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 Rejections - 35 USC § 112
1. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
2. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Independent Claim 1 and its dependent Claims 2-3 and 5-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection is not in response to the amended new positive limitation of: “the crosslinking agent (B) comprises at least two groups each represented by formula (b1): -RB1-O-RB2, wherein RB1 is an alkanedivl group having 1 to 10 carbon atoms and RB2 is a hydrogen atom or an alkyl group having 1 to 10 carbon atoms.” That limitation appears to have proper support in the specification and is not at issue with the present 112 rejections. Instead, this rejection relates to the negative limitation that directly follows it, i.e.: “and the photosensitive resin composition does not comprise a crosslinking agent other than the crosslinking agent which comprises at least two groups each represented by formula (b1).” Herein, it is important to note the difference between “crosslinking agent (B)” of the present application, subject of the new positive limitation, and all conceivable crosslinking agents, subject of the new negative limitation. All references to a crosslinking agent of the present application are as “a crosslinking agent (B).” This is important, because independent Claim 1 of the present application limits a composition which is an open-ended limitation, i.e. using the language of “comprising,” meaning that the composition of the present application could comprise essentially anything that doesn’t render the composition of the present application inoperable for its intended purpose. Included in the open-ended nature of the present application’s independent composition claim, is the potential for multiple of any of the named components of the present application’s, e.g. polymers, photocation generators, or, indeed, crosslinking agents. The specification and original claims of the present application do not disclose all conceivable crosslinking agents. Prior art occasionally will disclose that any functional crosslinking agent is within the scope of a patent application, See: US 2002/0042020 A1 Paragraph [0048], but the present application does not have a similar disclosure. What the present application discloses are examples of how the crosslinking agent (B) of the present application functions in Paragraph [0059] or examples of the types of chemical structures of the crosslinking agent (B) in Paragraph [0060]. There may be proper support to limit the crosslinking agent (B) having the structure of formula (b1) of the present application from the other possible chemical structures of the crosslinking agent (B) of the present application in Paragraph [0060], e.g. a crosslinking agent having at least two oxetane rings, but there is not proper support for the new negative limitation. Thus, Applicant has not conveyed to a person of ordinary skill in the art that the they had possessed the claimed subject matter as a whole at the time of filing.
4. 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.
5. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 1 recites the broad recitation of a “photosensitive resin composition comprising . . . a crosslinking agent (B),” and the claim also recites “the photosensitive resin composition does not comprise a crosslinking agent other than the crosslinking agent which comprises at least two groups each represented by formula (b1)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Herein, Applicant claims both a broad composition comprising essentially an infinite number of components, due to the open-ended claim language, including multiples of each of the limited components, i.e. polymers other than polymer (A) of the present application, photocation generators other than photocation generator (C) of the present application, or, indeed, crosslinking agents other than crosslinking agent (B) of the present application. At the same time, said claim limits unnamed other crosslinking agents to only those within the scope of crosslinking agent (B) of the present application. This creates confusion as to what is and what is not within the scope of Claim 1 of the present application.
Response to Arguments
6. Applicant’s arguments, see page 6, line 20, filed 14 March 2025, with respect to the rejection
of Claims 1, 5-11, and 15-16 under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai; Claims 2-3 under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai, in further view of Bi et al. (Chinese Patent Publication No. CN 105061754 A), hereinafter Bi; Claims 12-14 under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai, in view of Hifumi et al. (United States Patent Publication No. US 20190055357 A1), hereinafter Hifumi; have been fully considered but they are not persuasive. Applicant argues that the prior art (Nakai) fails to teach the amended new limitation further limiting the crosslinking agent wherein the crosslinking agent comprises at least two groups of formula (b1) of the present application and further limiting the crosslinking agent to wherein no crosslinking agent is present in the composition which does not comprise at least two groups of formula (b1) of the present application. The prior Office Action in Paragraph #7 states: “Nakai teaches (Paragraphs [0210-0243]) a crosslinking agent.” The exemplary crosslinking agents of the cited paragraphs of Nakai appear to all comprise at least two groups of formula (b1) of the present application. See below the exemplary crosslinking agents of Paragraphs [0223-0225 and 0232] of Nakai:
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It appears all of the exemplary crosslinking agents of the prior art (Nakai) appear to have at least two ether groups within the scope of the limitations of the claim. Furthermore, from the cited paragraphs of Nakai, Paragraph [0243] of Nakai states: “These crosslinking agents may be used alone or in combination of two or more thereof.” Thus, Nakai teaches any of the aforementioned exemplary crosslinking agents of Nakai used alone as a crosslinking agent and thus do not further comprise a crosslinking agent with fewer than two groups of formula (b1) of the present application. Applicant further argues that the benzoxazine compound of the prior art is both within the scope of an undefined “crosslinking agent” but not within the scope of a crosslinking agent (B) of the present application. Neither the present application nor the prior art describe the benzoxazine compound of the prior art as a “crosslinking agent.” The list of exemplary chemical structures of the crosslinking agent (B) of the present application in Paragraph [0060] of the present application does not include the benzoxazine of the prior art, JP 2011-075987 A – Nakai. Indeed, the prior art has separate sections of its specification teaching both crosslinking agents and the benzoxazine compound. Nor has the present application defined what is within the scope of the term “crosslinking agent” separate from the “crosslinking agent (B)” disclosed by the present application. Furthermore, this limitation has above been rejected under both 35 U.S.C. 112(a) and 35 U.S.C. 112(b). Thus, the rejection of record is maintained.
Claim Rejections - 35 USC § 103
7. 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:
8. 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.
9. Claims 1, 5-11, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai.
10. Regarding Claims 1, 5-11, and 15-16, Nakai teaches (Paragraphs [0040-0045 and 0057-0065], specifically dihalogenated aromatic monomers (b-30) to (b-35) and (b-37) to (b-38) of Paragraph [0045] and monomers (a-10), (a-15), (a-22), (a-24), (a-35), (a-43), (a-49), (a-55), (a-60), and (a-64) of Paragraphs [0062-0064]) a polymer comprising a structural unit represented by Formula (a1) of the present application. Nakai teaches (Paragraphs [0040-0045 and 0057-0065], specifically dihalogenated aromatic monomers (b-30) to (b-35) and (b-37) to (b-38) of Paragraph [0045] and monomers (a-9), (a-23), (a-38), and (a-61) of Paragraphs [0062-0064]) a polymer comprising a structural unit represented by Formula (a2) of the present application. Nakai teaches (Paragraphs [0040-0045, 0057-0065, and 0285-0287], specifically dihalogenated aromatic monomers (b-30) to (b-35) and (b-37) to (b-38) of Paragraph [0045], monomers (a-10), (a-15), (a-17), (a-21), (a-22), (a-24), (a-30), (a-34), (a-35), (a-43), (a-48), (a-49), (a-54), (a-53), (a-54), (a-55), (a-60), and (a-64) of Paragraphs [0062-0064], and Experimental Example Polymer (a-3) of Paragraphs [0285-0287]) a polymer comprising a structural unit represented by Formula (a3) of the present application. Nakai teaches (Paragraph [0082]) the combination of two or more kinds of monomers taught therein. Nakai teaches (Paragraphs [0210-0243]) a crosslinking agent. Nakai teaches (Paragraphs [0210-0243]) the crosslinking agent comprises at least two groups each represented by formula (b1) of the present application. Nakai teaches (Paragraphs [0210-0243]) the photosensitive resin composition does not comprise a crosslinking agent, such as those comprising at least two oxetane rings, at least two oxirane rings, at least two oxazoline rings, at least two isocyanate groups (including blocked isocyanate), or at least two maleimide groups described as exemplary chemical groups comprising the crosslinking agent (B) of the present application, other than the crosslinking agent which comprises at least two groups each represented by formula (b1).” Nakai teaches (Paragraphs [0127-0187]) a photocation generator, therein a photoacid generator. Nakai teaches (Paragraph [0270]) forming a coating film on a substrate by applying the photosensitive resin composition. Nakai teaches (Paragraph [0271]) selectively exposing the coating film. Nakai teaches (Paragraph [0273]) developing the coating film after selectively exposing of the coating film with a developing solution comprising an organic solvent. Nakai teaches (Paragraph [0275]) a resin film having a pattern. Nakai teaches (Paragraphs [0269-0270]) a semiconductor circuit substrate, therein a semiconductor substrate used for a semiconductor device, comprising the resin film having a pattern. Nakai teaches (Paragraph [0082]) a polymer comprising a combination of a structural units represented by Formulae (a1), (a2), and (a3) of the present application and thus, at minimum, teaches equal amounts of a structural units represented by Formulae (a1), (a2), and (a3) of the present application, i.e. 33 mol% of structural units represented by Formulae (a1), (a2), and (a3) of the present application with respect to 100 mol% of all the structural units of the polymer. Nakai teaches (Paragraphs [0082, 0084, and 0091-0093]) a content ratio of the structural unit represented by formula (a1) of the present application in the polymer is 50 mol% or more, with respect to 100 mol% of all the structural units of the polymer. Therein, Nakai teaches a combination of structural unit represented by formulae (a1), (a2), and (a3) of the present application, as well as a greater ratio of the therein monomer (3) to monomer (2B) as well as teaching a molar ratio of a third monomer which, in combination with the monomer (3) of Nakai, of 0.1% to 70% of all monomers of the polymer and the third monomer taught therein teach, in combination with the monomer (3) of Nakai, both structural units represented by formulae (a1) and (a2) of the present application. Nakai teaches (Paragraphs [0082, 0084, and 0091-0093]) a content ratio of the structural unit represented by formula (a1) of the present application in the polymer is 70 mol% or more, with respect to 100 mol% of all the structural units of the polymer. Therein, Nakai teaches a combination of structural unit represented by formulae (a1), (a2), and (a3) of the present application, as well as a greater ratio of the therein monomer (3) to monomer (2B) as well as teaching a molar ratio of a third monomer which, in combination with the monomer (3) of Nakai, of 0.1% to 70% of all monomers of the polymer and the third monomer taught therein teach, in combination with the monomer (3) of Nakai, both structural units represented by formulae (a1) and (a2) of the present application. Nakai teaches (Paragraphs [0040-0045 and 0057-0065], specifically dihalogenated aromatic monomers (b-30) to (b-35) and (b-37) to (b-38) of Paragraph [0045] and monomers (a-10), (a-15), (a-22), (a-24), (a-35), (a-43), (a-55), (a-60), and (a-64) of Paragraphs [0062-0064]) wherein in the Formula (a1) of the present application, R4 is an unsubstituted or substituted alkyl group having 4 to 20 carbon atoms. Nakai teaches (Paragraphs [0187 and 0243]) a content of the polymer in the photosensitive resin composition is 50 to 98.5 % by mass with respect to a total mass of a solid component of the photosensitive resin composition. Therein, Nakai teaches 0.5 to 30% photocation generator by mass with respect to a total mass of a solid component of the photosensitive resin composition and 1.0 to 20% crosslinking agent by mass with respect to a total mass of a solid component of the photosensitive resin composition. . Nakai teaches (Paragraphs [0187 and 0243]) a content of the polymer in the photosensitive resin composition is 60 to 95 % by mass with respect to a total mass of a solid component of the photosensitive resin composition. Therein, Nakai teaches 0.5 to 30% photocation generator by mass with respect to a total mass of a solid component of the photosensitive resin composition and 1.0 to 20% crosslinking agent by mass with respect to a total mass of a solid component of the photosensitive resin composition.
11. A person having ordinary skill in the art would understand that each element of the composition claimed herein, although not necessarily in a single experimental example, with the only difference between the claimed invention and the teaching of Nakai being the lack of an actual combination of said process elements in a single experimental example. One of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. Also, one of ordinary skill in the art would have recognized that the results of the combination were predictable. Thus, it would have been obvious to one of ordinary skill in the art to compose the composition taught in the detailed description of Nakai.
12. Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai, in further view of Bi et al. (Chinese Patent Publication No. CN 105061754 A), hereinafter Bi.
13. Regarding Claims 2-3, Nakai teaches all limitations of Claim 1 above. However, Nakai fails to explicitly teach wherein R1 of Formula (a1) of the present application is an unsubstituted or substituted nitrogen-containing heteroaromatic ring and wherein the nitrogen-containing heteroaromatic ring is an unsubstituted or substituted pyrimidine ring.
14. Bi teaches (Page 2, Lines 16-21 of the English language equivalent) wherein R1 of Formula (a1) of the present application is an unsubstituted or substituted nitrogen-containing heteroaromatic ring. Bi teaches (Page 2, Lines 16-21 of the English language equivalent) wherein the nitrogen-containing heteroaromatic ring is an unsubstituted or substituted pyrimidine ring. Bi teaches (Page 1, Lines 6-21 and Page 3, Lines 3-18 of the English language equivalent) the polymer therein has good thermal stability and mechanical properties while being more easily synthesized.
15. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakai to incorporate the teachings of Bi wherein R1 of Formula (a1) of the present application is an unsubstituted or substituted nitrogen-containing heteroaromatic ring; wherein the nitrogen-containing heteroaromatic ring is an unsubstituted or substituted pyrimidine ring. Doing so would result in a polymer having good thermal stability and mechanical properties while being more easily synthesized, as recognized by Bi.
16. Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (Japanese Patent Publication No. JP 2011-075987 A), hereinafter Nakai, in view of Hifumi et al. (United States Patent Publication No. US 20190055357 A1), hereinafter Hifumi.
17. Regarding Claims 12-14, Nakai teaches all limitations of Claim 1 above. However, Nakai fails to explicitly teach the polymer comprising a terminal group represented by Formula (g1) of the present application. Furthermore, Nakai fails to explicitly teach wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group, a thiol group, an amino group, or a carboxy group. Furthermore, Nakai fails to explicitly teach wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group.
18. Hifumi teaches (Paragraphs [0158 and 0232]) the polymer comprising a terminal group represented by Formula (g1) of the present application, therein teaching a terminating agent of one of the monomers of the polymer and the monomers taught comprise a number of structures within the scope of Formula (g1) of the present application. Hifumi teaches (Paragraphs [0158 and 0232]) wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group, a thiol group, an amino group, or a carboxy group. Hifumi teaches (Paragraphs [0158 and 0232]) wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group. Hifumi teaches (Paragraphs [0018-0021]) the polymer therein exhibits improved heat resistance, mechanical properties, solubility, and a high refractive index.
19. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakai to incorporate the teachings of Hifumi wherein the polymer comprising a terminal group represented by Formula (g1) of the present application; wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group, a thiol group, an amino group, or a carboxy group; and wherein in Formula (g1) of the present application R7 is a phenolic hydroxyl group. Doing so would result in a polymer which exhibits improved heat resistance, mechanical properties, solubility, and a high refractive index, as recognized by Hifumi.
Conclusion
20. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
21. A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
22. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
23. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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25. 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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
Prosecution Insights