Ex Parte Hayakawa et al - Page 3



          Appeal No.  2006-0977                                                       
          Application 10/250,605                                                      

          by appellants.  Accordingly, we will adopt the examiner’s reasoning         
          as our own in sustaining the rejections of record, and we add the           
          following for emphasis only.                                                
               There is no dispute that Japanese ‘306, like appellants,               
          discloses an epoxy resin composition for semiconductor encapsulation        
          which comprises a biphenol epoxy resin, a hardener blend of a phenol        
          hardener and a thiodiphenol hardener, such as bis(4-hydroxyphenyl)          
          sulfide recited in appellants’ claim 5, a polyhydric phenol like the        
          claimed phenol aralkyl resin, an inorganic filler and a curing              
          accelerator.  The only deficiency of Japanese ‘306 with respect to          
          the components of the claimed epoxy resin composition is that the           
          reference does not expressly disclose the claimed 3,3',5,5'-tetra-          
          methyl-4,4'-biphenol epoxy resin.  However, as acknowledged by              
          appellants, Japanese ‘306 “states that all epoxy resins may be used         
          in its composition and lists several examples which include ‘... a          
          bis-hydroxy biphenyl, its alkylation object’” (page 4 of brief, last        
          paragraph).  Accordingly, since Japanese ‘349 admittedly discloses          
          an epoxy resin composition for semiconductor encapsulation that             
          includes the presently claimed 3,3',5,5'-tetramethyl-4,4'-biphenol          
          epoxy resin, we have no doubt that one of ordinary skill in the art         
          would have found it obvious to select the particular biphenol epoxy         
          resin disclosed by Japanese ‘349 as the biphenol epoxy resin for the        
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