DETAILED ACTION
Claims 1-3 and 10-25 are pending. Claim 1 has been amended and claims 4-9 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 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 and 10-25 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya et al. (U.S. 2021/0116809) in view of Meyer et al. (U.S. 3,981,847).
Tsuchiya et al. teaches a photosensitive resin composition comprising (A) a polyimide precursor having a polymerizable unsaturated bond; (B) a polymerizable monomer having an aliphatic cyclic skeleton; (C) a photopolymerization initiator; and (D) a solvent [abstract] and may further comprise (E) a thermal polymerization initiator from the viewpoint of promoting the polymerization reaction [0099] (claim 1). Tsuchiya et al. also teaches the component (A) is preferably a polyimide precursor having a structural unit represented by the following formula (1) [0028]:
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[0029-0031] wherein the divalent aromatic hydrocarbon group of the Y1 of the formula (1) includes, but are not limited to, a group represented by the following formula (7) [0037]:
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[0037-0038] and examples of the tetravalent aromatic hydrocarbon group of the X1 of the formula (1) include, but are not limited to, a group represented by formula (6) [0033]. Tsuchiya et al. further teaches the polyimide precursor having the structural unit represented by the formula (1) can be obtained by, for example, reacting a tetracarboxylic dianhydride represented by the following formula (8) and a diamino compound represented by the following formula (9) in an organic solvent such as N-methyl-2-pyrrolidone to obtain a polyamide acid, adding a compound represented by the following formula (10), and reacting in the organic solvent to partially introduce an ester group [0044]:
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[0045-0047] and a specific example of the diamine includes 4,4’-diamino-2,2’-dimethylbiphenyl seen in Example 1 [0182].
Tsuchiya et al. does not teach a polyester imide structure represented by Formula (1) when Ar is a divalent group having an aromatic skeleton which is a residue except for a diol selected from 4,4’-dihydroxydiphenyl ether, 1,4-bis-(4-hydroxyphenoxy)benzene, 4,4’-dihydroxydiphenylmethane, or 1,4-bis(3-hydroxyphenoxy)benzene.
However, Meyer et al. teaches a process for producing a polyamidocarboxylic acid, or so-called polyamic acid (polyester imide), which is the prepolymer in forming a polyamide and which requires the reaction of a tetracarboxylic acid dianhydride with a diprimary diamine below about 50°C in an anhydrous, polar, aprotic organic solvent, characterized by an initial treatment of the dianhydride by only wetting with an inert organic solvent or by at least wetting this dianhydride with the polar, aprotic solvent and thereafter adding to the wetted dianhydride a solution of the diamine in the polar, aprotic solvent under thorough mixing, preferably within a very short period of time after treating the dianhydride [abstract] in which such tetracarboxylic acid dianhydrides are prepared by reaction of trimellitic acid with a lower alkyl ester of a diol or diphenol for example: 4,4-dihydroxy-diphenyl ether and/or bis-(4-hydroxyphenyl)-methane [col 4 line 53-col 5 line 1], and an example of the tetracarboxylic dianhydride includes the following formula ODO-TMA:
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[col 12]. When the tetracarboxylic acid dianhydride of Tsuchiya et al. is substituted with ODO-TMA of Meyer et al. it is equivalent to a resin including an aromatic polyester imide structure represented by Formula (1) of instant claim 1 when m is 1-100, Ar is a divalent group having an aromatic skeleton which is a residue except for a diol of 4,4’-dihydroxydiphenyl ether, R is a divalent group having an aromatic skeleton with 6 or 14 carbon atoms and 4 or 6 hydrogen atoms respectively which are diamine residue except for amino groups of an aromatic diamine compound 4,4’-diamino-2,2’-dimethylbiphenyl, each of -COOR1 and -COOR2 are positioned in an ortho position with an adjacent -CONH-, and each R1, R2, and R’ are a hydrogen atom or a group represented by Formula (2) when n is 1 to 10, and R3-R5 are hydrogen atoms or an aliphatic hydrocarbon group with 1 to 3 carbon atoms. 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 Tsuchiya et al. and Meyer et al. are directed to polyester imides (polyamic acids) obtained from reacting known tetracarboxylic dianhydrides with known diamines. Tsuchiya et al. also teaches while some embodiments and/or examples of the present invention have been described in detail above, those skilled in the art will readily make many changes to these illustrative embodiments and/or examples without materially departing from the novel teachings and advantages of the invention. Accordingly, many of these modifications are within the scope of the invention [0219].
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 Tsuchiya et al. to include other known tetracarboxylic dianhydrides such as those taught by Meyer et al. and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention with a reasonable expectation of success.
With regard to claim 2, Tsuchiya et al. teaches the photosensitive resin composition of the present invention may comprise a coupling agent, a surfactant or a leveling agent, a rust inhibitor, a polymerization inhibitor, and the like [0104].
With regard to claim 3, Tsuchiya et al. teaches It is more preferable that the component (B) comprises a polymerizable monomer represented by the following formula (5) [0066]:
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[0066] which is equivalent to an acryloyl compound of instant claim 3.
With regard to claims 10-19, Tsuchiya et al. teaches the method for manufacturing a pattern cured product of the present invention comprises a step of coating the photosensitive resin composition on a substrate and drying to form a photosensitive resin film, a step of pattern-exposing the photosensitive resin film to obtain a resin film, a step of developing the resin film after pattern-exposure using an organic solvent to obtain a pattern resin film, and a step of heat-treating the pattern resin film [0139] wherein the temperature of the heat treatment is preferably 250° C or less, more preferably 120 to 250° C, and more preferably 200° C or less or 160 to 200° C [0163]. Tsuchiya et al. also teaches the cured product of the present invention can be used as a passivation film, a buffer coat film, an interlayer insulating film, a cover coat layer, a surface protective film, or the like. With the use of one or more selected from the group consisting of the passivation film, the buffer coat film, the interlayer insulating film, the cover coat layer, the surface protective film, and the like, highly reliable electronic components such as semiconductor devices, multilayer wiring boards, various electronic devices, and laminated devices (such as multi-die fan-out wafer level packages) can be manufactured [0169-0170].
The composition of Tsuchiya in view of Meyer is the same as instantly claimed. Therefore, the modified composition is expected to have, when cured, a chloride ion content of 5 ppm or less, a breaking elongation from 10% to 200%, a dielectric constant at 10 GHz of 3.2 or less, a dissipation factor at 10 GHz of 0.0100 or less, a weight reduction temperature by 5% is 300°C or more, and a coefficient of moisture absorption after being left in an environment of 130°C and 85% relative humidity for 200 hours of 1% by mass or less, absent any evidence to the contrary (claims 20-25).
Claim 1 recites “used for forming” which is refers to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106).
Response to Arguments
Due to the amendment filed June 16, 2026 of instant claim 1, the 103 rejection over Nagami in view of Tsuchiya 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, Tsuchiya is still being used as prior art because it continues to teach the claims components sans Ar in which newly found prior art Meyer cures such deficiency.
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 6:30-3:00 EST M-F.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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