Patent Application 17418369 - CURABLE SILICONE COMPOSITION FOR TRANSFER

Title: CURABLE SILICONE COMPOSITION FOR TRANSFER MOLDING, CURED PRODUCT THEREOF, AND PRODUCTION METHOD THEREOF

Application Information

Invention Title: CURABLE SILICONE COMPOSITION FOR TRANSFER MOLDING, CURED PRODUCT THEREOF, AND PRODUCTION METHOD THEREOF
Application Number: 17418369
Submission Date: 2025-05-15T00:00:00.000Z
Effective Filing Date: 2021-06-25T00:00:00.000Z
Filing Date: 2021-09-28T00:00:00.000Z
National Class: 524
National Sub-Class: 588000
Examiner Employee Number: 98223
Art Unit: 1767
Tech Center: 1700

Rejection Summary

102 Rejections: 0
103 Rejections: 5

Cited Patents

No patents were cited in this rejection.

Office Action Text

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 .

Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/2025, has been entered.

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.

Claims 1, 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (WO2016136243, herein Imaizumi, US20180105692 is used as English equivalent), in the view of Matsumoto (JP2014221915, herein Matsumoto, a machine translation is being used for citation purpose)
Regarding Claim 1, Imaizumi teaches curable granular silicone composition [0007] for transfer molding [0120].
Imaizumi teaches (A) silicone fine particles having a hydrosilylation reactive group and/or radical reactive group [0015]; component (B) a reinforcing filler, white pigment, heat conductive filler, electrically conductive filler, phosphor [0012]; and (C) a curing agent [0015].
Imaizumi further teaches (A1) a resinous organopolysiloxane [0010]; (PhSiO3/2)0.80(Me2ViSiO1/2)0.20 [0125], wherein the vinyl group indicates carbon-carbon double bond in the molecule; RSiO3/2 mol % is 80%, which lies within the claimed range and 270.5 g of 55 mass % toluene solution of resinous organopolysiloxane in a white solid form [0125] which lies within the claimed range.
Imaizumi is silent on content of component (B) is 10 to 30 volume percent of the entire composition. However, Matsumoto teaches thermally conductive fillers [0041] such as zinc oxide in an amount of 10% by volume or more and 85% by volume or less in the entire composition [0042], which overlaps the claimed range. 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).
Imaizumi and Matsumoto are both considered to be analogous to the claimed invention because they are in the same field of silicone composition functional materials system development via the selection of fillers. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to add the teachings of Matsumoto and provide thermally conductive fillers [0041] such as zinc oxide in an amount of 10% by volume or more and 30% by volume or less in the entire composition [0042] into the composition development. Doing so would further achieve the desired thermal property of “to increase the thermal conductivity of the curable resin composition of the present invention”, while maintaining sufficient strength [0042].
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, molecular structures, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., maximum torque value; the loss tangent (tans) expressed by the ratio of stored torque value/lost torque value would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.

Regarding Claim 3, Imaizumi teaches hot meltable silicone fine particles [0134], indicate the hot melt properties.

Regarding Claim 4, Imaizumi teaches curable granular silicone composition [0014]; hot meltable silicone fine particles having a hydrosilylation reactive group [0015]

Regarding Claim 5, Imaizumi teaches (A1) a resinous organopolysiloxane, (A2) a crosslinked organopolysiloxane formed by crosslinking at least one type of organopolysiloxane, (A3) a block copolymer formed from a resinous organosiloxane block and a linear organosiloxane block. or silicone fine particles formed from a mixture of two types or more thereof. [0023]

Regard Claim 6, Imaizumi teaches (A1) a resinous organopolysiloxane [0010]; (PhSiO3/2)0.80(Me2ViSiO1/2)0.20 [0125], wherein phenyl group indicates aryl group having 6 carbon atoms; repeating units (PhSiO3/2)0.80

Regarding Claim 7, Imaizumi teaches contain a heat conductive filler or an electrically conductive filler in order to provide heat conductivity or electrical conductivity to the cured product [0086]

Regarding Claim 8, Imaizumi teaches pellet form [0014]

Regarding Claim 9, Imaizumi teaches transfer molding [0111]

Regarding Claims 10, 11, 12, Imaizumi teaches optical semiconductor device comprising the cured silicone composition [0085]

Regarding Claim 13, Imaizumi teaches stirring was performed for 1 minute at room temperature (25° C.) to prepare a uniform and white curable granular silicone composition (1) [0134], which lies in the temperature range.

Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (WO2016136243, herein Imaizumi, US20180105692 is used as English equivalent), in the view of Matsumoto (JP2014221915, herein Matsumoto, a machine translation is being used for citation purpose) as applied in claim 1 above, and in the further view of Azechi (US20020132891, herein Azechi)
Regarding Claim 14, Imaizumi and Matsumoto collectively teach the composition of claim 1 as shown above.
Imaizumi is silent on the steps of molding a cured product, however, Azechi teaches transfer molding at temperature of about 60 to 200° C via injection molding [0069], where the mold halves were clamped [0096] and curing the silicone rubber adhesive composition [0072]Imaizumi and Azechi are both considered to be analogous to the claimed invention because they are in the same field of silicone composition functional materials system development via the molding process. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to incorporate the teachings of Azechi and provide wherein said transfer molding; temperature of about 60 to 200° C; injection molding. [0069] mold halves were clamped [0096]; curing the silicone rubber adhesive composition [0072]. Doing so would further optimize the process by specifying the temperature, molding method and curing step, owing to any desired molding technique may be selected depending on the viscosity of the mixture or composition.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).

Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (WO2016136243, herein Imaizumi, US20180105692 is used as English equivalent), in the view of Matsumoto (JP2014221915, herein Matsumoto, a machine translation is being used for citation purpose) as applied in claim 1 above, and in the further view of Yamazaki (WO2018030287, herein Yamazaki, US20190177488 is used as English equivalent).
Regarding Claims 15, 16, Imaizumi and Matsumoto collectively teach the composition of claim 1 a shown above.
Imaizumi is silent on the method for molding a cured product. However, Yamazaki teaches performing overmolding and underfilling of the semiconductor elements with the cured product [0170]; and acquire the cured product by transfer molding [0171] Yamazaki further teaches performing overmolding so as to fill a gap between the semiconductor elements with the cured product. [0170] and cured product; semiconductor devices mounted on the flexible circuit board [0179]
Imaizumi and Yamazaki are both considered to be analogous to the claimed invention because they are in the same field of silicone composition functional materials system development toward semiconductor application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to incorporate the teachings of Yamazaki, i.e., performing overmolding and underfilling of the semiconductor elements with the cured product [0170]; and acquire the cured product by transfer molding [0171] ; performing overmolding [0170]; cured product; semiconductor devices mounted on the flexible circuit board [0179]. Doing so would further lead to the device improvement owing to the as-applied molding method of cured product [0165] selection based on the composition which has excellent gap fill properties when melted, and the cured product has excellent flexibility from room temperature to high temperatures [0170] which can further lead to the product development of used as semiconductor device members, including sealing members for semiconductor elements and IC chips, light reflection members for optical semiconductor devices, and adhesives and coupling members for semiconductor devices. [0178]

Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (WO2016136243, herein Imaizumi, US20180105692 is used as English equivalent), in the view of Matsumoto (JP2014221915, herein Matsumoto, a machine translation is being used for citation purpose) as applied in claim1 as set forth above, and in the further view of Yoshihiro (JP2018002970, herein Yoshihiro, a machine translation is being used for citation purpose).
Regarding Claims 17-20, Imaizumi and Matsumoto collectively teach the composition of claim 1 as shown above.
Imaizumi is silent on inorganic filler dimension. However, Yoshihiro teaches “titanium dioxide, 0.05 to 5.0 μm, more preferably 1.0 μm or less”, which lie the claimed range, and excluded the existence of particles size larger than 5.0 μm.
Yoshihiro further teaches the particle sizes combination “inorganic fillers
having different particle size ranges may be combined. In such a case, it is preferable to use a combination of spherical silica having a fine particle size range of 0.1 to 3 μm” [0059]
Imaizumi and Yoshihiro are both considered to be analogous to the claimed invention because they are in the same field of silicone composition functional materials system development via the selection of fillers. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to add the teachings of Yoshihiro and provide filler dimension into the composition development. Doing so would further achieve the desired property of “From the viewpoint of increasing the fluidity of the resulting composition” [0059] as taught by Yoshihiro.

Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi (WO2016136243, herein Imaizumi, US20180105692 is used as English equivalent), Matsumoto (JP2014221915, herein Matsumoto, a machine translation is being used for citation purpose) and Yoshihiro (JP2018002970, herein Yoshihiro, a machine translation is being used for citation purpose) as applied in claim 19 as set forth above, and in the further view of Yamazaki (WO2018030288, herein Yamazaki, US20190169398 is used as English equivalent).
Regarding Claim 21, Imaizumi, Matsumoto and Yoshihiro collectively teach the composition of claim 19 as shown above.
Imaizumi is silent on polysiloxane microparticle dimension. However, Yamazaki teaches “the average primary particle diameter thereof is 1 to 10 μm, and such true-spherical silicone fine particles” [0015], which overlaps the claimed range.
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).
Imaizumi and Yamazaki are both considered to be analogous to the claimed invention because they are in the same field of silicone composition functional materials system development via the selection of silicone entity. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Imaizumi to add the teachings of Yamazaki and provide the specified dimension of the silicone particle into the composition development. Doing so would further achieve the desired property of “the viewpoints of melting characteristics of the hard granular compound, the average linear expansion coefficient of the cured product, efficiency in manufacturing and handling workability of the composition” [0143] as taught by Yamazaki.

Response to Arguments
Applicant's arguments filed 3/18/2025 have been fully considered but they are not persuasive, because:
In response to the applicant’s argument “Examiner is giving no patentable weight to the following recitations in claim 1: (i) transfer molding; (ii) the maximum torque measured from a molding temperature of room temperature through 200°C using a moving die rheometer (MDR) is less than 50 dN-m; or (iii) the loss tangent (tans) expressed by the ratio of stored torque value/lost torque value is less than 0.2.”, this argument is not persuasive.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, molecular structures, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., maximum torque value; the loss tangent (tans) expressed by the ratio of stored torque value/lost torque value would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.

In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, Imaizumi teaches “component (B) is preferably a reinforcing filler, white pigment, heat conductive filler” [0012] matches the “thermally conductive filler” [Instant App. P11; 0135]

In response to the applicant’s argument of the “surprising and unexpected results”, the argument is not persuasive.
When Examples 1-4 and Comparative examples 1-7 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 1 is open to the content of component (B) is 10 to 30 volume% of the entire composition. However, Comparative Examples 1, 2, 5-7 include component (B) outside the claimed range. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
The remaining Examples 1-4 falling within the scope of the claims illustrate amounts of component (B) is 10 to 30 volume% of the entire composition. Hence, these ranges are not reasonably commensurate in scope with the claimed ranges. Additionally, the examples employ a limited range of materials that are not reasonably commensurate with component (B). Comparative Examples 1, 2 and 5-7 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).

Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767