DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of the oligomeric component formed with formula (I) only with a carbonate bond as ‘A’ and the polymeric component formed with formula (III) only with a carbonate bond as ‘G’ in the reply filed on 9/10/2025 is acknowledged.
This combined with the previous election in the response filed 11/13/2024 means the elected claims are 1-20.
However, the Examiner was unable to find a carbonate linkage as ‘A’ with Formula (I) as an oligomer, and therefore the Examiner is rejoining the species of -O-CH2-O- as the ‘A’ group.
Claim Rejections - 35 USC § 112
Claims 1-20 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.
In claim 1, the limitations that n and m can be ‘1’ render the claim indefinite as an oligomer means that the number of repeat units cannot be a monomer. This limitation renders the claim indefinite when considered in combination with [0070] which suggest that a monomer is a type of oligomer. This rejection can be overcome by narrowing the range to 2 to 15, which is how the claim will be interpreted.
In claim 1, the wavy lines at the sides of each of the substituents for ‘A’ and ‘E’ render the claim indefinite as it is unclear what these lines are trying to signify. In the oligomer/polymer art this would indicate that these substituents are in a side chain connecting two polymer backbones, but this does not make sense as ‘A’ and ‘E’ are in the backbone and not the side chain.
In claim 3, the limitations of “further comprising a polymeric component” renders the claim indefinite as it is unclear if the limitations of ‘n’ and ‘m’ in claim 1 also define what repeat unit number the polymeric component must be. The distinction between what chain length constitutes an oligomer versus a polymer is not a set number of repeat units and can vary. This combined with the teaching of [0068] would mean that the oligomer and polymer could have the same number of repeat units, which does not make sense. The rejection can be overcome by incorporating the limitation of claim 5 into claim 3, which is how the claim will be interpreted.
In claim 5, the wavy lines at the sides of each of the substituents for ‘G’ and ‘J’ render the claim indefinite as it is unclear what these lines are trying to signify. In the oligomer/polymer art this would indicate that these substituents are in a side chain connecting two polymer backbones, but this does not make sense as ‘G’ and ‘J’ are in the backbone and not the side chain.
In claim 17, the limitations of a “low molecular weight additive” is a term of degree that renders the claim indefinite. It is unclear what molecular weight is “low”. The claims, specification and the knowledge of one of ordinary skill in the art do not clarify the meaning of this term.
In claim 18, the limitations of “A release layer comprising” renders the claim indefinite because the term “layer” implies that the release layer has been laid upon something else, but that something else is not in the claim. It is unclear if there is some other unclaimed support or substrate upon which the release layer must be placed.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kohl et al. (US 2017/0306199).
With regard to claims 1, 2, 9 and 11, Kohl et al. teach a transient polymer adhesive that reads on applicants’ release layer composition [0007]. The adhesive can have a Tg of 10 to 80 C [0030]. The transient polymer adhesive can comprise a thermoplastic having the following formula [0029].
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80
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There can be 2 to 100,000 monomer units, R1 can be a CxXy group that can be a CH2 group based on what the substituents may be, and R2 can be the following structure
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187
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that reads on applicants’ formula (I) [0029]. The Examiner notes that the number of repeat units overlaps with the repeat units ‘n’ of claim 1; however, Kohl et al. do not specifically teach a material that has the chain length claimed.
The Examiner notes that the number of repeat units of the prior art overlaps with the ‘n’ value of 2 to 15 as claimed. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to have made the number of repeat units any amount, including from 2-15 or 12-15, as this is within the range taught in the prior art. Twelve repeat units would be approximately 2112 g/mol of molecular weight, which reads on claim 9.
With regard to claims 3-6, the Examiner also notes that the number of repeat units of the prior art overlaps with the ‘q’ value of 16 to 200 of Fomrula (III) as claimed.
It would have been obvious to one having ordinary skill in the art to have mixed together polymers and oligomers having different repeat units from within the range claimed in the prior art, including those having 2-15 and those having 16-200 repeat units. It is prima facie obvious to combine equivalent known for the same purpose to form a third composition to be used for the same purpose, see MPEP 2144.06. It would also have been obvious to have combined the oligomer and polymer in any amount, including making the oligomer have a greater amount by weight than the polymer, such that one would tune the overall weight average molecular weight to the desired amount, i.e. a lower Mw with more oligomer.
With regard to claim 7, since the reference does not specify making the adhesive have a chiral structure that favors either a cis or trans form. Since no specific teaching exists of forming an chiral composition, the default presumption of one having ordinary skill would be that a racemic mixture would be present in the oligomeric component, which would intrinsically have a 50:50 cis:trans ratio.
With regard to claims 8 and 10, as stated above twelve repeat units would be approximately 2112 g/mol of molecular weight; furthermore, it would have been obvious to have made the oligomer have a low polydispersity by making all of the chains have the same length such that would have uniform properties as a transient adhesive. This means the Mw:Mn would be 1 and Mn would be the same value as Mw, which reads on claims 8 and 10.
With regard to claims 12-14, a photo acid generator may be added to the transient adhesive [0032].
With regard to claim 15, Kohl et al. teach the photo acid generator; however, they do not specifically teach the amount of catalyst/photo acid generator in the composition.
It would have been obvious to have added the photo acid generator catalyst in any amount, including a catalytic amount such as 1-20 wt % of the composition, such that there was enough catalyst that the reaction occurs to break the adhesive in the desired amount of time while not adding so much that the adhesive broke down too quickly.
With regard to claim 16, electrically conductive metal particles can be added to the transient polymer adhesives [0040]. Metal particles can intrinsically absorb radiation to generate heat, and thereby read on applicants’ thermal sensitizing agent.
With regard to claim 17, the solvent in the adhesive composition reads on applicants’ low molecular weight additive as it can be removed with a soft bake, which means it is volatile and would be capable of vaporizing as claimed [0052].
With regard to claims 18 and 19, Kohl et al. teach a device can be adhered to a substrate, which reads on applicants’ donor plate, using the transient polymer adhesive, which reads on applicants’ release layer [0009].
With regard to claim 20, the device adhered to the substrate using the transient polymer adhesive reads on one of applicants’ plurality of components [0009]. Kohl et al. also suggests attaching “components in a structure”; however, Kohl et al. do not specifically teach multiple devices adhered to the substrate.
The Examiner notes that this is a mere duplication of parts. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It would have been obvious to have adhered multiple sensors on a substrate for measuring values at those different places [0003].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Examiner does not agree with the Written opinion of the ISA as it applies to the Ali et al. reference. This reference does not teach an oligomer having the number of repeat units of ‘n’ from 2 to 15. The molecular weights of the examples of Figure 3D and 3F would have the number of repeat units being approximately 24 and 32 repeat units, which is outside the claimed range.
The Examiner has cited Frechet et al., which has the polymers claimed; however, this reference cannot teach an oligomer based upon the Mw of the materials in this reference (pg. 106).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785