DETAILED ACTION
Claims 1, 2, 6-12, 19, and 20 are pending. Claim 1 has been amended, claim 4 has been canceled, and claims 3, 5, and 13-18 were previously canceled.
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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “dicyclohexyl-3,4,3’,4’-tetracarboxylic dianhydride or 1,4-bis(3,4-dicarboxyphenoxy)benzene dianhydride”. However, page 17 of the specification recites:
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but fails to define the compounds accordingly. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 6-12, 19, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a polyimide resin comprising…wherein, the polyimide resin further comprising any one of structures represented by the following Chemical Formula A-1 to A-4; and dicyclohexyl-3,4,3’,4’-tetracarboxylic dianhydride or 1,4-bis(3,4-dicarboxyphenoxy)benzene dianhydride”. However, the recited dianhydrides are the components used to make the polyimide and are not in the polyimide. Specifically, pages 15-17 of the specification recite “In one embodiment of the present specification, any one of Chemical Formula A-1 to A-4 may be derived from any one of the following chemical formulae…
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” and Chemical Formulae 1-5 in claim 1 represent the portion of the polymer derived from a diamine while Chemical Formulae A-1 to A-4 represent the portion of the polymer derived from a dianhydride. Therefore, the claim language is inconsistent regarding the pieces of the actual polymer versus the components used to make the polymer. The Examiner suggests amending claim 1 to recite --wherein, the polyimide resin further comprises any one of structures represented by the following Chemical Formula A-1 to A-4; and a structure represented by Chemical Formula A-1 which is derived from chemical formula
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or a structure represented by Chemical Formula A-4 which is derived from chemical formula
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--.
Claims 2, 6-12, 19, and 20 are rejected because they depend from rejected based claim 1.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 6-12, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over in Urano et al. (U.S. 2020/0326624) view of Tagami et al. (U.S. 2010/0233619).
Urano et al. teaches a positive photosensitive resin composition includes: (A-1) an alkali-soluble resin containing at least one or more structures selected from a polyimide structure, a polybenzoxazole structure, a polyamide-imide structure, and a precursor structure thereof; (A-2) a resin containing at least one or more structures selected from a polyimide structure, a polybenzoxazole structure, a polyamide-imide structure, and a precursor structure thereof, each of which has no alkali-soluble group and contains a heterocyclic skeleton having at least one or more nitrogen atoms at a molecular end; (B) a compound having a quinonediazide structure for serving as a photosensitizer to generate an acid by light and increase a dissolution speed to an alkaline aqueous solution (photoacid generator); and (D) a solvent. The positive photosensitive resin composition may be alkali-developed. Furthermore, the positive photosensitive resin composition may furthermore contain, as needs arise, (C) a crosslinking agent, (E) a compound (thermal acid generator) that generates an acid by heat and so on, other than the (A-1) component, (A-2) component, (B) component and (D) component [0052] (claims 7, 11, and 19) wherein an alkali-soluble resin (A-1) of the present invention is an alkali-soluble resin containing at least one or more structures selected from a polyimide structure, a polybenzoxazole structure, a polyamide-imide structure, and a precursor structure thereof. Although the resin (A-1) is not particularly restricted as long as an alkali-soluble resin containing the above structures, one containing the structure represented by the following general formula (2) and/or (3) is preferable [0053] wherein general formula (2) is the following:
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[0053] wherein X3 is a tetravalent organic group, “'s” represents 0 or 1, Z is a divalent linking group, and when s=0, two aromatic rings in the formula are directly bonded without a linking group [0053] and the alkali-soluble resin (A-1) of the present invention preferably furthermore contains a structural unit shown by the following general formula (8) (hereinafter, referred to as a structural unit (8)) in addition to the structural units shown by the general formulae (2) and (3) [0076]:
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[0076] wherein X6 is the same tetravalent organic group as or different from X3, and X7 is a group represented by the following general formula (9) [0076]:
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[0076] wherein R2 to R5 each is independently a linear or branched alkylene group having 2 to 10 carbon atoms, m1 is an integer of 1 to 40, m2, m3 each is independently an integer of 0 to 40 [0076]. Urano et al. also teaches an alkali-soluble resin containing the structural unit represented by the general formula (2) may be obtained by reacting tetracarboxylic dianhydride represented by the following general formula (21) and a diamine represented by the following general formula (22) [0080] and examples of the tetracarboxylic dianhydride include 3,3′,4,4′-oxydiphthalic dianhydride and 1,4-bis(3,4-dicarboxyphenoxy)benzene dianhydride [0082] and examples of the diamine shown by formula (22) include the following general formula (23) [0088]:
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[0088] and the alkali-soluble resin containing the structural unit (8) may be obtained by performing the same reaction procedure as performed for the structural unit (2). Exemplarily, after an amide acid is synthesized by reaction between the tetracarboxylic dianhydride shown by the following general formula (30) and a mixture of the diamine shown by the general formula (22) and the diamine shown by the following general formula (31), an imide ring is formed by performing a heating and dehydration step to obtain the alkali-soluble resin containing the structural unit (8) [0118] and examples of the diamine shown by the general formula (31) include EDR-148 [0120]. Urano et al. further teaches the alkali-soluble resin may be blocked with an end blocking agent at both ends to control a molecular weight in the polycondensation reaction, and to suppress a temporal variation in molecular weight of the obtained polymer, that is, to suppress gelling. As the end blocking agent reacting with the acid dianhydride, a monoamine or monovalent alcohol may be exemplified. As the end blocking agent reacting with the diamine compound, an acid anhydride, a monocarboxylic acid, a monoacid chloride compound, a mono-active ester compound, dicarbonic acid esters, vinyl ethers and the like may be exemplified. In addition, reaction of the end blocking agent allows various organic groups to be introduced into the terminal [0122] and examples of the monoamine include 2-aminophenol, 3-aminophenol, or 4-aminophenol [0123] which is structurally similar to a polyimide resin of instant claims 1 and 2 comprising a structure represented by Chemical Formula A-1 when ra1 and ra2 are 0 and L1 is -O-; 1,4-bis(3,4-dicarboxyphenoxy)benzene dianhydride; a structure represented by Chemical Formula 2 when b1 is a direct bond, n2 is 1, Lb2 is an unsubstituted alkylene group, Lb3 is a direct bond, and Lb4 is an unsubstituted alkylene group; a structure represented by Chemical Formula 3 when r1 and r2 are 0, L is substituted alkylene group, and Ra and Rb are hydrogen atoms; and a structure represented by Chemical Formula E when re1 is 0 and Re is a hydrogen atom. Urano et al. also teaches it is to be noted that the present invention is not restricted to the foregoing embodiment. The embodiment is just an exemplification, and any examples that have substantially the same feature and demonstrate the same functions and effects as those in the technical concept described in claims of the present invention are included in the technical scope of the present invention [0260].
Urano et al. does not teach a structure represented by Chemical Formula 3 when Ra and Rb are represented by Chemical Formula a or b or a structure represented by Chemical Formula E when Re is represented by Chemical Formula a or b, or in an amount of 10 mol% to 70 mol% with respect to a total number of moles of -OH.
However, Tagami et al. teaches a polyimide silicone having in the molecule a phenolic hydroxy group in which a part or all of hydrogen atoms are substituted with an acid labile group is provided [abstract], preferably 30 to 100% by mole, and more preferably 40 to 80% by mole of the hydrogen atoms in the phenolic hydroxy group are substituted with the acid labile group. An excessively low degree of substitution may result in the pattern deformation in the development, or alternatively, may result in poor degree of the film remaining after the development. On the other hand, excessively high degree of substitution may result in the reduced sensitivity [0031]. Tagami et al. also teaches the novel polyimide silicone of the present invention can be produced by the addition reaction of the precursor polyimide silicone with an alkenyl ether compound or a dialkenyl ether compound in the presence of an acid catalyst. Examples of the alkenyl ether compounds include ethyl vinyl ether [0048]. Tagami et al. further teaches this invention relates to a novel polyimide silicone and a photosensitive resin composition containing such polyimide silicone. This invention also relates to a method for forming a pattern. The protective film prepared by using this composition for wiring and the like is particularly useful for applications such as insulative film for protecting a semiconductor element, an insulation film for wiring of a semiconductor element, an insulation film for multi-layer printed board, solder protective coating, cover lay film, and MEMS in view of its excellency in heat resistance, chemical resistance, electric insulation, and flexibility [0002] and use of the photosensitive resin composition containing the polyimide silicone of the present invention enables production of a photocurable resin composition which can be exposed by a light beam having a wide range of wavelength, which can be formed into a thin film with no oxygen interference, and which can also be formed into a thick film having a thickness in excess of 20 µm. The composition is also capable of forming a pattern at a high resolution, and the cured film formed from this composition exhibits excellent adhesion to the substrate, heat resistance, and electric insulation, and the resulting film is suitable for the protective film of electric and electronic parts, semiconductor elements, and the like [0020]. Furthermore, it should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Urano and Tagami are directed to polyimide polymers suitable for insulating films of semiconductors.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Urano et al. to include an acid-decomposable group within the claimed mol% as taught by Tagami and arrive at the instantly claimed polyimide through routine experimentation of selecting equally suitable components for the sought invention using known techniques in order to achieve optimum resolution, adhesion, heat resistance, and electrical insulation.
With regard to claim 6, Urano et al. teaches a preferable molecular weight of the alkali-soluble, resin is preferably 5,000 to 100,000, and more preferably 7,000 to 30,000 [0121]. The polyimide of Urano et al. modified by Tagami et al. is the same as instantly clamed, therefore it is expected to have a molecular weight as claimed, absent any evidence to the contrary.
With regard to claims 7, 8, 11, 12, 19, and 20, Urano et al. teaches an addition amount of the (B) component is preferably 1 to 50 parts by mass, more preferably 10 to 40 parts by mass relative to 100 parts by mass of the (A-1) component [0152]; a blending amount of the (D) component is preferably 50 to 2,000 parts by mass, particularly preferably 100 to 1,000 parts by mass relative to 100 parts by mass of a total of the blending amounts of the (A-1) component, the (A-2) component and the (B) component [0156]; a blending amount of the (C) component is preferably 0.5 to 50 parts by mass, and particularly preferably 1 to 30 parts by mass relative to 100 parts by mass of the (A-1) component [0177]; and in the positive photosensitive resin composition of the present invention, components other than the (A-1), (A-2), (B), (C), (D) and (E) component may be further contained. As such other components, for example, an adhesive aide, (G) a surfactant and the like may be contained [0182].
With regard to claims 9 and 10, Urano et al. teaches the cured film thus obtained is excellent in the adhesiveness to the substrate, heat resistance, electric characteristics, mechanical strength and chemical resistance to an alkaline peeling solution, and the like, and also excellent in reliability of a semiconductor device using the film as a protective film, in particular, it is possible to prevent occurrence of cracks in the temperature cycle test, it can be suitably used as a protective film (an interlayer insulating film or a surface protective film) for electric and electronic parts, a semiconductor device, and the like. That is, the present invention provides an interlayer insulation film or a surface protective film made of the cured film obtained by curing the positive photosensitive resin composition. The above protective film is useful for an insulator film for a semiconductor device including rewiring use, an insulator film for a multilayer printed substrate, a solder mask, and a cover lay film, because of its heat resistance, chemical resistance, and insulating property [0195-0197].
Response to Arguments
Due to the amendment filed February 23, 2026 of instant claim 1, the 103 rejection over Inoue in view of Park and Tagami has been withdrawn. Applicant’s arguments with regard to this rejection have been considered but are moot due to the amendment of instant claim 1. However, Tagami is still being used as prior art because it continues to teach the introduction of an acid labile group to a polyimide polymer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2009/0176172 and U.S. 2004/0029045.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
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 Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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