Ex parte TSUKAGOSHI et al. - Page 4


                 Appeal No. 94-3121                                                                                                                    
                 Application 07/853,868                                                                                                                

                          The examiner contends that Fujiwara et al. supplies epoxy resin containing adhesive                                          
                 compositions which contain a second resin and a curing agent, and that Bentov et al. teaches that                                     
                 the curing agent can be encapsulated.  The adhesive compositions of Fujiwara et al. comprise a                                        
                 phenoxy resin as the principal component which requires a cross-linking agent, a low molecular                                        
                 epoxy resin and a cross-linking agent for the phenoxy and epoxy resins, which cross linking agents                                    
                 can be the same (e.g., col. 2, line 37, to col. 4, line 57, and especially col. 2, lines 53-56, col. 3,                               
                 lines 18-21 and 45-53).  These adhesive compositions are used by Fujiwara et al. to “laminate a                                       
                 metal foil on an epoxy resin impregnated fiber board” to form a printed circuit board and further                                     
                 “may be used as a structural adhesives” where “excellent bond strength at high temperatures is                                        
                 required” (col. 2, lines 16-25).  In the prior use, a bonding sheet is prepared wherein a semicured                                   
                 sheet or “film form” of the adhesive is inserted “between a metal foil and a prepreg and heat and                                     
                 pressurize the overall structure to provide a laminated printed circuit board” in which the adhesive                                  
                 “if heated, will become a liquid, then a gel and finally fully polymerized” (col. 2, lines 25-34).                                    
                 Fujiwara et al. teach that the “usual conditions for laminating” is a “pressure of 40 to 60 kg./cm2                                   
                 and at a temperature of 160 to 180° C for one hour” (col. 4, lines 72-75).  Bentov et al., in                                         
                 disclosing an encapsulation method, teaches the use thereof in “packaging liquid curing agents for                                    
                 synthetic resins to prevent reaction between the curing agent and resin carrier or the like through                                   
                 which they are dispersed, until such time as it is desired to initiate the curing or hardening                                        
                 reaction” (col. 1. lines 15-20).                                                                                                      
                          It is well settled that the determination of whether one or ordinary skill in this art would                                 
                 have combined the teachings of applied prior art to obtain the claimed invention must be based on                                     
                 what the references would have reasonably suggested to that person or on knowledge within the                                         
                 art area.  See, e.g., Fine, supra.  Based on our consideration of the scope of the teachings of                                       
                 Hatada, Schmidt et al., Fujiwara et al. and Bentov et al. as combined by the examiner, we find no                                     
                 reasonable direction therein, either separately or combined, which would have motivated one of                                        
                 ordinary skill in this art to modify the processes of Hatada and Schmidt et al. by replacing the                                      
                 epoxy or other adhesive resins of Hatada or the epoxy resin of Schmidt et al., which are used                                         
                 without a curing agent, with the phenoxy resin based “structural” adhesive composition disclosed                                      
                 in Fujiwara et al. which further contains a low molecular epoxy resin and a curing agent, after the                                   


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