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 Arguments
Applicant’s arguments, filed 4/21/2026, with respect to the rejection(s) of claim 1 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, the Applicant argues that xylenediamine of Kayaba does not read on the claimed structure (C). However, Kayaba does teach other compounds which do read on the claimed structure (C). While the 102(a)(1) rejection of Kayaba is withdrawn, it would have been obvious to select a different aromatic diamine of Kayaba diaminodiphenyl ether, diaminobenzene, diaminotoluene, methylenedianiline, dimethyldiaminobiphenyl, bis(trifluoromethyl) diaminobiphenyl (Paragraph [0129]), that does read on the limitation of structure (C).
In this case, the Applicant further argues that claim 1 is nonobvious over Kayaba as Kayaba does not distinguish between compounds that fall outside the range of compound (C) and compound (C). The Applicant argues that the composition comprising compound (C) instead of xylenediamine results in a lower thermal expansion coefficient.
The Examiner notes that the examples are not commensurate in scope with the claims, specifically, that compound (C) includes a variety of possible compounds, which can be heterocyclic macrocylic, alicyclic or cyclic peptides. The Examiner acknowledges that the inclusion of the further limitation of compound (C) in claim 13 would mean that component C is commensurate in scope with the claims. However, the Examiner notes that compounds (A) and (B) are still broad and the arguments do not address the broadness of compounds (A) and (B).
Compound A in the examples is taught as APDES or APTES. However compound A with the limitations of claim 1, (and also the limitations of claims 4 or 12) includes a variety of structures including many polysiloxanes, cyclic or otherwise, polymers comprising a modified siloxane functionality, or other small molecules comprising other atoms besides, N, O, C, H, and Si. (even where the limitation of claim 4 reads “alkyl” a substituted alkyl group still reads on the claimed “alkyl group”). Additionally there is no limitation on the mw or length of the alkyl group of compound A. The examples teach a narrow selection for the compounds of claim 1 compound A but compound A as described by claim 1 encompasses many different types of compounds.
Compound (B) in the examples is taught as ODPA and BDPA. These compounds comprise only C, O, and H, while compound B as described by claim 1 can comprise many different heteroatoms. Both these compounds comprise a 6 membered ring, while compound B as taught by claim 1 can comprise no ring structures. Both ring structures of compound (B) taught in the examples are connected by an oxygen. Compound (B) as taught by the examples also comprises an ester group while this is optional as defined by claim 1. Claim 1 teaches a very broad range for compound (B) while the examples recite only two very similar compounds. Therefore the examples are not commensurate with the scope of the claims with respect to compound (B).
The Examiner recommends similar arguments, along with an affidavit to explain why the examples are commensurate in scope with the claims, and/or an amendment narrowing the scope of claim 1 to reflect the scope of the examples.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-4, 5-8, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kayaba US 20180334588A1.
Regarding claims 1-3, 5, and 13, Kayaba teaches a composition comprising a compound (A) aminopropyldiethoxymethylsilane which includes a Si-O bond and a cationic functional group containing at
least one of a primary nitrogen atom or a secondary nitrogen atom (Abstract). This reads on the claimed “A.”
Kayaba also teaches the composition comprises a component (B) which comprises a which includes three or more-C(==O)OX groups (X is a hydrogen atom or an alkyl group having from I to 6 carbon atoms) in the molecule, in which from one to six of three or more -C(= O)OX groups are -C(= O)OH groups, and which has a weight average molecular weight of from 200 to 600. This reads on the limitations of (B).
Kayaba also teaches the composition can comprise an additional amine having a ring structure (Paragraph [0114]). Kayaba also teaches the additional amine can be dimethyldiaminobiphenyl (Paragraph [0129]). It would have been obvious to select dimethyldiaminobiphenyl as the additional aromatic amine because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This reads on the limitations of claim 1 where the cyclic structure has two primary nitrogen atom bonded to the cyclic structure and where the cyclic structure is a biphenyl group. This amine has a molecular weight of 212.29 g/mol. This falls within the claimed weight range of 80-600.
Kayaba teaches in Example 26 a composition comprising an additional amine component para-xylenediamine (Paragraph [0318]), which is listed in parallel with the other aromatic amines. Kayaba does teach that the amount of xylenediamine in the composition is 5% by mass and the amount of APDES, or component (A) in the composition is 2% by mass. The molar mass of APDES is 191.34 g/mol. The molar mass of xylene diamine is 136.2 g/mol.
This corresponds to 12.4% percent of primary and secondary nitrogen in A with respect to the total amount of nitrogen in (A) and (C). This falls within the claimed range of 3-95 mol%.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the amount of aromatic amine recognized in example 26 in this composition because example 26 represents a suitable amount of aromatic amine to add in the same composition and application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 4 and 12, Kayaba also teaches A is selected from a group comprising 3-aminopropyldiethoxymethylsilane, (Paragraph [0065]). This reads on the limitations of claims 4 and 12. It would have been obvious to select 3-aminopropyldiethoxymethylsilane as component A because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claim 6, Kayaba also teaches the composition comprises a polar solvent (Paragraph [0101]).
Regarding claim 7, Kayaba teaches the composition can be used in a semiconductor device (Title). This reads on the claimed “semiconductor device.”
Regarding claim 8, Kayaba teaches that the composition can be applied to a substrate (Paragraph [0146]). This reads on the limitations of claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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