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 § 102/35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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) 1-9 and 22 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsuo et al (JP56-10379).
Matsuo sets forth siloxane-based crosslinkable compositions and films obtained from such.
Said crosslinkable compositions comprise (A) a siloxane polymer containing a polysilsesquioxane skeleton represented by formula (1)
PNG
media_image1.png
279
639
media_image1.png
Greyscale
and a crosslinkable silicon compound having four or more groups reactive with the hydroxyl group in (A). It is deemed the crosslinkable silicon compound reads/anticipates the heat-resistant silicone resin [claims 1 and 22]—see [0021]- [0025] and examples.
Regarding claims 1, 3 and 5-9:
Per example 3: Matsuo sets forth a composition comprising (A) a silsesquioxane having the formula
PNG
media_image2.png
222
507
media_image2.png
Greyscale
[claim 6-7, wherein n is at least 3 and R; is an alkyl group and R1 is an aromatic group] (B) phenyltrimethoxysilane [claim 22, silicone resin]; and a solvent (toluene: BP 231°C [claim 5])—see [0084]. Said composition is coated onto a coated film and cured under thermal conditions at 80 deg. C for 1 hour and 120 deg. C for 2 hours to obtain a coated film [claim 8]. Mutsuo is silent with regard to the adhesion (JIS K5600-5-6). However, JIS K5600-5-6 measures how strongly the coating sticks/adheres to the substrate and Mutsuo sets forth said coating film is cured, and thus bonded, onto a substrate; thus, the cured film inherently has an adhesion number. However, the Patent and Trademark Office are not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In the alternative, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the adhesion number/strength of the composition in order to achieve the desired adhesion number. Matsuo sets forth said cured film has a 5 % weight loss at 395 deg. C [claims 3 and 9]—see [0089].
Regarding claims 2:
Matsuo does not expressly set forth the properties, such as tensile modulus of elasticity at room temperature and at 300 deg. C. The tensile modulus of elasticity is the measure of a material's stiffness, or its ability to resist deformation under tensile stress and therefore should be inherent to the cured composition. And since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In this case, one skilled in art prior to the effective filing date of the present invention would know how to alter the modulus of elasticity of the composition in order to achieve the desired stiffness.
Regarding claim 3: Matsuo does not set forth the viscosity of the composition; however, said composition is disclosed as a solution in a solvent and therefore should inherently have a viscosity. However, The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In the alternative, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in art prior to the effective filing date of the present invention would know how to alter the viscosity of the composition in order to provide a coatable liquid composition in absence of evidence.
Allowable Subject Matter
Claims 10-21 are 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. Matsuo does not expressly set forth the instantly claimed stack structures or methods for producing a stack or element which includes a bonding electrode comprising said resin compositions. Nor does Matsuo set forth imaging devices or semiconductors including said stacks comprising said instantly claimed curable resin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
Prosecution Insights