Prosecution Insights
Last updated: April 19, 2026
Application No. 17/498,813

Dielectric Film-Forming Composition

Non-Final OA §102§103
Filed
Oct 12, 2021
Examiner
MCCULLEY, MEGAN CASSANDRA
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Fujifilm Electronic Materials U S A Inc.
OA Round
3 (Non-Final)
58%
Grant Probability
Moderate
3-4
OA Rounds
3y 5m
To Grant
75%
With Interview

Examiner Intelligence

Grants 58% of resolved cases
58%
Career Allow Rate
424 granted / 727 resolved
-6.7% vs TC avg
Strong +17% interview lift
Without
With
+16.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
48 currently pending
Career history
775
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
53.7%
+13.7% vs TC avg
§102
13.5%
-26.5% vs TC avg
§112
24.6%
-15.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 727 resolved cases

Office Action

§102 §103
DETAILED ACTION 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 4, 2026 has been entered. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1-3, 5, 6, 9, 11, 13, and 15-19 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Cooray (US 2002/0131247). Regarding claim 1: Cooray teaches a dielectric (abstract) film-forming composition (para. 12) comprising a cyanate ester compound comprising at least two cyanate groups (para. 14) and a polyimide resin (para. 14), which would be either fully imidized, or if more imidization is possible, would then be a polyimide precursor, i.e. able to form a polyimide. Cooray also teaches an epoxy resin, which has epoxy reactive functional groups that can crosslink/react with the cyanate ester compound (abstract). Regarding claims 2, 3, and 5: Cooray teaches the cyanate ester can be BA-230S (para. 20), which has the structure: PNG media_image1.png 114 304 media_image1.png Greyscale which is Structure (I) where m is 2 and A is a divalent organic group comprising a substituted aromatic group. This is also Structure (II) where R is hydrogen and X is a substituted or unsubstituted C1-C10 alkylene. This compound is 2-bis(4-cyanatophenyl)propane. Regarding claim 6: Cooray teaches at least two cyanate ester compounds/mixtures of cyanate esters (para. 32). Regarding claim 9: Cooray teaches a solvent 1,3-dimethyl-2-imidazolidinone (example 8, para. 62). Regarding claim 11: Cooray teaches the epoxy resin has two or more epoxy groups (para. 19). Regarding claim 13: Cooray teaches a catalyst (para. 34). Regarding claim 15: Cooray teaches a dry film (para. 37) comprising a carrier substrate/circuit board and a dielectric film on the carrier substrate (para. 37). Regarding claim 16: Cooray teaches a process for depositing a metal layer comprising depositing the composition on a substrate (para. 37), exposing to heat (para. 37), the film is patterned with openings/via holes are created (para. 37) and depositing a metal layer in at least one opening/via hole (para. 38). Regarding claim 17: Cooray teaches a process of forming a dielectric film/layer on a substrate/circuit board (para. 37) comprising providing a substrate with copper metal wire structures that form a network of lines and interconnects on the substrate/Cu-wiring fine-patterned circuit board (para.37), depositing the composition to form a dielectric film/layer (para. 37) and exposing the film to heat (para. 37). Regarding claim 18: Cooray teaches a three-dimensional object (fig. 1). Regarding claim 19: Cooray teaches the dielectric film in two stacks (fig. 1, reference number 3 is on either side of the core). 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 7, 8, 10, 12, 14, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Cooray (US 2002/0131247) as applied to claims 1, 9, 11, and 13 set forth above. Regarding claim 7: Cooray teaches 7 grams cyanate ester in a composition totaling 84 grams (example 8, para. 62). There is 40 ml of the solvent 1,3-dimethyl-2-imidazolidinone, which has a density of 1.056 g/ml, meaning there is 40x1.056=42 g solvent. This converts to 7/84 = 8.3 wt% cyanate ester, 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 (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of cyanate ester and would have been motivated to do so since Cooray teaches it is an acceptable amount to achieve the disclosed invention. Regarding claim 8: Cooray teaches 32 grams polyimide in the composition that has 84 total grams (example 8, para. 62). This is 38 wt% polyimide, 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 (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of polyimide and would have been motivated to do so since Cooray teaches it is an acceptable amount to achieve the disclosed invention. Regarding claim 10: Cooray teaches 40 ml of the solvent 1,3-dimethyl-2-imidazolidinone, which has a density of 1.056 g/ml, meaning there is 40x1.056=42 g solvent (para. 62). This converts to 42/84 = 50 wt% of the solvent. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of solvent and would have been motivated to do so since Cooray teaches it is an acceptable amount to achieve the disclosed invention. Regarding claim 12: Cooray teaches example 4, which has 25 parts of an alicyclic epoxy resin out of 269.76 total parts, meaning there is 24 wt% of this crosslinking agent in the total weight of the 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 (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of epoxy and would have been motivated to do so since Cooray teaches it is an acceptable amount to achieve the disclosed invention. Regarding claim 14: Cooray teaches between 100 parts catalyst per 1 million parts resin system (para. 34), which converts to 0.01 wt% to 3 parts catalyst per 84 parts resin system (para. 62), which converts to 3.6 wt%. This overlaps the claimed range. At the time of the invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of catalyst and would have been motivated to do so to achieve the desired reaction speed. Regarding claims 23 and 24: Cooray teaches the composition as set forth above. The claim limitations use the words “can be” and “can form”, which indicates intended use of the composition, for instance the composition is capable of these limitations. Since the claimed components are present, the composition “can be” formulated to form an interpenetrating network via cyclizing or crosslinking, and “can be” formulated to have a glass transition temperature above 260 °C, such as by adding a higher glass transition temperature resin to the mixture. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cooray (US 2002/0131247) as applied to claim 1 set forth above and in view of Kern et al., “Polymers with Pendant Cyanate Ester Groups: Synthesis, Thermal Curing and Photocrosslinking”, European Polymer Journal, Vol. 34, Issue 7, 1998. Regarding claim 4: Cooray teaches the basic claimed composition as set forth above. Not disclosed is the cyanate ester compound of structure (III). However, Kern et al. teaches a polymer made of 4-vinylphenyl cyanate monomers (abstract), which would result in a polymer were n1 is at least 2. Cooray and Kern et al. are analogous art since they are both concerned with the same field of endeavor, namely cyanate esters for electronics. At the time of the invention a person having ordinary skill in the art would have found it obvious to use the cyanate ester of Kern et al. in the composition of Cooray and would have been motivated to do so if curing via irradiation with 254 nm UV light is desired. Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Cooray (US 2002/0131247) as applied to claim 1 set forth above in view of Ibbitson et al. (US 2005/0112369). Regarding claims 20 and 21: Cooray teaches the basic claimed composition as set forth above. Not disclosed is a copper passivation reagent that is a triazole or a tetrazole. However, Ibbitson et al. teaches a similar composition comprising benzotriazole (para. 37). Cooray and Ibbitson et al. are analogous art since they are both concerned with the same field of endeavor, namely dielectric materials. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to add the triazole of Ibbitson et al. to the composition of Cooray and would have been motivated to do so since Ibbitson et al. teaches it is a corrosion inhibitor (para. 6). Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Cooray (US 2002/0131247) as applied to claim 13 set forth above and in view of Das et al. (U.S. Pat. 9,873,761). Regarding claim 22: Cooray teaches the basic claimed composition as set forth above. Not disclosed is the photoinitiator. However, Das et al. teaches a similar composition comprising a photoinitiator (abstract). Cooray and Das et al. are analogous art since the are both concerned with the same field of endeavor, namely low dielectric materials. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the photo initiator of Das et al. in the composition of Cooray and would have been motivated to do so that the composition is capable of curing with irradiation. Response to Arguments Applicant's arguments filed February 4, 2026 have been fully considered but they are not persuasive. A) Applicant’s arguments that Cooray teaches the cyanate ester is for reacting with the epoxy resin, while in the instant claims the reactive functional component is a crosslinker is not persuasive. While Cooray teaches the cyanate ester reacts with the epoxy resin, it is a matter of semantics whether a person having ordinary skill in the art calls the epoxy resin or the cyanate ester as the crosslinker. The reaction is the same between the functional groups and the structure of the resultant product is the same. B) Applicant’s argument that Cooray teaches a single network and not an interpenetrating network is not persuasive. The claim states that the composition can be cyclized and/or crosslinked to form an interpenetrating network. Since the claimed components are present, the composition “can be” formulated to form an interpenetrating network via cyclizing or crosslinking, such as by adding additional components. C) Applicant’s argument that Cooray does not teach claim 24 is not persuasive. The claim states that it “can form” a film with the glass transition temperature claimed. Since the claimed components are present, the composition “can be” formulated to have a glass transition temperature above 260 °C, such as by adding a higher glass transition temperature resin to the mixture. D) Applicant’s argument that Cooray does not teach photosensitive examples is not germane in view of the combination with Das et al. Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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Prosecution Timeline

Oct 12, 2021
Application Filed
Sep 20, 2024
Non-Final Rejection — §102, §103
Jan 17, 2025
Response Filed
Apr 09, 2025
Final Rejection — §102, §103
Jul 14, 2025
Response after Non-Final Action
Sep 11, 2025
Notice of Allowance
Feb 04, 2026
Request for Continued Examination
Feb 08, 2026
Response after Non-Final Action
Feb 21, 2026
Non-Final Rejection — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12600814
Electric Insulation Material and/or Impregnation Resin for a Wrapping Tape Insulation for a Medium- and/or High-Voltage Machine
2y 5m to grant Granted Apr 14, 2026
Patent 12583965
POLYMERIZATIONS IN SUPERCRITICAL CARBON DIOXIDE, PRODUCTS OF SAME, AND USES THEREOF
2y 5m to grant Granted Mar 24, 2026
Patent 12577346
BENZOXAZINE COMPOUND-CONTAINING COMPOSITION, CURABLE RESIN COMPOSITION, AND CURED PRODUCT THEREOF
2y 5m to grant Granted Mar 17, 2026
Patent 12540254
Epoxy Compositions and Methods of Use
2y 5m to grant Granted Feb 03, 2026
Patent 12540249
CATIONIC ELECTRODEPOSITION COATING COMPOSITION
2y 5m to grant Granted Feb 03, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
58%
Grant Probability
75%
With Interview (+16.6%)
3y 5m
Median Time to Grant
High
PTA Risk
Based on 727 resolved cases by this examiner. Grant probability derived from career allow rate.

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