating a part of the resin layer with active rays to form a cured portion in the resin layer, followed by a developing step of removing the resin composition that is not cured, followed by a thermosetting step, ¶[0104]. During the exposure step, the image is formed via a negative or positive mask, ¶[0109]. Gondaira further teaches that in wet development the resist layer can be developed by a publicly known method using a developer that has good operability and lists an aqueous alkaline solution as an example of a developer, ¶[0112].
Gondaira is silent to the addition of an organic solvent in the developing solution.
Ichikawa discloses photosensitive resin compositions used for resists in circuit boards, abstract, Col. 1 lines 1-11. Ichikawa further discloses that the pattern is formed in a similar process as Gondaira’s where the film is laminated to a surface, the pattern is exposed, and the unexposed portion is removed with a developer such as an alkaline developer, Col. 1 lines 12-20. Ichikawa discloses the aqueous alkaline solution for developing further comprises a small amount of organic solvent for promoting development, Col. 10 lines 50-55.
Ichikawa is analogous to the claimed invention because it is in the field of photocurable compositions for electronic parts.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of modified Gondaira using an aqueous alkaline solution further comprising a small quantity of organic solvent because it is the combination of familiar elements to yield predictable results with the motivation of promoting development of the pattern in the resist film as disclosed by Ichikawa.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/712,975 in view of Tanaka et al US6838170B2.
Reference claim 1 is directed to a photocurable composition comprising: an acrylic resin (AC); an epoxy group-containing compound (A) excluding a component corresponding to the acrylic resin (AC); and a cationic polymerization initiator (I), wherein the acrylic resin (AC) has a glass transition point of 0° C. or lower and has a constitutional unit (ac1) derived from an epoxy group-containing acrylic monomer, and a content proportion of the constitutional unit (ac1) in a total amount of all constitutional units constituting the acrylic resin (AC) is greater than 0% by mass and less than 50% by mass. This reads on instant claims 1 and 3. The difference is that reference claim 1 does not recite the elastic modulus limitation of instant claim 1.
Tanaka discloses an adhesive composition for semiconductors comprising epoxy resins and epoxidized acrylic copolymers, abstract. Tanaka discloses the composition has a storage (elastic) modulus of 20-2,000 MPa at 25°C, and it decreases to 3-50 MPa as the temperature is increased to 260°C, Col. 15 lines 14-20, which overlaps with the range at 80°C of instant claim 1. Tanaka further discloses that compositions with the storage modulus in this range are effective at releasing thermal stress preventing peeling, cracking, and reflow cracking, and are not difficult to handle when forming accurate adhesive layers, Col. 15 lines 23-33. Also, the low elastic modulus ensures reliability by releasing thermal stress, Col. 16 lines 43-46.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of ‘975 and obtain a composition with an elastic modulus of 20-2,000 MPa at 25°C and 3-50 MPa at 260°C with the motivation of producing an adhesive for semiconductors that releases thermal stress when cured preventing peeling, cracking, reflow cracking, is easy to handle, and ensures reliability as disclosed by Tanaka.
Reference claim 2 reads on instant claim 2.
Reference claim 3 reads on instant clam 4.
Reference claim 4 reads on instant claim 5.
Reference claim 5 reads on the method of instant claim 6.
Reference 6 reads on the film of instant claim 7.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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