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 Arguments
Applicant’s arguments, see pages 7-9, filed 27 February 2026, with respect to the rejection(s) of claim(s) 1 and its dependent claims under 35 U.S.C. 103 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 Therefore, the rejection has been withdrawn.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 in view of US 20200319549 A1 (hereby referred to as Tanigaki).
Applicant has amended instant claims 1 and 12. Claim 1 has been amended to recite that the polyfunctional radically polymerizable compound (B) has 7.8 or more and 85.5 or less radically polymerizable functional groups. Claim 12 has been amended to change the claim language, thereby removing the intended use limitation previously present in the claim. Applicant argues that the previously cited art (De) fails to render obvious claim 1, as amended, due to De failing to teach or suggest a polyfunctional radically polymerizable compound (referred to as the reactive functional compound or RFC in De’s disclosure) that has between 7.8 and 85.5 radically polymerizable functional groups. Upon review of De’s disclosure, Applicant’s argument in this regard is found to be persuasive, as it appears that De only teaches or suggests RFCs having up to 6 radically polymerizable functional groups. The other cited prior art (Ichioka and Takemura) fails to remedy this deficiency of De. Accordingly, the previous rejection is withdrawn. However, a new rejection is presented in view of US 20200319549 A1 (hereby referred to as Tanigaki), as explained below.
In addition to De failing to teach or suggest all of the features recited by instant claim 1, the Applicant argues that a person having ordinary skill in the art (PHOSITA) would understand that De does not suggest or teach that the number of functional groups should exceed six and further argues that there would not have been any motivation to modify De’s invention because the negative effects of De’s materials would not have been observed in the films taught by De, due to the thickness of such films being small. The Examiner notes that De does not explicitly state that a RFC having more than 6 functional groups is incompatible with De’s invention, and only requires that the RFC possess at least one functional group (see De, paragraph 0094). The named compounds are not limiting, per De’s disclosure (see De, paragraph 0096). Accordingly, a RFC having more than six functional groups would be compatible with De’s invention, absent of evidence suggesting otherwise. In addition, MPEP 2144 I. and MPEP 2144 IV. outline valid rationales to support a rejection under 35 U.S.C. 103. In particular, MPEP 2144 IV. states that rationale different from the Applicant’s rationale is permissible. Thus, a prima facie case of obviousness can exist for De’s invention even if, arguendo, a PHOSITA would not necessarily arrive at the same problem observed by the Applicant (which the Examiner does not necessarily concede at this point). As noted above, a new rejection is presented in view of US 20200319549 A1 (hereby referred to as Tanigaki), wherein the new rejection relies upon recognized rationales to establish prima facie obviousness. Therefore, the Applicant’s arguments in regards to the obviousness of modifying De’s invention are not found to be persuasive.
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.
Claim(s) 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160313641 A1 (hereby referred to as De) in view of US 20200319549 A1 (hereby referred to as Tanigaki).
Regarding Claims 1-2, 6, and 8-10, De discloses photosensitive polyimide compositions. The composition comprises at least one polyimide polymer, at least one reactive functional compound (RFC), and at least one photoinitiator (De, paragraph 0025). The polyimide polymer is prepared by reaction of at least one diamine with at least one dianhydride (De, paragraph 0026). Paragraph 0026 of De provides examples of suitable diamines. Of note, De recites 2,2’-bis(trifluoromethyl) benzidine and 1-(4-aminophenyl)-2,3-dihydro-1,3,3-trimethyl-1H-inden-5-amine as suitable diamines to produce the polyimide resin (De, paragraph 0026). These specific diamines provide units recited by instant claims 9 and 10. The dianhydride comonomer is preferably a tetracarboxylic acid dianhydride having Structure (V), which is reproduced below (De, paragraph 0035-0036).
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In Structure (V), Y represents a tetravalent organic group (De, paragraph 0037). Specific examples of suitable tetracarboxylic acid dianhydride monomers are taught in paragraphs 0061-0063 of De, including the following shown on page 7 of De’s publication.
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De notes that the diamine reacts with the dianhydride to yield a polyamic acid structure (De, paragraph 0066), and that multiple synthetic pathways exist to convert the polyamic acid to a polyimide polymer (De, paragraph 0073-0081). Structures (VIIIa) and (VIIIb) (see paragraph 0073 of De) show the resulting polyimide structure in the cases where excess diamine is used in the polyamic acid synthesis and excess dianhydride is used in the polyamic acid synthesis, respectively (De, paragraph 0070-0071 and 0073). As can be seen in structures (VIIIa) and (VIIIb), the repeating unit of the polyimide is of the same form as Formula (1) as recited by instant claim 1. The terminal -NH2 groups of the polymer obtained when excess diamine is used can be replaced with an end-capping compound having a functional group that is reactive with an amine, such as epoxide compounds and isocyanate compounds (De, paragraph 0082). The following compounds are taught to be suitable for end-capping purposes (De, paragraph 0083).
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The epoxide structure, upon reaction with an amine, yields a group represented by Formula (3) (as recited by instant claim 1) as the terminal group of the polymer. The isocyanate structure, upon reaction with an amine, yields a group represented by Formula (2) (as recited by instant claim 1) as the terminal group of the polymer. De further teaches that the molecular weight of the polymer is at least 10,000 Daltons and at most about 90,000 Daltons (De, paragraph 0070 and 0072). As the reactive functional compound (RFC), a compound having at least one functional groups that are reactive with other RFC compounds and/or the terminal groups of the polyimide polymer is chosen (De, paragraph 0094). Such compounds include (meth)acrylate monomers or oligomers (De, paragraph 0094). Specific examples may include pentaerythritol tetra(meth)acrylate, dipentaerythritol penta(meth)acrylate, and dipentaerythritol hexa(meth)acrylate (De, paragraph 0096), which are (meth)acrylate monomers possessing four, five, and six unsaturated bonds capable of polymerization, respectively.
De does not disclose an inventive example according to the instant application’s claimed invention. In other words, De does not explicitly provide a photosensitive polyimide resin composition according to instant claim 1. However, the broader disclosure of De provides a plurality of diamines, dianhydrides, and terminal groups, that when chosen appropriately, would yield the claimed invention. Thus, per MPEP 2143 I. B., MPEP 2143 I. E., and/or MPEP 2144.06 II., a prima facie case of obviousness exists. Specifically, one having ordinary skill in the art would find it obvious, in view of the disclosure of De, to choose to terminate a polyimide polymer for the photosensitive polyimide resin composition with either of the aforementioned terminal groups to increase the degree of crosslinking polymerization with the radically polymerizable compound in the photosensitive composition (due to the inclusion of additional radically polymerizable groups), thus yielding a stronger crosslinked network. Furthermore, one having ordinary skill in the art would find it obvious to use a diamine skeleton such as those recited by instant claims 9 and 10 because these structures are taught by De to be functionally equivalent to the other diamine structures for the purposes of producing a polyimide for the photosensitive resin composition (see De, paragraph 0026). Lastly, one having ordinary skill in the art would have found it obvious to obtain a polyimide having a molecular weight of more than 5000 Daltons and less than 70,000 Daltons, as De discloses that the polymer should have a molecular weight between 10,000 Daltons and 90,000 Daltons. Per MPEP 2144.05 I., an overlapping range creates a prima facie case of obviousness.
However, De is silent in regards to the inclusion of a polyfunctional radically polymerizable compound having 7.8 or more and 85.5 or less radically polymerizable functional groups. Tanigaki teaches a photosensitive resin composition and products formed from the same. The photosensitive resin composition comprises an alkali-soluble resin, a photosensitive agent, a black colorant, and a crosslinking agent (Tanigaki, paragraph 0026). The alkali-soluble resin contains a resin comprising a polyimide structure (Tanigaki, paragraph 0027). The alkali-soluble resin may have the end groups (e.g. terminals of the resin) be an end-capping agent (Tanigaki, paragraph 0110), which is analogous to the polyimide polymer of both the instant application and of De. The photosensitive agent of Tanigaki’s composition is a radical polymerizable compound (Tanigaki, paragraph 0237). Examples of the radical polymerizable compound include pentaerythritol tetra(meth)acrylate, dipentaerythritol penta(meth)acrylate, dipentaerythritol hexa(meth)acrylate, tripentaerythritol hepta(meth)acrylate, tripentaerythritol octa(meth)acrylate, tetrapentaerythritol nona(meth)acrylate, tetrapentaerythritol deca(meth)acrylate, pentapentaerythritol undeca(meth)acrylate, and pentapentaerythritol dodeca(meth)acrylate, amongst other compounds (Tanigaki, paragraph 0241). The Examiner notes that tripentaerythritol octa(meth)acrylate, tetrapentaerythritol nona(meth)acrylate, tetrapentaerythritol deca(meth)acrylate, pentapentaerythritol undeca(meth)acrylate, and pentapentaerythritol dodeca(meth)acrylate have 8, 9, 10, 11, and 12 radically polymerizable functional groups, respectively.
De and Tanigaki are analogous art because both references pertain to photosensitive resin compositions comprising polyimide polymers. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to use tripentaerythritol octa(meth)acrylate, tetrapentaerythritol nona(meth)acrylate, tetrapentaerythritol deca(meth)acrylate, pentapentaerythritol undeca(meth)acrylate, or pentapentaerythritol dodeca(meth)acrylate as the polyfunctional radically polymerizable compound, as taught by Tanigaki, in place of the RFC compounds taught by De because tripentaerythritol octa(meth)acrylate, tetrapentaerythritol nona(meth)acrylate, tetrapentaerythritol deca(meth)acrylate, pentapentaerythritol undeca(meth)acrylate, and pentapentaerythritol dodeca(meth)acrylate are taught to be equivalents to pentaerythritol tetra(meth)acrylate, dipentaerythritol penta(meth)acrylate, and dipentaerythritol hexa(meth)acrylate for the purposes of use as a radically polymerizable compound in a photosensitive resin composition (see Tanigaki, paragraph 0241). Pentaerythritol tetra(meth)acrylate, dipentaerythritol penta(meth)acrylate, and dipentaerythritol hexa(meth)acrylate are named as suitable radically polymerizable compounds for De’s invention (see De, paragraph 0096), and thus per MPEP 2144.06 II., a prima facie case of obviousness exists. Furthermore, Tanigaki teaches that such compounds accelerate UV curing during exposure and improve crosslink density after thermal curing, allowing the hardness of the cured film to be improved (Tanigaki, paragraph 0239).
Regarding Claims 3-4, De discloses that the amount of polyimide in the entire weight of the photosensitive polymeric composition is at least about 5 weight% to at most about 95 weight% (De, paragraph 0107). De further discloses that the amount of the reactive functional compound (RFC) in the entire weight of the photosensitive polymeric composition is at least about 1 weight% and at most about 50 weight% (De, paragraph 0108). The amount of the RFC with respect to the amount of the polyimide polymer is at most about 60 weight% and at least about 10 weight% (De, paragraph 0109-0110). Per MPEP 2144.05 I., the overlapping ranges of the content of these components with the ranges recited by instant claims 3 and 4 presents a prima facie case of obviousness.
Regarding Claim 5, De is silent in regards to the presence of a colorant in the composition. One having ordinary skill in the art would presume that there is no colorant present in De’s resin composition. Therefore, the composition has a colorant content that is less than 10 parts by mass based on 100 parts by mass of the polyimide resin.
Regarding Claim 7, De is silent in regards to the light transmittance of the polyimide resin when formed into a solution with a solid content concentration of 3 mass%. However, De renders obvious a polyimide structure according to instant claim 1, and further teaches specific diamine structures such as those recited by instant claim 10, as discussed above. Therefore, one having ordinary skill in the art would expect that the polyimide resin taught by De would possess the light transmittance properties recited by instant claim 7, due to the polyimide resin of De being obtained from structurally similar or identical chemical species as the polyimide resin of the instant invention. See MPEP 2144.09 I.
Regarding Claim 11, De discloses that the photosensitive polyimide resin composition comprises at least one photoinitiator (De, paragraph 0025). The composition may also include at least one organic solvent (De, paragraph 0103), and additives such as adhesion promoters, surfactants, nanoparticles, and plasticizers may also be included (De, paragraph 0112).
Regarding Claim 12, De further discloses that the polymeric composition can be formed into a film and disposed between a carrier substrate and a protective layer (De, paragraph 0025), thus acting as an insulating film. The polymeric layer may be crosslinked (De, paragraph 0136).
Regarding Claim 13, De discloses that the photosensitive polyimide resin composition may be formed into a cured film (De, paragraph 0147 and paragraphs 0136, 0138-0139, and 0143-0144).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160313641 A1 (hereby referred to as De) in view of US 20200319549 A1 (hereby referred to as Tanigaki) as applied to claim 1 above, and further in view of US 20190294045 A1 (hereby referred to as Ichioka).
Regarding Claim 5, the combination of De and Tanigaki renders obvious the photosensitive polyimide resin composition according to instant claim 1, as explained above. However, De is silent in regards to the inclusion of a colorant in the photosensitive resin composition. Tanigaki teaches the inclusion of a colorant in the photosensitive resin composition (Tanigaki, paragraph 0315), but does not teach a colorant content in accordance with the amounts recited by instant claim 5.
Ichioka teaches a photosensitive resin composition and products formed from the same. The photosensitive resin composition comprises a polyimide resin, a crosslinking agent, a photoacid generator, a polyfunctional compound, a filler, and a colorant (Ichioka, paragraph 0034). The photosensitive resin is considered analogous to the ones taught by De and Tanigaki, as each composition comprises polyimide resins and a polymerizable compound. The colorant is included in an amount of 0.01 to 30 parts by weight per 100 parts by weight of the polyimide resin (Ichioka, paragraph 0138). More preferably, the colorant is present in an amount of 0.8 to 5 parts by weight per 100 parts by weight of the polyimide resin (Ichioka, paragraph 0138).
De, Tanigaki, and Ichioka are analogous art because each reference pertains to polyimide resin-containing photosensitive compositions. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to include a colorant an amount of less than 10 parts by mass per 100 parts by mass of the polyimide resin, as taught by Ichioka, in the composition obtained by combining the teachings of De and Tanigaki because an amount of colorant less than 10 parts by mass based on 100 parts by mass of the polyimide resin prevents a substantial drop of light transmittance (and thus avoiding under-cure related issues) whilst providing sufficient coloring effects (see Ichioka, paragraph 0138).
Claim(s) 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160313641 A1 (hereby referred to as De) in view of US 20200319549 A1 (hereby referred to as Tanigaki) as applied to claim 1 above, and further in view of US 20180275513 A1 (hereby referred to as Takemura).
Regarding Claims 12-15, the combination of De and Tanigaki renders obvious the photosensitive polyimide resin composition according to instant claim 1, as explained above. De further suggests a cured film formed from the composition. However, De does not teach or suggest a resin film having a 20 μm thickness or greater. Tanigaki teaches that the thickness of the photosensitive resin composition, when coated on a substrate and prebaked, is typically between 0.1 and 30 μm (Tanigaki, paragraph 0542), but is silent in regards to the final thickness following development and processing.
Takemura teaches a polyimide polymer precursor and photosensitive resins containing the same. The photosensitive resin composition contains the polyimide polymer, a photopolymerization initiator, a photocurable compound having two or more unsaturated bonding groups, and a solvent (Takemura, paragraph 0061). It is apparent that the photosensitive resin composition of Takemura is analogous to the photosensitive resin compositions taught by De and Tanigaki. Takemura further teaches that the photosensitive resin composition is used to produce a cured film, and may be used for electronic devices or as an insulating protective film (Takemura, paragraph 0073). The thickness of the film formed from the photosensitive resin composition may be between 1 and 50 μm, and is preferably between 1 and 30 μm thick, and more preferably between 5 and 20 μm thick (Takemura, paragraph 0342).
De, Tanigaki, and Takemura are analogous art because each reference pertains to polyimide resin-containing photosensitive compositions. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to form a cured film having a thickness of 20 μm or greater, as suggested by Takemura, using the photosensitive resin composition obtained by combining the teachings of De and Tanigaki to obtain a film having improved patternability and toughness. Furthermore, it would have been obvious to one having ordinary skill in the art before the filing date of the instant application to use such a film for electronic devices because the polyimide resin provides a high glass-transition temperature, which allows for the electronic device to maintain mechanical integrity and provides improved resistance to chemicals during processing steps such as soldering (see De, paragraph 0145 and Takemura, paragraph 0350).
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.
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734