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 Objections
Claim 19 is objected to because of the following informalities: Claim 19 recites “acrylate ester-methacrylate ester” copolymer and “polymethacrylate ester-based” polymer. It is suggested the claim is amended to recite “acrylate -methacrylate” copolymer and “polymethacrylate -based” polymer. Appropriate correction is required.
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.
Claim(s) 1-5 and 8-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Iseda et al. (US 20150247067) in view of Ma et al. (US 2021/0395483).
Regarding claims 1, 9, and 10, Iseda et al. teaches a conductive composition comprising a conductive metal powder and an epoxy resin component, wherein the conductive metal powder contains at least a metal flake including a plate-shaped metal powder (paragraphs [0020]- [0021]), the average particle diameter of the metal flake can be approximately 0.1 to 20 µm (paragraph [0027]) which overlaps the claimed range of 0.6 to 1.4 µm. Further, a latent curing agent may be used (paragraphs [0073]-[0074]). The composition may be a paste-like composition (paragraph [0082]). Iseda et al. teaches wherein the epoxy resin component contains other epoxy resin including monofunctional epoxy resin (paragraph [0068]) and corresponds to component (A) as presently claimed. The ratio of the polyfunctional epoxy resin to the other epoxy resin can be selected from the range of the former/the latter (weight ratio)=approximately 99.9/0.1 to 15/85 (paragraph [0072]), which clearly overlaps the range of 1 to 50% by mass as presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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); see MPEP 2144.05.
Iseda et al. teaches monofunctional epoxy resin including phenylglycidyl ether (paragraph [0068]) but fails to teach the monofunctional epoxy resin as claimed.
However, Ma et al. teaches a composition containing a thermally conductive filler component used, for example, for sealants, adhesives, etc. (paragraph [0002]), wherein the thermally conductive filler includes glass microspheres (paragraphs [0143]-[0144]) and wherein the monofunctional epoxy resin includes monoglycidyl ethers of alcohols and phenols, such as phenyl glycidyl ether and glycidyl esters of monocarboxylic acids such as glycidyl neodecanoate (paragraph [0055]). Given that Ma et al. discloses the use of phenyl glycidyl ether and glycidyl neodecanoate as being interchangeable and, thus, materials being equivalents, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the phenyl glycidyl ether of Iseda et al. with glycidyl neodecanoate as a matter of substitution of equivalents known for the same purpose. See MPEP 2144.06 II.
Regarding claim 2, Iseda et al. teaches ratio of the metal flake to the polyfunctional epoxy resin can be selected from the range of, for example, the former/the latter (weight ratio)=approximately 99.9/0.1 to 25/75 (paragraph [0081]) which clearly overlaps the claimed amount of 20 to 300 parts phr.
Regarding claim 3, Iseda et al. teaches a BET specific surface area of the metal flake can be selected from the range of approximately 0.3 to 7 m.sup.2/g (paragraph [0029]).
Regarding claim 4, Iseda et al. further teaches another metal powder (paragraph [0043]).
Regarding claim 5, Iseda et al. teaches ratio of the conductive metal powder to the epoxy resin component (usually the sum of at least the epoxy resin and the curing agent) can be selected from the range of, for example, the former/the latter (weight ratio)=approximately 99.1/0.9 to 20/80 (paragraph [0080]) which clearly overlaps the claimed amount of 20 to 300 parts phr.
Regarding claim 8, Iseda et al. teaches using the conductive composition as a cured coating (paragraphs [0100] and [0103]).
Regarding claim 11, Iseda et al. teaches wherein the other epoxy resin (monofunctional epoxy resin and/or bifunctional epoxy resin) may be used singly or in combination of two or more thereof (paragraphs [0068]-[0069]). Therefore, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 12, given that the other epoxy resin of Iseda et al. corresponds to component (A) as presently claimed and contains monofunctional epoxy resin and bifunctional epoxy resin, the other epoxy resin of Iseda et al. clearly consists of monofunctional epoxy resin and bifunctional epoxy resin, as presently claimed.
Regarding claim 15, Iseda et al. teaches wherein the metal constituting the other metal powder is the same as the metal as described in the section of the metal flake (paragraph [0043]) which includes silver (paragraph [0022]), i.e. a non-crystalline metal powder.
Claim(s) 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Iseda et al. (US 20150247067) in view of Ma et al. (US 2021/0395483) and further, in view of Fujiwara et al. (JP 2016065146).
Iseda et al. in view of Ma et al. is relied upon as disclosed above.
Regarding claims 7 and 19, Iseda et al. in view of Ma et al. fails to teach further compositing a rubber particle.
However, Fujiwara et al. further teaches resin particle (F) comprising silicone rubber, wherein the rubber particle (F) comprises crosslinked polymers including methyl methacrylate resin which may be metal-coated (page 8) which results in a core-shell particle.
It would have been obvious to one of ordinary skill in the art to include a rubber particle in the conductive composition of Iseda et al. in view of Ma et al. in order to improve thermal shock resistance, adhesion, compression elastic modulus (Fujiwara et al., page 8).
Claim(s) 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Iseda et al. (US 20150247067) in view of Ma et al. (US 2021/0395483) and further, in view of Nakayama et al. (JP 2017152221).
Iseda et al. in view of Ma et al. is relied upon as disclosed above.
Regarding claims 13 and 14, Iseda et al. in view of Ma et al. fails to teach component (B) as claimed.
However, Nakayama et al. teaches a conductive paste composition comprising a silver powder component (A) that is a mixed silver powder comprising flaky silver powder and granular silver powder and epoxy resin component (B) comprising an epoxy resin curing agent (C) is a urea bond-containing modified aliphatic polyamine (See Abstract).
It would have been obvious to one of ordinary skill in the art to include a urea bond-containing modified aliphatic polyamine in the curing agent of Iseda et al. in view of Ma et al. in order to improve stability and low temperature curability (Nakayama et al., pages 4-5).
Claim(s) 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Iseda et al. (US 2015/0247067) in view of Ma et al. (US 2021/0395483) and further, in view of Yamada et al. (CN 109643590).
Iseda et al. in view of Ma et al. is relied upon as disclosed above.
Regarding claims 16 and 17, Iseda et al. in view of Ma et al. fails to teach a metal powder surface-treated as claimed.
However, Yamada et al. teaches a conductive coating, comprising metal particles including silver having a protective surface coating formed from higher fatty acid that is a saturated fatty acid such as myristic acid, palmitic acid etc. (pages 5-6).
It would have been obvious to one of ordinary skill in the art to include a protective surface coating on the metal powder of Iseda et al. in view of Ma et al. in order to inhibit aggregation of the metal particles (Yamada et al., page 6).
Regarding claim 18, Iseda et al. in view of Ma et al. fails to teach component (D) having average particle diameter as claimed.
However, Yamada et al. teaches an average diameter of the metal particles is preferably 1μm to 5μm (page 6).
It would have been obvious to one of ordinary skill in the art to choose an average diameter, including that presently claimed, for the metal particles of Iseda et al. in view of Ma et al. in order to achieve the desired conductivity (Yamada et al., page 6).
Response to Arguments
Applicant's arguments filed 0/8/25/2026 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite “wherein the component (A) contains a monofunctional epoxy resin, the monofunctional epoxy resin comprises at least one selected from the group consisting of aliphatic glycidyl esters and aromatic glycidyl esters, and a content of the monofunctional epoxy resin is 1 to 50% by mass relative to a total content of the component (A)”.
Applicant argues that Iseda fails to aliphatic glycidyl esters or aromatic glycidyl esters.
It is agreed which is why Ma et al. (US 2021/0395483) is used to teach the claimed limitation.
Applicant argues that Iseda requires a polyfunctional epoxy resin and monofunctional and bifunctional epoxy resins are presented in Iseda only as an optional "other epoxy resin".
However, given that the other epoxy resin of Iseda et al. corresponds to component (A) as presently claimed and contains monofunctional epoxy resin and bifunctional epoxy resin, the other epoxy resin of Iseda et al. clearly consists of monofunctional epoxy resin and bifunctional epoxy resin, as presently claimed. In light of the phrase “comprising”, the polyfunctional epoxy resin of Iseda et al. falls under the broader scope of the claim.
Applicant argues that in Iseda's Comparative Examples 1 to 3 where a bifunctional epoxy resin component was used in place of the polyfunctional epoxy resin component and in Iseda's only example employing a glycidyl ester when compared to the wholly polyfunctional resin component A, conductivity is impaired.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). A fair reading of the reference as a whole explicitly discloses the use of monofunctional epoxy resin as an epoxy resin. Therefore, it would have been obvious to one of ordinary skill in the art to use such epoxy resin in the paste of Iseda et al. absent evidence to the contrary.
Applicant argues that a person of ordinary skill in the art reading Iseda would therefore have had no reason to add a monofunctional epoxy resin containing an aliphatic or aromatic glycidyl ester to his composition, and no reason to include such a resin in an amount of 1 to 50% by mass relative to the total content of the epoxy resin.
However, the rejection of record is not adding a monofunctional epoxy resin containing an aliphatic or aromatic glycidyl ester but rather, substituting the phenyl glycidyl ether of Iseda et al. with glycidyl neodecanoate as a matter of substitution of equivalents known for the same purpose.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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