DETAILED ACTION
Claims 1-3, 7-10, and 12- 15 are pending. Claims 1-3, 7-10, 12, and 13 have been amended, claims 4-6 and 11 have been canceled, and claim 15 has been added.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/031,350 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to compositions comprising at least a photopolymerization initiator and bismaleimide compounds obtained from an alicyclic polybasic acid anhydride, a dimer acid-derived diamine, and maleic anhydride. Instant claim 1 recites “comprising” and can therefore include additional components such as the reactive polycarboxylic acid resin (II) of ‘305. The polybasic acid anhydride having an alicyclic structure of ‘450 encompasses the instantly claimed tetracarboxylic dianhydrides.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-3, 7-10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Takao (JP2013083958) in view of Nakayama et al. (U.S. 2004/0197699) and/or Park et al. (U.S. 2016/0369054). Translation previously provided.
Takao teaches a photosensitive resin composition contains (I) a bismaleimide compound, (II) a photopolymerization initiator, and (III) a silicon compound having four or more alkoxy groups bonded to silicon atoms [0027] wherein examples of the photopolymerization initiator (II) include 1,2-octanedione,1-[4-(phenylthio)-,2-(O-benzoyloxime)] having an oxime structure (manufactured by BASF Japan Ltd. " IRGACURE OXE - 01"), ethanone,1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazol-3-yl]-,1-(O-acetyloxime) (manufactured by BASF Japan Ltd. " IRGACURE OXE - 02"), and 2,4-dimethylthioxantone having a thioxanthone structure ("DETX-S" manufactured by Nippon Kayaku Co., Ltd.) [0050] (claim 1) and the content of the photopolymerization initiator (II) is preferably 0.1 to 15 parts by mass, more preferably 0.5 to 5 parts by mass, with respect to 100 parts by mass of the bismaleimide compound (I) [0069] (claim 12). Takao also teaches the bismaleimide compound (1) is represented by the following formula (1):
PNG
media_image1.png
175
592
media_image1.png
Greyscale
[0039] wherein R1 represents a divalent hydrocarbon group (a) derived from a dimer
acid (claim 1) and R2 represents a divalent organic group (b) other than the divalent hydrocarbon group (a) derived from a dimer acid and R3 represents (a) derived from a dimer acid and a divalent organic group (b) other than the divalent hydrocarbon group (a) derived from a dimer acid, and R4 and R5 may be the same or different and each represents a tetravalent organic group [0040], the tetravalent organic group in 1) refers to a tetravalent residue obtained by removing two groups represented by -CO-O-CO- from the tetracarboxylic dianhydride [0041], m represents an integer of 1 to 30 [0042], n represents an integer of 0 to 30 [0043].
Takao does not teach the tetracarboxylic dianhydride (C) is selected from those instantly claimed.
However, Nakayama et al. teaches in order to obtain a polyimide resin having high transparency and solubility, the acid anhydride is preferably a tetracarboxylic dianhydride comprising four carbonyl groups not directly bonded to an aromatic ring, such as 1,2,4,5-cyclohexanetetracarboxylic dianhydride, 3,4-dicarboxy-1,2,3,4-tetrahydro-1-naphthalene succinic dianhydride, 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene-1,2-dicarboxylic dianhydride [0017] which are equivalent to claim 1, specifically formula (5) of instant claim 8, formula (7) of instant claim 10, and formula (4) of instant claim 7 respectively; while Park et al. teaches in order to improve optical properties and to ensure a low dielectric constant, an aliphatic or cycloaliphatic acid dianhydride capable of decreasing intramolecular polarization anisotropy, such 4-(2,5-dioxotetrahydrofuran-3-yl)-1,2,3,4-tetrahydronaphthalene-1,2-dicarboxylic dianhydride (TDA), cyclohexane tetracarboxylic dianhydride (CHDA), and bicyclohexane tetracarboxylic dianhydride (HBPDA) may be used [0042] which are equivalent to claim 1, specifically formula (7) of instant claim 10, formula (5) of instant claim 8, and formula (6) of instant claim 9 respectively. Takao also teaches the present invention will be described in more detail based on Examples and Comparative Examples, but the present invention is not limited to the following Examples [0086] and the problem to be solved is to provide a photosensitive resin composition which can form a fine pattern with a relatively low quality of exposure, does not require conventional thermal curing at a high temperature, and can obtain a cured product having sufficiently small tensile modulus of elasticity and excellent adhesiveness from and to an inorganic surface protective film and a metal wire material [abstract].
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 specific teachings of Takao through routine experimentation of substituting equally suitable tetracarboxylic dianhydrides as taught by Nakayama and/or Park and arrive at the instant claims with a reasonable expectation of success regarding transparency, solubility, and optical properties.
With regard to claims 2 and 3, Takao teaches the organic diamine (B) other than the dimer acid-derived diamine (A) (hereinafter, simply referred to as an organic diamine (B) in some cases) refers to a diamine other than the diamine contained in the dimer acid-derived diamine (A) in the present invention. (B) is not particularly limited, and examples thereof include aliphatic diamines such as 1,6-hexamethylenediamine; cycloaliphatic diamines such as 1,4-diaminocyclohexane [0035].
Takao does not teach 1,3-bis(aminomethyl)cyclohexane.
However, Nakayama et al. teaches diamine having no fluorine may be an aliphatic diamine such as 1,6-hexanediamine, 1,4-cyclohexanediamine, 1,3-cyclohexanediamine, 1,4-bis(aminomethyl)cyclohexane, 1,3-bis(aminomethyl)cyclohexane, 4,4'-diaminodicyclohexylmethane or 4,4'-diamino-3,3'-dimethyldicyclohexylmethane [0023]; while Park et al. teaches an alicyclic diamine selected from the group consisting of 1,4-diaminocyclohexane, 1,4-cyclohexanebis(methylamine), 4,4′-diaminodicyclohexylmethane (MCA), 4,4′-methylenebis(2-methylcyclohexylamine) (MMCA), and mixtures thereof; and an aliphatic diamine selected from the group consisting of ethylene diamine (EN), 1,3-diaminopropane (13DAP), tetramethylene diamine, 1,6-hexamethylene diamine (16DAH), 1,12-diaminododecane (112DAD), and mixtures thereof [0010] (claims 2 and 3). 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, Takao, Nakayama, and Park teach known aliphatic diamines suitable for polyimides.
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 specific teachings of Takao through routine experimentation of substituting equally suitable diamines as taught by Nakayama and/or Park and arrive at the instant claims with a reasonable expectation of success.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the teachings of Takao through routine experimentation of substituting equally suitable components for the sought invention in order to achieve high transparency and solubility in solvents as well as improve optical properties as taught by Nakayama and Park and arrive at the instant claims with a reasonable expectation of success.
With regard to claims 13 and 14, Takao the present invention relates to a photosensitive resin composition, and a cured product and a semiconductor device using the same. The photosensitive resin composition of the present invention can be applied to a protective film for a semiconductor element, an interlayer insulating film, an insulating film of a rewiring layer, and the like [0001].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Dershem et al. (U.S. 2013/0228901) in view of Takao (JP2013083958).
Dershem et al. teaches devices comprising a semiconductor wafer and a passivating layer disposed on the surface of the wafer. The passivating layer is comprised of a polyimide polymer having the molecular weight fraction of the combined contents of nitrogen and oxygen that is less than about 20% [0095] and a suitable polyimide polymer may be a polyimide comprising a structure selected from the group consisting of structures I, II and III [0098] in which structure I is the following:
PNG
media_image2.png
106
603
media_image2.png
Greyscale
[0098] wherein each of R, R3 and Q is independently selected from the group consisting of substituted or unsubstituted aliphatic, alkenyl, aromatic, heteroaromatic and siloxane moieties, R2 in each structure I, II and III is independently selected from the group consisting of H or methyl [0099] and imide-extended bismaleimide compounds are readily prepared by a two-step, single-pot synthesis as illustrated in are shown in U.S. Patent Publication No. 20110130485, FIG. 1 (incorporated herein by reference). The first step involves the condensation of a dianhydride with a dimer diamine to form an amine-terminated polyimide. The diamine should be present in at least a slight excess of that necessary to form the imide-linked diamine intermediate. A wide variety of diamines are contemplated for use in the practice of the invention, such as for example, dimer diamine [0105-0106] e.g. Versamine 552 [0126] which is equivalent to a diamine derived from a dimer acid; and the second step of the reaction involves the condensation of the remaining amine residues with a slight excess of maleic anhydride to form the maleimide moieties [0107] (claim 15). Dershem et al. also teaches a wide variety of anhydrides are contemplated for use in the practice of the invention [0109] and Additional anhydrides contemplated for use include, but are not limited to [0110]:
PNG
media_image3.png
94
147
media_image3.png
Greyscale
[0111] which is equivalent to 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene-1,2-dicarboxylic dianhydride of instant claim 15. Dershem et al. further teaches in certain embodiments, the present invention provides compositions, such as adhesive compositions, including at least one low modulus polyimide and at least one curing initiator. The curing initiator is typically present in adhesive compositions of the invention at an amount from 0.1 wt % to about 5 wt %, based on total weight of the composition, and is typically a free-radical initiator [0138] in which free radical initiators also include photoinitiators. For invention compositions that contain a photoinitiator, the curing process can be initiated, for example, by UV radiation. Photoinitiators include benzoin derivatives, benzilketals, α,α-dialkoxyacetophenones, α-hydroxyalkylphenones, α-aminoalkylphenones, acylphosphine oxides, titanocene compounds, combinations of benzophenones and amines or Michler's ketone, and the like [0141]. Dershem et al. does not require any additional compounds and therefore meets the claimed language “consisting of”.
Dershem et al. does not explicitly teach a photopolymerization initiator (II) having an oxime structure or a thioxanthone structure.
However, Takao teaches conventionally used photopolymerization initiator can be appropriately employed. Examples of the photopolymerization initiator include acetophenone, 2,2-dimethoxyacetophenone, p-dimethylamino acetophenone, Michler's ketone, benzyl, benzoin, benzoin methyl ether, benzoin ethyl ether, benzoin isopropyl ether, benzoin n-propyl ether, benzoin isopropyl ether, benzoin n-butyl ether, benzyldimethylketal, thioxatone, 2-chlorothioxasone 2 - *********, 2,2-dimethoxy-1,2-diphenylethane-1-one, 1-hydroxy-cyclohexyl-phenyl-ketone, 2-hydroxy-2-methyl-1-phenyl-propanoic-1-one, 1-[4-(2-hydroxyethoxy)-phenyl]-2-hydroxy-2-methyl-1-propanoic-1-one, 2-hydroxy-1-{4-[4-(2-hydroxy-2-methyl-propionyl)-benzilic]phenyl}-2-methyl-propanoic-1-one, 2-methyl-1-(4-methylthiophenyl)-2-morpholinopropan-1-one, 2-benzyl-2-dimethylamino 1-(4-morpholinophenyl)-1-butanone, 2,4,6-trimethylbenzoyl-diphenyl-phosphinic oxide, bis(2,4,6-trimethylbenzoyl)-phenyl phosphinic oxide, 1,2-octanedion,1-[4-(phenylthio)-,2-(O-o benzoyloxime)]. Examples thereof include photopolymerization initiators such as ethanone, 1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazol-3-yl]-,1-(O-acetyloxime), and 2,4-dimethylthioxantone [0048] and from the viewpoint that radicals can be more efficiently generated and the reactivity at exposure wavelengths of 310 to 436nm (more preferably 365nm) is increased, the photopolymerization initiator (II) according to the present invention is more preferably a compound having at least one structure selected from the group consisting of an oxime structure and a thioxanthone structure [0049]. Further, 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.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute other known photoinitiators such as those taught by Takao for the photoinitiator of Dershem et al. through routine experimentation of substituting equally suitable components for the sought invention and arrive at the instant claims with a reasonable expectation of success.
Response to Arguments
Due to the amendment filed November 24, 2025 of instant claim 1, the 103 rejection over Takao (as evidenced by Nakayama and/or Park) 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, Takao in still being used as prior art as a combination-type obviousness rejection with Nakayama and/or Park because they continue to teach the claimed composition and bismaleimide.
The double patenting rejection over copending application 18/031,350 is maintained for reasons of record.
Conclusion
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.
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.
/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737