DETAILED CORRESPONDENCE
This Office action is in response to the arguments received March 27, 2026.
The rejection 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the amendment to claim 6.
Any bolded text is new language to the previous office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over YUBA et al (2005/0153230) in view of TADOKORO et al (2018/0107114).
The claimed invention continues to recite the following:
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YUBA et al report a photosensitive resin composition comprising a polyimide resin ([0053]), a photopolymerizable monomer (para. [0105]) and a photoinitiator. (para [0107]), wherein the developers are reported in para. [0136], shown here:
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The combination of a polyimide resin composition in YUBA et al with any of the highlighted organic solvents would result in the claimed RED between the developer and the film before exposure where same or similar components are disclosed in the specification.
Applicants are directed to para. [0080] teaching a polymerizable functional group at its ends meeting claim 6, see below:
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TADOKORO et al report photosensitive composition for electronic parts comprising a polyimide-type resin having ethylenically unsaturated side groups and end groups, see para. [009] and para. [0012] below:
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The unsaturated groups added to the polyimide-type resin would bond at the side groups and on the terminal group, meeting the scope of claim 6.
The molecular weight of the resin falls within the claimed range of claim 8, see para. [0121] below:
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The method steps are found in claim 9 of YUBA et al for the coating, drying, exposing and developing steps.
Claims 1-5 are reported above for the polyimide resin.
Claim 7 is met in YUBA et al at para. [0240] which uses PMDA, disclosed in para. [0230].
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Claim 8 is met above for the Mw in para. [0121] of TADOKORO et al.
Claim 9 is met at para. [0272] for ultraviolet and excimer laser exposure of TADOKORO et al and para. [0027] of YUBA et al.
Claim 10 is met by the disclosure above for the photopolymerizable components in the composition of YUBA et al, see above top of page 4 of OA.
Claims 11-12 are met by the disclosure in para. [0213] for the polyfunctional monomers, shown here from TADOKORO et al:
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Claim 13 is met by para. [0114] in YUBA et al for teaching the use of adhesion promoters.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition having polyimide resin with unsaturated ends to develop the composition of YUBA et al with organic developers as reported above with the
reasonable expectation of same or similar results for small linear thermal expansion and high absorption of i-line light.
The rejection is repeated wherein the RED interpreted results below are pulled from a search in Google for the definition of RED:
“RED < 1.0: The two materials will dissolve or are highly compatible (a "good" solvent).
RED = 1.0: Partial solubility; the material is sitting right on the boundary of the solubility sphere.
RED > 1.0: The materials are incompatible and will not dissolve well (a "poor" solvent). “
The claimed range as recited in claim 1 is 0.50 or greater to less than 1.4 meaning that the two materials are in a range of highly compatible to incompatible and will not dissolve well (a “poor” solvent).
The polyimide end-capped resin of YUBA et al disclose a specific resin made from cyclohexane tetracarboxylic dianhydride and a diamine which is end-capped with aminophenol, see any of Synthesis Examples 7-9 in Table 1 and other such as Synthesis Examples 11-18, 20, 22, 23, 33-35, 37-44, 46, 48,49, 59-61, 62-70, 72, 74, 75.
YUBA et al further disclose that the developers can be mixtures of good solvents and poor solvents for the resin such as N-methyl pyrrolidone (NMP), cyclopentanone, cyclohexanone and others. This disclosure inherently teach that the developers are good solvents for the resin composition meaning the RED would be in a range of RED <1.0 to RED =1 as the developer necessarily must dissolve the resin composition in the either treated or untreated areas (exposed/unexposed areas), see page 24, para. [0136]
The rejection is repeated wherein the resin compositions of YUBA et al would possess the claimed RED (relative energy difference) recited in claim 1 based on the disclosure in para. [0136].
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
YORISUE et al (2018/0373147) disclose photosensitive composition comprising polyimide resins with end groups that can be capped with an isocyanato ethyl acrylate, see page 31 para. [0300] - [0301], below:
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LEE et al (4,421,905) disclose polyimides end-capped with either anhydride or isocyanate groups and teach the use of cyclopentane tetracarboxylic dianhydride as a precursor, see col. 5, lines 12-13:
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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 JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
June 3, 2026
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