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 .
Response to Amendment
Applicant’s claim amendments and remarks filed March 3, 2026 are entered and have
been fully considered. Applicant has amended the claims to overcome the 112b and 112d rejections of claims 12 and 13, therefore they are withdrawn.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7-19 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “R is a tetravalent group with 4 or more and 10 or less carbons, having a cyclic structure, an acyclic structure, or a cyclic structure and an acyclic structure”, and the claim also recites “wherein the tetravalent group has a structure represented by removal of four hydrogen atoms from cyclohexane, cyclopentane, cyclobutane, bicyclopentane, or a stereoisomer thereof” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The narrower limitation limits the R group to only alicyclic structures with 4, 5, 6, or 10 carbons.
Claims 2-5, 7-19 are rejected due to their dependency on claim 1 and do not correct the issue.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-8, 11-12, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigaki et al, WO2018181311 (use US20200110337 for translation and paragraph numbers).
Regarding claims 1, 5, 7, 12, Tanigaki teaches a photosensitive resin composition comprising a polyimide resin (A1-1) with a closed ring structure (see formula 1 ¶[0037]), and a radically polymerizable compound (B), abstract and ¶[0037]. In formula 1, R1 is a tetravalent to decavalent group, such as alicyclic tetracarboxylic acids and derivatives thereof ¶¶[0038-0040], and specifically lists 1,2,4,5-cyclohexanetetracarboxylic acid, 1,2,3,4-cyclobutane tetracarboxylic acid and the dianhydrides thereof, ¶[0066], which reads on the claimed R group.
The R2 in Tanigaki’s formula 1 is from a diamine monomer, which can be an aromatic diamine, ¶[0078], which reads on the claimed A of claims 1 and 12.
Tanigaki then teaches it is preferable to introduce an unsaturated double bond onto the polyimide, ¶[0107]. Formula (63), where a=0, ¶¶[0110-0111], reads on the claimed formula (2), and in the examples, 2-methacryloxyethyl isocyanate (MOI) is exemplified as the compound for adding the unsaturated double bond to a polyimide, ¶[0643, 0670].
Tanigaki further teaches the polyimide is then used in compositions with at least one radically polymerizable compound (B) that contains (meth)acrylic groups, ¶[0250]. A flexible radically polymerizable compound is ethoxylated or propoxylated dipentaerythritol hexaacrylate ¶[0297], and is exemplified by the commercial A-DPH-6E for the ethoxylated dipentaerythritol hexaacrylate having 6 oxyethylene structures in the molecule, and A-DPH-6P for the propoxylated dipentaerythritol hexaacrylate having 6 oxypropylene structures in the molecule, ¶¶[0600-0601] and see Table 2-2 page 64, which reads on the radically polymerizable compound of claims 1, 5 and 7.
The fact that Tanigaki discloses numerous types of monomers for forming the polyimide and radically polymerizable compounds which can be suitably selected to form a photosensitive polyimide resin composition does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a ring closed polyimide from an alicyclic tetracarboxylic acid and a diamine, add an unsaturated double bond terminal group, and react with an ethoxylated or propoxylated dipentaerythritol hexaacrylate with the motivation of producing another permutation of a photosensitive polyimide resin composition as disclosed by Tanigaki.
Regarding claim 2, the molecular weight of the polyimide is 1,000-500,000 g/mol ¶[0116], which encompasses the claimed range. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 3, Tanigaki teaches the resin (A1), which is the polyimide resin accounts for 25% or more by mass in the composition, preferably 80% by mass or more, ¶[0245], which encompasses the claimed range.
Regarding claim 4, the radically polymerizable compound (B) accounts for 15-65 parts by mass relative to 100 parts of the total (A) (polyimide) and (B) ¶[0252]. This calculates to 17.6-185 parts (B) per 100 parts (A), which encompasses the claimed range.
Regarding claim 8, the polymerizable A-DPH-6E and A-DPH-6P have molecular weights of 842.88 g/mol and 927.04 g/mol respectively, Table 2-2 page 64.
Regarding claim 11, Tanigaki does not explicitly teach the claimed light transmittance, but does teach the same diamines ¶[0078] and tetracarboxylic dianhydrides ¶¶[0065-0066] as applicant, and reacting them in the same way to produce the claimed closed ring polyimide ¶[0034], as well as modifying the end groups with 2-methacryloxyethyl isocyanate (MOI) ¶[0670] to have the claimed terminal groups. Therefore, one of ordinary skill in the art is reasonably suggested that the closed ring polyimides of Tanigaki must have the transmittance recited by claim 11.
Regarding claim 13 and 14, Tanigaki further teaches the diamines 2,2′-bis(trifluoromethyl)-4,4′-diaminobiphenyl as an example of the diamine to use in ¶[0078], which is another name for the claimed 4,4’-diamino-2,2’-bis(trifluoromethyl)biphenyl. This diamine has the structure below, which also reads on the residue of claim 13 that is sixth from last.
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Regarding claim 15, Tanigaki teaches photoinitiators, abstract and ¶[0026].
Regarding claim 16, Tanigaki teaches the insulative properties (surface resistivity) of the cured films are measured ¶¶[0767-0768], and that the cured film can be used as an insulation layer, ¶[0246].
Regarding claim 17, Tanigaki teaches the compositions form a cured film, abstract and ¶¶[0001, 0786].
Regarding claim 18, Tanigaki teaches the compositions can be in a film thickness of 0.1-30µm after prebaking, ¶[0529].
Regarding claim 19, Tanigaki teaches the compositions are for displays for electronic devices such as mobile phones and televisions, ¶¶[0001-0003].
Allowable Subject Matter
Claims 9-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 9 and 10 are allowable for reasons stated in the previous office action dated 12/12/2025.
Response to Arguments
Applicant’s arguments, see pages 2-3, filed 3/3/2026, with respect to the rejection(s) of claim(s) 1-8,11-12,15-19 under 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 103.
The grounds of rejection have changed to 103 because Tanigaki teaches all of the claimed limitations but does not have a single embodiment containing every limitation. As stated above, Tanigaki teaches the tetracarboxylic acids, the aromatic containing diamines, adding an unsaturated double bond to the polyimide, and reacting with a polymerizable compound that has oxyethylene or oxypropylene groups and six (meth)acrylate functional groups.
In response to applicant’s argument that Tanigaki does not render obvious the claimed invention because it does not address the same problem and effect, examiner reminds applicant that the prior art need not have the same motivation as applicant. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done,” it is clear there must be motivation to make the claimed invention but there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., balance between thick film heat resistance and thick film flexibility) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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