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 9 is objected to because of the following informalities:
Claim 9, line 2, “a high-frequency” should read “the high frequency”
Appropriate correction is required.
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.
Claims 1-14 are 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 1, lines 3-4, recites “an inorganic filler comprising at least one of silica particles and alumina particles, and calcium titanate particles”. It is unclear if this limitations requires the inorganic filler to comprise calcium titanate and one or both of (a) silica and (b) alumina, or if the inorganic filler comprises one or both of (a) calcium titanate and (b) a combination of silica and alumina. For purposes of examination, Examiner assumes the claim requires the inorganic filler to comprise calcium titanate and one or both of (a) silica and (b) alumina.
Claims 2-14 are rejected as dependent on rejected Claim 1.
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, 3-5, and 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-8, and 12-16 of co-pending Application No. 18/852,501 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claims 1 and 13, co-pending ‘501 claims a resin composition for molding, comprising: a curable resin; an inorganic filler, comprising one of silica particles and alumina particles, and calcium titanate particles (Claim 1), further comprising a stress relaxation agent (Claim 7), wherein the stress relaxation agent comprises at least one of an indene-styrene-coumarone copolymer and a triphenylphosphine oxide (Claim 8).
While claim 1 of co-pending ‘501 discloses amount of calcium titanate particles not recited in present claim 1, it is clear that the specific resin composition of co-pending ‘501 falls within the broader resin composition of the present claims, and therefore the claims are not considered patentably distinct.
Regarding Claim 3, co-pending ‘501 further claims the curable resin comprises an epoxy resin, and the resin composition for molding further comprises a curing agent (Claim 2).
Regarding Claim 4, co-pending ‘501 further claims the curing agent comprises an active ester compound (Claim 3).
Regarding Claim 5, co-pending ‘501 further claims the curing agent further comprises a phenol curing agent (Claim 4).
Regarding Claim 7, co-pending ‘501 further claims a content ratio of the entirety of the inorganic filler is more than 60% by volume with respect to the entirety of the resin composition for molding (Claim 1).
Regarding Claim 8, co-pending ‘501 further claims the resin composition for molding is used in a high frequency device (Claim 12).
Regarding Claim 9, co-pending ‘501 further claims the resin composition for molding is used to seal an electronic component in the high frequency device (Claim 13).
Regarding Claim 10, co-pending ‘501 further claims the resin composition for molding is used in an antenna-in-package (Claim 14).
Regarding Claim 11, co-pending ‘501 further claims an electronic component device, comprising: a support member; an electronic component disposed on the support member, and the resin composition for molding sealing the electronic component (Claim 15).
Regarding Claim 12, co-pending ‘501 further claims the electronic component comprises an antenna (Claim 16).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaura et al. (US 2023/0092703 A1) in view of Utsuno et al. (JP 2020/122115 A).
Regarding Claim 1, Yamaura discloses a resin composition for molding comprising an epoxy resin (i.e. a curable resin) and an inorganic filler comprising specific filler which is calcium titanate particles (paras 0032, 0082) and one or both of silica particles and alumina particles (para 0096). The resin composition may further comprise a stress relaxation agent, such as thermoplastic elastomer based on styrene (para 0129).
Yamaura does not disclose the type of stress relaxation agent as claimed.
Utsuno discloses a high-frequency sealing material resin composition comprising an epoxy resin and an inorganic filler (para 0015) including silica and alumina (para 0041). The resin composition may further comprise a coumarone resin which is a copolymer of coumarone, indene, and styrene; this is a stress relaxation agent which decreases thermal elastic modulus of the cured product, reducing elasticity, and improves reflow resistance (paras 0060-0062, general formula (6)).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yamaura to incorporate the teachings of Utsuno and produce the resin composition of Yamaura using the coumarone resin of Utsuno, which is a copolymer of coumarone, indene, and styrene, as the stress relaxation agent. Doing so would decrease thermal elastic modulus of the cured product, reducing elasticity, and improve reflow resistance.
Regarding Claim 2, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above. Yamaura further discloses the specific filler (i.e. calcium titanate) is 30-60% by volume with respect to the total inorganic filler (para 0084).
Regarding Claim 3, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above, including the resin composition comprising epoxy resin (Yamaura, para 0032). Yamaura further discloses the resin composition comprises a curing agent (para 0032).
Regarding Claim 4, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 3 above. Yamaura further discloses the curing agent includes an active ester compound (para 0046).
Regarding Claim 5, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 3 above. Yamaura further discloses the curing agent may comprise a phenol curing agent (para 0066).
Regarding Claim 6, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 5 above. Yamaura further discloses the phenol curing agent may comprise a melamine-modified phenol resin (para 0067).
Regarding Claim 7, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above. Yamaura further discloses the total content of inorganic fillers is 40-90% by volume of the entire resin composition (para 0106).
Regarding Claims 8, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above. Yamaura further discloses the resin composition is used for production of a high frequency device (para 0141)
Regarding Claim 9, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 8 above. Yamaura further discloses the resin composition is used for sealing an electronic component of a high-frequency device (para 0143-0144).
Regarding Claim 10, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above. Yamaura further discloses the resin composition is used for production of an antenna-in-package (para 0142).
Regarding Claim 11, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above. Yamaura further discloses an electronic component apparatus including a support member, an electronic component placed on the support member, and a cured product of the resin composition for molding which seals the electronic component (para 0143).
Regarding Claim 12, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 11 above. Yamaura further discloses the electronic component may be an antenna (para 0144).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaura in view of Utsuno as applied to claim 1 above, and further in view of Sato et al. (US 2021/0253783 A1).
Regarding Claim 13, Yamaura in view of Utsuno discloses all the limitations of the present invention according to Claim 1 above, including the use of a copolymer of coumarone, indene, and styrene as a stress relaxation agent.
Yamaura further discloses the resin composition comprises a flame retardant such as an organic compound comprising phosphorus (para 0126).
Yamaura in view of Utsuno does not disclose the stress relaxer comprising triarylphosphine oxide as claimed.
Sato discloses an epoxy resin composition that is a sealing material and a molding material for electronic components (para 0001), comprising epoxy resin, inorganic filler such as silica and alumina (para 0080), other resins such as coumarone indene resins (para 0081), and a phosphorous compound such as triphenylphosphine oxide (para 0031). Use of this phosphorus-containing epoxy resin minimizes the modulus of elasticity of the cured product while improving flame retardancy (para 0048).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yamaura in view of Utsuno to incorporate the teachings of Sato and produce the resin composition of Yamaura using the triphenylphosphine oxide of Sato as the flame retardant. Doing so would minimize the modulus of elasticity of the cured product while improving flame retardancy, and the triphenylphosphine oxide would necessarily act as a stress relaxer as claimed.
Regarding Claim 14, Yamaura in view of Utsuno and Sato discloses all the limitations of the present invention according to Claim 13 above, including the use of a copolymer of coumarone, indene, and styrene as a stress relaxation agent and the use of triphenylphosphine oxide of as a flame retardant.
Yamaura further discloses the amount of flame retardant (i.e. triphenylphosphine oxide) is 1 part by mass to 30 parts by mass based on 100 parts by mass of resin components (para 0127), and the amount of stress relaxation agent (i.e. copolymer of coumarone, indene, and styrene) is 1 part by mass to 30 parts by mass based on 100 parts by mass of resin components (para 0131).
Therefore the ratio of indene-styrene-coumarone copolymer: triphenylphosphine oxide is 1:30 to 30:1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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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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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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