DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on September 8, 2026 has been fully considered. Cancellation of claims 1-19 and addition of new claims 21-27 are acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 20-21, 23-24 are rejected under 35 U.S.C. 103 as unpatentable over Dershem et al (US 2014/0275413), as evidenced by Mizori (WO 2021/113415, Mizori’643) and Mizori (US 2018/0237668, Mizori’668).
It is noted that while the rejection is made over WO 2021/113415 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. 2023/0143643 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0143643.
5. Dershem et al discloses an adhesive composition and film (claims 1, 20; as to instant claims 20, 23-24) comprising:
A) about 99%wt of a bismaleimide of hydrogenated C-36 dimer diamine (claims 1,3,5) and further
B) a free radical initiator comprising organic peroxides (claim 9),
wherein the component A) comprises hydrogenated low viscosity bismaleimide of dimer diamines commercially available under a trademark Priamine-1074 and Priamine-1075 ([0069]), and is having the following formula/compound A (page 6):
PNG
media_image1.png
310
384
media_image1.png
Greyscale
Compound A
Wherein R is H ([0068], page 9).
It is further noted that Dershem et al recites bismaleimides as having the following formula B ([0044]):
PNG
media_image2.png
96
132
media_image2.png
Greyscale
Formula B
Thus, the commercial dimer diamines Priamine-1074 and Priamine-1075 appear to correspond to moiety “R” of Formula B above and moiety “D” in formula (1-1) of instant claim 20.
6. Based on the teachings of Dershem et al, it would have been obvious to a one of ordinary skill in the art to choose and use the bismaleimides of hydrogenated dimer diamines Priamine-1074 and Priamine-1075 as the component A) to prepare the composition of Dershem et al, including adhesive composition and adhesive film, as well, since it would have been obvious to choose material based on its suitability.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
7. It is further noted that the commercial products PRIAMINE 1074 and PRIAMINE-1075 are used in instant invention as the dimer acid-derived diamines used to prepare bismaleimides of instant claim 20, and are characterized as being hydrogenated and having dimer : trimer ratio of 95:5 and 98:2, respectively (see p. 39, lines 4-8 of instant specification). Therefore, the commercial products PRIAMINE 1074 and PRIAMINE-1075 (corresponding to moiety “D” of formula (1-1)) used to form the bismaleimide compound A) in the composition of Dershem et al will intrinsically and necessarily be hydrogenated and having at least 95%by mass, or at least 98%by mass of the dimer acid derived hydrocarbon as well (as to instant claims 20, 21). “Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. Further, as evidenced by Mizori’643, the hydrogenated bismaleimide produced using the commercial product PRIAMINE 1074, and corresponding to formula A of Dershem et al, is having molecular weight of 689 Da ([0267]-[0268], Table 13 of Mizori’643).
9. As evidenced by Mizori’668, the bismaleimide of dimer diamine compound corresponding to the formula A of Dershem et al, i.e. as shown below:
PNG
media_image3.png
488
429
media_image3.png
Greyscale
Structure C,
is having viscosity of 1000-1500 cps (1-1.5 Pa.s) ([0149], [0150] of Mizori’668).
10. Since the bismaleimide having the formula A of Dershem et al and prepared using commercial products PRIAMINE 1074 and PRIAMINE 1075, is essentially the same as that used and claimed in instant invention, and further based on the evidence provided by Mizori’643 and Mizori’668 regarding Mn and viscosity of said bismaleimide-based products, the bismaleimide of dimer diamine component A) of the composition of Dershem et al will intrinsically and necessarily have a number average molecular weight the same as that claimed in instant invention, i.e. not larger than 1,150 as well and a viscosity of not higher than 7.0 Pa.s determined under the conditions as claimed in instant invention as well (as to instant claim 20). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions, if not taught, may be very well met by the compositions of Dershem et al, since the compositions of Dershem et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. Claims 20-21, 23-27 are rejected under 35 U.S.C. 103 as unpatentable over Dershem et al (US 2014/0275413) in view of Mizori (WO 2021/113415, Mizori’643), as evidenced by Mizori (US 2018/0237668, Mizori’668) and Mizori (WO 2021/113415, Mizori’643).
It is noted that while the rejection is made over WO 2021/113415 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. 2023/0143643 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0143643.
12. The discussion with respect to Dershem et al (US 2014/0275413), as evidenced by Mizori (WO 2021/113415, Mizori’643) and Mizori (US 2018/0237668, Mizori’668), set forth in paragraphs 4-10 above, is incorporated here by reference.
13. Though Dershem et al discloses said composition being used as an adhesive film, Dershem et al does not explicitly teach said film and the composition being used in a prepreg, printed-wiring board and an interlayer insulating material.
14. However, Mizori’643 discloses a matrix formulation comprising a curable polyimide compound of formula 13 below (claim 7, page 50) in combination with organic peroxide initiator (claim 15), wherein said matrix formulation is used for making a prepreg comprising said matrix formulation and fiber support (claim 32), a printed circuit board (claim 53), and an adhesive film in copper foil laminates (claim 55):
PNG
media_image4.png
300
349
media_image4.png
Greyscale
Formula 13
15. Thus, Mizori’643 teaches the compositions comprising bismaleimide compounds comprising dimer diamines that are being used for making adhesive films, can also be used in prepregs, printed circuit boards and clad laminates.
16. Since the compositions comprising bismaleimide compounds comprising dimer diamines are taught in the art as being used for making adhesive films, in prepregs, printed circuit boards and clad laminates, as shown by Mizori’643, therefore, based on the combined teachings of Mizori’643 and Dershem et al, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use the composition and adhesive films of Dershem et al to form prepregs with fiber base, clad laminates and printed circuit boards as well, since it would be obvious to choose material based o its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
17. Claims 20-24, 26 are rejected under 35 U.S.C. 103 as unpatentable over Dershem et al (US 2014/0275413) in view of Yamada et al (US 2018/0201579), as evidenced by Mizori (US 2018/0237668, Mizori’668) and Mizori (WO 2021/113415, Mizori’643).
It is noted that while the rejection is made over WO 2021/113415 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. 2023/0143643 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0143643.
18. The discussion with respect to Dershem et al (US 2014/0275413), as evidenced by Mizori (WO 2021/113415, Mizori’643) and Mizori (US 2018/0237668, Mizori’668), set forth in paragraphs 4-10 above, is incorporated here by reference.
19. Though Dershem et al discloses said composition being used as an adhesive film, Dershem et al does not explicitly teach said film and the composition being used as a semiconductor encapsulation material and insulating material.
20. However, Yamada et al discloses a composition comprising a bismaleimide comprising an aliphatic diamine compound as a diamine component, wherein said aliphatic diamine comprises Priamine 1074 and/or Priamine 1075 ([0032]), the bismaleimide-based composition having low acid value and low corrosion, and is used as an adhesive, an electrical insulating material and a sealant that is applied to semiconductors ([0029], [0138]).
21. Since both Yamada et al and Dershem et al are related to adhesive compositions based on bismaleimide of a dimer diamine Priamine 1074 or Priamine 1075, and thereby belong to the same field of endeavor, wherein Yamada et al teaches said bismaleimide compound having low acid value and low corrosion and the adhesive comprising said bismaleimide being applied to semiconductors, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Dershem et al and Yamada et al, and to choose and use or obvious to try to use the low acid value bismaleimide of Priamine 1074 or Priamine 1075 of Yamada et al as the component A) in the composition of Dershem et al, and further use said composition as the adhesive film to be applied to semiconductors to encapsulate those as well, given such is desired, thereby arriving at the present invention, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Response to Arguments
22. Applicant's arguments filed on September 8, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
23. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
1) Instant claims are silent with respect to any properties of the curable resin composition; it is not clear which properties and at what levels are the goal of instant invention.
2) Instant specification does not provide sufficient evidence of criticality in using specifically organic peroxide as the catalyst; all examples of instant invention are based on the use of the specific commercial peroxide Trigonox 101, no other catalysts (as comparative) are presented in Examples of instant specification.
3) All inventive examples 1-1 to 6-1 of Table 2 of instant specification are based on using commercial dimer diamines Priamine 1074 and/or Priamine 1075.
The scope of instant claim 20 is broader than the scope of the inventive examples 1-1 to 6-1. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
