DETAILED ACTION
Claims 1 and 3-12 are pending. Claims 1, 3, and 7 have been amended and claim 2 was 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 .
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 and 3-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9,751,984 in view of U.S. Patent 11,487,201. The patented claims of ‘984 are directed to a photosensitive resin composition comprising a polyimide precursor comprising a structural unit having a carbon-carbon unsaturated bond, a compound that generates radicals when irradiated with active rays (photopolymerization initiator), and a tetrazole or tetrazole derivative, specifically 1H-tetrazole, 5-methyl-1H-tetrazole, and 5-amino-1H-tetrazole, and an addition-polymerizable compound (polymerizable monomer). ‘984 recites open language “comprising” and thus more than one tetrazole or tetrazole derivative may be included. The patented claims do not specify the addition-polymerizable compound. However, the instantly claimed compound represented by formula (43) is obvious in view of ‘201 which is directed to a photosensitive resin composition comprising a polyimide precursor having a polymerizable unsaturated bond, a polymerizable monomer having an aliphatic cyclic skeleton represented by formula (3), and a photopolymerization initiator which encompasses the instantly claimed compound represented by formula (43). ‘201 also teaches a thermal polymerization initiator. Claims 6-9 of ‘984 encompass instant claims 7-12. Therefore, the instantly claimed composition would have been obvious to one of ordinary skill in the art based on the combined claims of the patented inventions of which Applicant already owns the rights.
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 and 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto et al. (U.S. 9,751,984) in view of Tsuchiya et al. (WO2018181893). U.S. 11,487,201 is being used as the English translation of ‘893.
Enomoto et al. teaches a photosensitive resin composition comprising a polyimide precursor including a structural unit represented by the following general formula (1) [col 5 lines 64-66]:
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[col 6 line 1] wherein A is the tetravalent organic group represented by the following formula (2a), the tetravalent organic group represented by the following formula (2b), or a tetravalent organic group represented by the following general formula (2c), B is a divalent organic group represented by the following general formula (3), and R1 and R2 are independently a hydrogen atom or a monovalent organic group [col 6 lines 11-18]
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[col 6 line 20] wherein X and Y are independently a divalent group that is not conjugated with the benzene rings bonded thereto, or a single bond [col 6 lines 36-38]
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[col 6 line 40] wherein R3 to R10 are independently a hydrogen atom or a monovalent group, at least one of R3 to R10 being a fluorine atom or a trifluoromethyl group [col 6 lines 50-53] and the monovalent organic group that may be represented by R1 and R2 in the general formula (1) includes an alkyl group having 1 to 20 carbon atoms, a cycloalkyl group having 3 to 20 carbon atoms, an acryloxyalkyl group that includes an alkyl group having 1 to 10 carbon atoms, and a methacryloxyalkyl group that includes an alkyl group having 1 to 10 carbon atoms [col 9 lines 25-31] such that when at least one of R1 and R2 is an acryloxyalkyl or methacryloxyalkyl, as seen in Example 7 [col 26-27], it is equivalent to the instantly claimed (A) polyimide precursor having a structural unit represented by formula (1) of instant claims 1 and 3 when X1 is
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or
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where Z1 and Z2 are each a divalent group that is not conjugated with the benzene rings bonded thereto, or a single bond, Y1 is a divalent aromatic group, and R1 and R2 are hydrogen, a group represented by formula (2), or an aliphatic hydrocarbon group in which at least one of R1 and R2 is a group represented by formula (2) in which R3 and R4 are hydrogen, R5 is hydrogen or an aliphatic hydrocarbon group having 1 carbon atom, and m is 1 to 10. Enomoto et al. also teaches the photosensitive resin composition according to the invention includes the following components (a) to (c). (a) Polyimide precursor according to the invention; (b) Compound that generates radicals when irradiated with active rays; (c) Solvent [col 13 lines 55-60] in which examples of the compound that generates radicals when irradiated with active rays that is used as the component (b) include an aromatic ketone such as an oxime ester compound described below, benzophenone, an N,N′-tetraalkyl-4,4′-diaminobenzophenone such as N,N′-tetramethyl-4,4′-diaminobenzophenone (Michler's ketone), 2-benzyl-2-dimethylamino-1-(4-morpholinophenyl)butanone-1, and 2-methyl-1-[4-(methylthio)phenyl]-2-morpholinopropanone-1; a quinone fused with an aromatic ring (e.g., alkylanthraquinone); a benzoin ether compound such as a benzoin alkyl ether; a benzoin compound such as benzoin and an alkylbenzoin; and a benzyl derivative such as benzyldimethylketal [col 14 lines 3-15] which is equivalent to (C) a photopolymerization initiator of instant claim 1. Enomoto et al. further teaches when the photosensitive resin composition according to the invention is used for (applied to) a copper substrate (e.g., a redistribution layer 6 illustrated in FIG. 1 described later), and includes the oxime ester compound represented by the above-mentioned general formula (22) (e.g., IRGACURE OXE-01 (manufactured by BASF)), a polyimide residue may remain in an opening when forming a patterned cured film. The inventors of the invention assume that the above phenomenon occurs because a specific oxime ester compound generates radicals on the copper substrate during prebaking, and the unexposed area is also cured. In order to solve the above problem, it is preferable to incorporate the component (g) in the photosensitive resin composition. When the photosensitive resin composition includes the component (g), it is possible to suppress a situation in which a polyimide residue remains in an opening. A specific mechanism by which the component (g) exhibits the above effect is not clear. It is assumed that the component (g) forms a thin film on the copper substrate, and prevents a situation in which the resin composition comes in direct contact with the active metal surface, so that undesirable decomposition of a photoinitiator and a radical polymerization reaction in the unexposed area are suppressed, and photosensitivity can be achieved on the copper substrate. Examples of tetrazole and the tetrazole derivative include 1H-tetrazole, 5-methyl-1H-tetrazole, 5-phenyl-1H-tetrazole, 5-amino-1H-tetrazole, 1-methyl-1H-tetrazole, 5,5′-bis-1H-tetrazole, 1-methyl-5-ethyltetrazole, 1-methyl-5-mercaptotetrazole, 1-carboxymethyl-5-mercaptotetrazole, and the like. Among these, 1H-tetrazole and 5-amino-1H-tetrazole are preferable [col 18 line 50-col 19 line 18] and these compounds may be used either alone or in combination of two or more as the component (g) [col 19 lines 27-28] in which 1H-tetrazole, 5-amino-1H-tetrazole, and 5-methyl-1H-tetrazole are equivalent to (D) compounds represented by formulas (13), (12), and (11) respectively of instant claims 1, 4, and 5 when R11 is a methyl group. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 205 USPQ 1069 1072. In the instant case, it would have been obvious to one of ordinary skill in the art to obtain a photosensitive resin composition comprising at least two compounds of Applicant’s (D) represented by formula (11) and formula(s) (12) and/or (13) through routine experimentation of combining equally suitable components for the sought invention with a reasonable expectation of success. Enomoto et al. also teaches when photosensitive resin composition according to the invention may optionally include (e) an addition-polymerizable compound. Examples of the addition-polymerizable compound include diethylene glycol diacrylate, triethylene glycol diacrylate, tetraethylene glycol diacrylate, diethylene glycol dimethacrylate, triethylene glycol dimethacrylate, tetraethylene glycol dimethacrylate, trimethylolpropane diacrylate, trimethylolpropane triacrylate, trimethylolpropane dimethacrylate, trimethylolpropane trimethacrylate, 1,4-butanediol diacrylate, 1,6-hexanediol diacrylate, 1,4-butanediol dimethacrylate, 1,6-hexanediol dimethacrylate, pentaerythritol triacrylate, pentaerythritol tetraacrylate, pentaerythritol trimethacrylate, pentaerythritol tetramethacrylate, styrene, divinylbenzene, 4-vinyltoluene, 4-vinylpyridine, N-vinylpyrrolidone, 2-hydroxyethyl methacrylate, 2-hydroxyethyl acrylate, 1,3-acryloyloxy-2-hydroxypropane, 1,3-methacryloyloxy-2-hydroxypropane, methylenebisacrylamide, N,N-dimethylacrylamide, N-methylolacrylamide, and the like [col 17 line 63-15]. Enomoto et al. further teaches although only some exemplary embodiments or examples of this invention have been described in detail above, those skilled in the art will readily appreciate that many modifications are possible in the exemplary embodiments or examples without materially departing from the novel teachings and advantages of this invention. Accordingly, all such modifications are intended to be included within the scope of the invention [col 31 lines 49-56].
Enomoto et al. does not teach a compound represented by formula (43).
However, 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] wherein it is more preferable that the component (B) comprises a polymerizable monomer represented by the following formula (5) [col 8 lines 54-56]:
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[col 8 line 60] which is equivalent to a compound represented by formula (43) of instant claim 1 when c is 2 and R43 is represented by formula (45) where l is 1 and R45-R47 are hydrogen atoms. Tsuchiya et al. also teaches the photosensitive resin composition of the present invention comprises (B) a polymerizable monomer having an aliphatic cyclic skeleton (preferably having 4 to 15 carbon atoms, more preferably having 5 to 12 carbon atoms). As a result, hydrophobicity can be imparted to the cured product that can be formed, and a decrease in adhesion between the cured product and the substrate under high temperature and high humidity conditions can be suppressed. The component (B) preferably comprises a polymerizable monomer comprising (preferably, 2 or more) groups having a polymerizable unsaturated double bond (preferably, (meth) acrylic groups, which can be polymerized by a photopolymerization initiator) and comprising an aliphatic cyclic skeleton, and it preferably comprises 2 to 3 groups having a polymerizable unsaturated double bond in order to improve crosslinking density and photosensitivity and to suppress swelling of the pattern after development [col 8 lines 1-20]. Tsuchiya et al. further 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 [col 11 lines 49-52] and by comprising the rust inhibitor, corrosion of copper and copper alloy can be suppressed and discoloration of copper and copper alloy can be prevented. Examples of the rust inhibitor include triazole derivatives, tetrazole derivatives and the like. The rust inhibitor may be used alone, or in combination of two or more [col 13 lines 49-55]. Enomoto et al. also teaches an object of the invention is to provide a polyimide precursor that produces a patterned cured film that exhibits excellent i-line transmittance and low stress, and a photosensitive resin composition that includes the polyimide precursor [col 2 lines 54-58] and the photosensitive resin compositions of Examples 13 to 21 exhibited excellent sensitivity and excellent resolution, and the cured films obtained using the photosensitive resin compositions of Examples 13 to 21 exhibited a low stress of 30 MPa or less [col 31 lines 27-31].
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 Enomoto et al. to include other known polymerizable compounds such as the polymerizable monomer represented by formula (5) of Tsuchiya et al. through routine experimentation of substituting equally suitable components for the sought invention and arrive at the instant claims in order to suppress the decrease in adhesion between the cured product and the substrate under high temperature and high humidity, improve crosslinking density and photosensitivity, suppress swelling of the pattern after development, as well as achieve excellent i-line transmittance, low stress, sensitivity and resolution.
With regard to claim 6, Enomoto et al. does not teach a thermal polymerization initiator.
However, Tsuchiya et al. teaches the photosensitive resin composition of the present invention may further comprise (E) a thermal polymerization initiator (hereinafter also referred to as “component (E)”) from the viewpoint of promoting the polymerization reaction [col 11 lines 6-10].
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 Enomoto et al. to additionally include a thermal polymerization initiator and arrive at the instant claims in order to promote the polymerization reaction.
With regard to claims 7-12, Enomoto et al. teaches a cured film is obtained by heating the polyimide precursor according to the invention to effect polyimidization [col 19 lines 51-52]. Enomoto et al. also teaches the patterned cured film according to the invention is obtained by exposing and heating the photosensitive resin composition according to the invention [col 20 lines 39-41] and the method for producing a patterned cured film according to the invention includes: applying the photosensitive resin composition according to the invention to a substrate, and drying the applied photosensitive resin composition to form a film; exposing the film in a pattern by applying active rays to the film; removing an unexposed area of the film by development to obtain a patterned resin film; and heating the patterned resin film [col 20 lines 47-54] and when heating the patterned resin film, the patterned resin film is heated at 80 to 400°C for 5 to 300 minutes to imidize the polyimide precursor included in the photosensitive resin composition to obtain a patterned cured film [col 21 lines 33-36].
Response to Arguments
Applicant's arguments filed April 3, 2026 have been fully considered but they are not persuasive. Applicant argues regarding the double patenting rejection over U.S. 9,751,984 (Enomoto) in view of U.S. 11,487,201 (Tsuchiya) and the 103 rejection over Enomoto in view of Tsuchiya, as admitted by the Examiner, “the patented claims do not specify the addition-polymerizable compound” and “Enomoto does not teach a compound represented by formula (43)”. The Enomoto patent does not disclose the combination of components (A) and (B), component (C), and the specific component (D) as recited in claim 1. Neither U.S. 11,487,201 nor WO2018181893 Tsuchiya remedies this deficiency. Moreover, the photosensitive composition of the present invention, containing the specific component (D), exhibits unexpected results with respect to resolution and appearance change, see Table 1 in the specification. Specifically, Examples 3 and 4 are used as Test Comparative Examples 1 and 2 against Examples 5 and 7. It was found that the photosensitive resin composition of Example 5 containing D1 and D2 exhibits excellent resolution and appearance change as compared to Test Comparative Example 1 (original Example 3) containing D1. Also, Example 7 containing D1 and D3 exhibits excellent appearance change as compared to Test Comparative Example 1 (original Example 3) containing D1. These results would not have been expected from the applied references. Therefore, the presently claimed invention would not have been obvious from the claims of Enomoto in view of U.S. 11,487,201 or from Enomoto and Tsuchiya.
The Examiner respectfully disagrees. The difference in resolution among the Examples is well within the standard deviation of compositions comprising different compounds, especially ones that were once considered part of Applicant’s invention and collectively seen as advantageous over the Comparative Examples. Specifically, page 28 recites “From Table 1, it can be seen that the cured film obtained by using the photosensitive resin composition of the invention has high adhesiveness after storage at high temperature condition. In addition, the photosensitive resin composition is excellent in sensitivity and resolution, and the obtained cured film has little change in appearance. On the other hand, it can be seen that the cured films obtained in Comparative Examples 1 and 2 without using the specific component (D) have low adhesiveness after storage at high temperature condition”. It’s clear from Applicant’s own specification that the results for Examples 3 and 4, now Test Comparative Examples 1 and 2, were once considered equally superior to that of actual Comparative Examples 1 and 2. Additionally, Enomoto specifically teaches “When the photosensitive resin composition according to the invention is used for (applied to) a copper substrate, it is preferable that the photosensitive resin composition include (g) tetrazole or a tetrazole derivative, or benzotriazole or a benzotriazole derivative. When the photosensitive resin composition according to the invention is used for (applied to) a copper substrate (e.g., a redistribution layer 6 illustrated in FIG. 1 described later), and includes the oxime ester compound represented by the above-mentioned general formula (22) (e.g., IRGACURE OXE-01 (manufactured by BASF)), a polyimide residue may remain in an opening when forming a patterned cured film. The inventors of the invention assume that the above phenomenon occurs because a specific oxime ester compound generates radicals on the copper substrate during prebaking, and the unexposed area is also cured. In order to solve the above problem, it is preferable to incorporate the component (g) in the photosensitive resin composition. When the photosensitive resin composition includes the component (g), it is possible to suppress a situation in which a polyimide residue remains in an opening. A specific mechanism by which the component (g) exhibits the above effect is not clear. It is assumed that the component (g) forms a thin film on the copper substrate, and prevents a situation in which the resin composition comes in direct contact with the active metal surface, so that undesirable decomposition of a photoinitiator and a radical polymerization reaction in the unexposed area are suppressed, and photosensitivity can be achieved on the copper substrate” [col 18 line 50-col 19 line 12]. Tsuchiya also teaches “by comprising the rust inhibitor, corrosion of copper and copper alloy can be suppressed and discoloration of copper and copper alloy can be prevented. Examples of the rust inhibitor include triazole derivatives, tetrazole derivatives and the like. The rust inhibitor may be used alone, or in combination of two or more” [col 13 lines 49-55]. Thus, both Enomoto and Tsuchiya specifically teach it is known that tetrazole compounds, i.e. Applicant’s claimed component (D), improves the appearance of a substrate. Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 205 USPQ 1069 1072. In the instant case, it would have been obvious to one of ordinary skill in the art to obtain a photosensitive resin composition comprising at least two compounds of Applicant’s (D) represented by formula (11) and formula(s) (12) and/or (13) through routine experimentation of combining equally suitable components for the sought invention with a reasonable expectation of success in appearance change. Lastly, the Examples and Comparative Examples are not commensurate in scope with claim 1. The polymer precursor having a structural unit represented by formula (1) is much broader in scope than the single polyimide precursor used in all Examples and Comparative Examples. Thus, it cannot be assumed that all polyimide precursors that meet the claimed limitation will also provide similar results as those relied upon for unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2020/0347226 and U.S. 6,310,135.
THIS ACTION IS MADE FINAL. 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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