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 .
Response to Amendment
2. The amendment filed by Applicant on March 30, 2026 has been fully considered. The amendment to instant claim 1 and addition of new claim 20 are acknowledged. Specifically, claim 1 has been amended to recite the catalyst being an organic peroxide catalyst. In light of the amendment filed by Applicant, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-12, 15-20 are rejected under 35 U.S.C. 103 as unpatentable over Mizori (WO 2021/113415, Mizori’643), as evidenced by Mizori (US 2018/0237668, Mizori’668), and as evidenced by Yamamoto et al (WO 2020/203834).
It is noted that while the rejection is made over WO 2020/203834 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. 2022/0179310 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0179310.
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.
4. Mizori’643 discloses curable compositions comprising the polyimides with curable maleimide moieties ([0002]), specifically:
A) a compound of general formula I:
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and further
B) a catalyst ([0024]), specifically an organoperoxide, an anionic initiator such as imidazole or cationic initiator catalyst ([0030], [0180]).
Based on the teachings of Mizori’643, it would have been obvious to a one of ordinary skill in the art to choose and use an organoperoxide as the catalyst in the curable composition of Mizori’643 as well, 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).
5. The specific compounds of the general formula I include the following compounds 1), 2) and 3):
1)
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Compound 13 (p. 8)
Compound 13 (corresponding to compound (1-1) of instant claims 1, 2 and 20); and/or
2)
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Compound 12 (corresponding to compound (1-2) of instant claims 1, 5);
and/or
3)
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Compound 11 (p. 38)
Compound 11 (corresponding to compound (1-3) of instant claim 8, also as to instant claims 10-11);
wherein Mizori’643 explicitly shows the Compound 11 having a glass transition temperature of 124⁰C (Table 11, [0262] of Mizori’643, as to instant claim 12).
24. As to instant claims 15-19, Mizori’643 further explicitly teaches the compositions comprising said compounds used to make prepregs with included fabrics, printed wiring boards, adhesive films, laminates ([0033], [0182], ([0184], [0186]-[0191]).
25. As to instant claims 1 and 20, the compound of formula 1) above (i.e. Compound 13 of Mizori’643) is produced from a commercial product PRIAMINE 1074 ([0267]-[0268], Table 13).
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As evidenced by Yamamoto et al, a commercial product PRIAMINE is dimer acid-derived diamine obtained by dimerizing the unsaturated bonds of the unsaturated carboxylic acid; the diacid is used to form a diamine; the dimer acid is introduced into the bismaleimide using said dimer-acid-derived diamine ([0025]-[0026] of Yamamoto et al).
It is further noted that the commercial product PRIAMINE 1074 is used in instant invention as the dimer acid-derived diamine and is characterized as being hydrogenated and having dimer : trimer ratio of 95:5 (see p. 39, lines 7-8 of instant specification).
Therefore, the commercial product PRIAMINE 1074 used to form the maleimide compound of formula 13 of Mizori’643 will intrinsically and necessarily be hydrogenated and having at least 95%by mass of the dimer acid derived hydrocarbon as well (as to instant claims 1 and 20). “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.
26. As to instant claims 3-4 and 20, since
a) the compound of formula 1) above (i.e. Compound 13 of Mizori’643) is produced from a commercial product PRIAMINE 1074 and is cited as having molecular weight of 689 Da ([0267]-[0268], Table 13).
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b) as evidenced by Mizori’668, the bismaleimide of dimer diamine compound corresponding to the Compound 13 of Mizori’643, i.e as shown below:
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Structure B,
is having viscosity of 1000-1500 cps (1-1.5 Pa.s) ([0149], [0150] of Mizori’668),
c) said compound 13 of Mizori’643 is essentially the same as that claimed in instant invention, and is produced from the same reactants including commercial diacid derived diamine PRIAMINE-1074, therefore,
the maleimide Compound 13 of Mizori’643 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 (as to instant claims 4, 20) 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 claims 3 and 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 Mizori’643, since the compositions of Mizori’643 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.
27. Though Mizori’643 does not explicitly recite the storage elastic modulus and hardness of a cured product produced from the curable composition comprising the maleimide having the Structures 1)-3) above as the component A), as determined according to the conditions as claimed in instant invention, since said cured product Mizori’643 is produced using the curable composition comprising the maleimide having the Structures 1)-3) above that are the same as those claimed in instant invention, in combination with organoperoxide catalyst, therefore, said cured product of Mizori’643 will inherently have, or would be reasonably expected to have the properties, including storage elastic modulus and hardness, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 6-7). 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 Mizori’643, since the compositions of Mizori’643 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.
28. As to instant claim 9, given
i) the values of “n” and ‘m” in the Structure 3) above, i.e. Compound 11 of Mizori’643, maybe 1-10 (page 38 of Mizori’643), which values are within the corresponding ranges of those as claimed in instant invention, i.e. m=1-100 and n=1-100;
ii) the Structure 3) above, i.e. Compound 11 of Mizori’668, is essentially the same as that claimed in instant invention, with group corresponding to the group D of instant claim 8 being the same residue of diacid-based diamine Priamine 1074 as disclosed and exemplified in instant invention and the group corresponding to the group B of instant claim 8 having the same aliphatic ring structure as claimed in instant claim 10;
Iii) the molar ratio between the group D and the group B of instant claim 9 is 20/80 to 65/35, i.e. either of the groups D and B maybe in molar excess,
therefore, depending on the specific values of n and m, the molar ratio between groups of the Structure 3) corresponding to the claimed groups D and B will intrinsically and necessarily be, or alternatively would be reasonably expected to be in the ranges of 20/80 to 65/35, or having ranges overlapping with those as claimed in instant invention as well. 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.
29. Claims 1, 5-12, 14-16, 18-19 are rejected under 35 U.S.C. 103 as unpatentable over Yamamoto et al (WO 2020/203834) in view of Mizori (WO 2021/113415, Mizori’643).
It is noted that while the rejection is made over WO 2020/203834 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. 2022/0179310 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0179310.
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.
30. Yamamoto et al discloses a photosensitive composition comprising:
A) a bismaleimide compound of formula (I):
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Wherein R1 (corresponding to moiety D of instant claims) presents a divalent hydrocarbon group (a) derived from a dimer acid;
R2 (corresponding to moiety B of instant claims) is a divalent organic group other than the divalent hydrocarbon group (a);
R3 (corresponding to moiety D of instant claims) is a divalent hydrocarbon group (a) derived from the dimer acid;
R4 and R5 maybe same or different and are independently one or more organic group having 4-40 carbon atoms with a monocyclic or polycyclic alicyclic structure;
m is integer 1-30;
n is an integer of 9-30 ([0019]),
the dimer acid-derived structure, the organic diamine-derived structure, the amic acid unit composed of the organic diamine and tetracarboxylic dianhydride maybe random or block ([0049], [0044]) and
B) a photopolymerization initiator ([0056], [0053]).
31. The dimer acid of the residue R1 and R3 is a dicarboxylic acid having 20-60 carbon atoms obtained by dimerizing the unsaturated bonds of the unsaturated carboxylic acid; the diacid is used to form a diamine; the dimer acid is introduced into the bismaleimide using said dimer-acid-derived diamine ([0025]-[0026]). The specific dimer acid-derived diamine is a commercial product PRIAMINE 1074 ([0026]).
It is noted that the commercial product PRIAMINE 1074 is used in instant invention as the dimer acid-derived diamine and is characterized as being hydrogenated and having dimer:trimer ratio of 95:5 (see p. 39, lines 7-8 of instant specification).
Therefore, the commercial product PRIAMINE 1074 used to form the bismaleimide of Yamamoto et al will intrinsically and necessarily be at least partially hydrogenated and having at least 95%by mass of the dimer acid derived hydrocarbon as well (as to instant claim 1, 20). “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.
32. Further, in the formula (I) of Yamamoto et al R2 and R5 maybe the same ([0049]). Given R5 is an organic group having 4-40 carbon atoms with a monocyclic or polycyclic alicyclic structure, and the R2 and R5 are the same, therefore, the group R2 (corresponding to moiety B of instant claims) will inherently, or intrinsically and necessarily, be an organic group having 4-40 carbon atoms with a monocyclic or polycyclic alicyclic structure as well.
33. The specifically cited groups R4 and R5 are as follows ([0030], also as to instant claim 11):
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Formulas A
Given the R2 and R5 are the same, therefore, the group R2 (corresponding to moiety B of instant claims) will inherently, or intrinsically and necessarily, be an organic group having the structure of Formulae A as well.
34. In the alternative, based on the teachings of Yamamoto et al, it would have been obvious to a one of ordinary skill in the art to choose and use the bismaleimide of Formula (I) having:
Compound C:
- dimer acid-derived diamine of a commercial product PRIAMINE 1074 as R1 and R3;
- R4 as one of the structures of Formulae A above; and
- n = 0,
Thereby forming the bismaleimide (i.e. Compound C) corresponding to formula (1-2) of instant claim 5.
The cured products produced from the curable compositions comprising the Compound C is having elastic modulus of 50-800 MPa ([0069]).
35. Further, based on the teachings of Yamamoto et al, it would have been obvious to a one of ordinary skill in the art to choose and use the bismaleimide of Formula (I) having:
Compound D:
- dimer acid-derived diamine of a commercial product PRIAMINE 1074 as R1 and R3;
- R4 and R5 are the same and are as one of the structures of Formulae A above;
- R2 is one of the structures of Formulae A above (as to instant claim 10), and
- n = 1-30, m=1-30,
Thereby forming the bismaleimide (Compound D) corresponding to formula (1-3) of instant claim 8.
36. As to instant claim 9, given
i) the value of “n” in the Compound D of Yamamoto et al maybe 1-30 and the value of “m” in the Compound D of Yamamoto et al maybe 1-30, which values are within the corresponding ranges of those as claimed in instant invention, i.e. m=1-100 and n=1-100;
ii) the structure of the Compound D of Yamamoto et al is essentially the same as that claimed in instant invention, with group R1 being the same residue of diacid-based diamine Priamine 1074 as disclosed and exemplified in instant invention and the group R2 having the same structures as claimed in instant claim 11;
Iii) the molar ratio between the group D and the group B of instant claim 9 (corresponding to groups R1 and R2 of Yamamoto et al) are 20/80 to 65/35, i.e. either of the groups D and B maybe in molar excess,
therefore, depending on the specific structures of group R2 in the Compound D and the specific values of n and m, the molar ratio between groups R1 and R2 in the Compound D will intrinsically and necessarily be, or alternatively would be reasonably expected to be in the ranges of 20/80 to 65/35, or having ranges overlapping with those as claimed in instant invention as well. 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.
37. Though Yamamoto et al does not explicitly recite the glass transition temperature of the composition comprising Compound D as the component A), since said composition of Yamamoto et al is essentially the same as that claimed in instant invention, therefore, the composition of Yamamoto et al comprising the Compound D as the component A), will inherently have, or would be reasonably expected to have the properties, including a glass transition temperature, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claim 12). 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 Yamamoto et al, since the compositions of Yamamoto 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.
38. As to instant claims 14-16, 18-19, the composition of Yamamoto et al is having excellent adhesive properties and is used as a protective film for a semiconductor, as an interlayer insulating film, an insulating film of a rewiring layer ([0018], [0001], [0112]).
39. Though Yamamoto et al discloses the use of photopolymerization initiator having ability to generate radicals ([0055]) as the catalyst to cure the bismaleimide (component B), but does not disclose the use of organic peroxide as the catalyst,
Mizori’643 discloses curable compositions comprising the polyimides with curable maleimide moieties ([0002]), specifically:
A) a compound of general formula I:
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and further
B) a catalyst ([0024]), including free-radical generator such an an organoperoxide, an anionic initiator such as imidazole or cationic initiator catalyst ([0030], [0180]).
Thus, Mizori’643 explicitly teaches that other free-radical generators including organoperoxides can be used to cure the bismaleimide compounds.
Based on the teachings of Mizori’643, it would have been obvious to a one of ordinary skill in the art to choose and use an organoperoxide as the catalyst in the curable composition of Mizori’643 as well, 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).
40. Since both Mizori’643 and Yamamoto et al are related to curable compositions based on bismaleimide compounds and free-radical generating catalysts, and thereby belong to the same field of endeavor, wherein Mizori’643 explicitly teaches the use of organoperoxides as the free-radical generating catalysts to cure such bismaleimide compounds, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yamamoto et al and Mizori’643, and to use, or obvious to try to use the organoperoxides as the free-radical generating initiator/catalyst to cure the bismaleimide compound of Yamamoto et al, as taught by Mizori’643, 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). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
41. Though Yamamoto et al in view of Mizori’643 do not explicitly recite the elastic modulus and a hardness of the cured product determined according to the conditions as claimed in instant invention, since the cured products of Yamamoto et al in view of Mizori’643 are produced from the curable composition that is essentially the same as that claimed in instant invention, therefore, the cured product of Yamamoto et al in view of Mizori’643 will intrinsically and necessarily have, or would be reasonably expected to have the properties, including the elastic modulus and a hardness of the cured product determined according to the conditions as claimed in instant invention, that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 6-7). 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
42. Claims 1-12, 14, 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-12 of an application 18/203,792 (published US 2023/0399467) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
43. The application 18/203,792 claims an encapsulation resin composition for encapsulating a semiconductor element-mounted surface of a substrate with one or more semiconductor elements mounted thereon or a semiconductor element-forming surface of a wafer with one or more semiconductor elements formed thereon, comprising:
(A) a maleimide compound having at least one dimer acid frame-derived hydrocarbon group per molecule;
(B) a reaction initiator, specifically radical polymerization initiator; and
(C) an inorganic filler surface-treated with a silane coupling agent,
Wherein the maleimide compound is having the formulae (1) and/or (2):
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And A is having one of the formulae below:
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Further claimed a semiconductor device having a cured product of the encapsulation resin composition according to claim 1.
44. Though the application 18/203,792 does not recite the radical polymerization initiator being an organoperoxide,
Mizori’643 discloses curable compositions comprising the polyimides with curable maleimide moieties ([0002]), specifically:
A) a compound of general formula I:
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and further
B) a catalyst ([0024]), including free-radical generator such an an organoperoxide, an anionic initiator such as imidazole or cationic initiator catalyst ([0030], [0180]).
Thus, Mizori’643 explicitly teaches that other free-radical generators including organoperoxides can be used to cure the bismaleimide compounds.
Based on the teachings of Mizori’643, it would have been obvious to a one of ordinary skill in the art to choose and use an organoperoxide as the catalyst in the curable composition of Mizori’643 as well, 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).
45. Since both Mizori’643 and the application 18/203,792 are related to curable compositions based on bismaleimide compounds and radical generating catalysts, and thereby belong to the same field of endeavor, wherein Mizori’643 explicitly teaches the use of organoperoxides as the radical generating catalysts to cure such bismaleimide compounds, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of the application 18/203,792 and Mizori’643, and to use, or obvious to try to use the organoperoxides as the radical generating initiator/catalyst to cure the bismaleimide compound of the application 18/203,792, as taught by Mizori’643, 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).
46. Though the application 18/203,792 does not explicitly cite the properties of the maleimide compounds, since said compounds are the same as those claimed in instant invention, therefore, the compounds and the composition claimed in application 18/203,792in view of Mizori’643 will intrinsically and necessarily have the properties which are the same as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 3-4, 6-7, 12). 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.
47. Claims 1-12, 14, 20 are directed to an invention not patentably distinct from claims over claims 1-3, 6-12 of an application 18/203,792 (published US 2023/0399467) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643).
Specifically, see the discussion in paragraphs 42-46 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The 18/203,792 discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
48. Claims 1-12, 14, 20 are rejected under 35 U.S.C. 103(a) as being obvious over US 2023/0399467 (application 18/203,792) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643).
Specifically, see the discussion set forth in paragraphs 42-46 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Obviousness Double Patenting Rejection II
49. Claims 1-12, 15-16, 19-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of an application 18/238,317 (published US 2024/0117120) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
50. The application 18/238,317 claims
a curable resin composition for a bonding film that is to be bonded to a copper foil, comprising: (A) a maleimide compound having at least one dimer acid frame-derived hydrocarbon group per molecule, that is represented by the following formula (1), (2) or (3) and
a radical polymerization catalyst (B):
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529
660
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51. Though the application 18/238,317 does not specify the used radical polymerization catalyst as being an organoperoxide,
Mizori’643 discloses curable compositions comprising the polyimides with curable maleimide moieties ([0002]), specifically:
A) a compound of general formula I:
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435
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and further
B) a catalyst ([0024]), including free-radical generator such an an organoperoxide, an anionic initiator such as imidazole or cationic initiator catalyst ([0030], [0180]).
Thus, Mizori’643 explicitly teaches that other free-radical generators including organoperoxides can be used to cure the bismaleimide compounds.
Based on the teachings of Mizori’643, it would have been obvious to a one of ordinary skill in the art to choose and use an organoperoxide as the catalyst in the curable composition of Mizori’643 as well, 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).
52. Since both Mizori’643 and application 18/238,317 are related to curable compositions based on bismaleimide compounds and free-radical generating catalysts, and thereby belong to the same field of endeavor, wherein Mizori’643 explicitly teaches the use of organoperoxides as the radical generating catalysts to cure such bismaleimide compounds, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of the application 18/238,317 and Mizori’643, and to use, or obvious to try to use the organoperoxides as the radical generating initiator/catalyst to cure the bismaleimide compound of the application 18/238,317, as taught by Mizori’643, 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).
53. Though the application 18/238,317 does not explicitly cite the properties of the maleimide compounds, since said compounds are the same as those claimed in instant invention, therefore, the compounds and the composition claimed in application 18/238,317 in view of Mizori’643 will intrinsically and necessarily have the properties which are the same as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 3-4, 6-7, 12). 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.
54. Claims 1-12, 15-16, 19-20 are directed to an invention not patentably distinct from claims over claims 1-10 of an application 18/238,317 (published US 2024/0117120) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643).
Specifically, see the discussion in paragraphs 49-53 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The 18/238,317 discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
55. Claims 1-12, 15-16, 19-20 are rejected under 35 U.S.C. 103(a) as being obvious over US 2024/0117120 (application 18/238,317) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643).
Specifically, see the discussion set forth in paragraphs 49-53 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Obviousness Double Patenting Rejection III
56. Claims 1-12, 14, 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of an application 18/408,733 (published US 2024/0239988) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
57. The application 18/408,733 claims:
an encapsulation resin composition for encapsulating a semiconductor element- mounted surface of a substrate with one or more semiconductor elements mounted thereon or a semiconductor element-forming surface of a wafer with one or more semiconductor elements formed thereon, comprising:
(A) a maleimide compound having at least one dimer acid frame-derived hydrocarbon group per molecule;
(B) a reaction radical initiator;
(C) a high-relative permittivity inorganic filler having a relative permittivity of not lower than 10 at 1 MHz,
wherein the component (A) is a maleimide compound represented by the following formula (1):
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442
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605
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A is having one of the following formulas:
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58. Though the application 18/408,733 does not recite the use of organoperoxide as the radical polymerization initiator,
Mizori’643 discloses curable compositions comprising the polyimides with curable maleimide moieties ([0002]), specifically:
A) a compound of general formula I:
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293
435
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and further
B) a catalyst ([0024]), including free-radical generator such an an organoperoxide, an anionic initiator such as imidazole or cationic initiator catalyst ([0030], [0180]).
Thus, Mizori’643 explicitly teaches that other free-radical generators including organoperoxides can be used to cure the bismaleimide compounds.
Based on the teachings of Mizori’643, it would have been obvious to a one of ordinary skill in the art to choose and use an organoperoxide as the catalyst in the curable composition of Mizori’643 as well, 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).
59. Since both Mizori’643 and the application 18/408,733 are related to curable compositions based on bismaleimide compounds and radical generating catalysts, and thereby belong to the same field of endeavor, wherein Mizori’643 explicitly teaches the use of organoperoxides as the radical generating catalysts to cure such bismaleimide compounds, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of the application 18/408,733 and Mizori’643, and to use, or obvious to try to use the organoperoxides as the radical generating initiator/catalyst to cure the bismaleimide compound of the application 18/408,733, as taught by Mizori’643, 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).
60. Though the application 18/408,733 does not explicitly cite the properties of the maleimide compounds, since said compounds are the same as those claimed in instant invention, therefore, the compounds and the composition claimed in application 18/408,733 in view of Mizori’643 will intrinsically and necessarily have the properties which are the same as those claimed in instant invention, or having properties in the ranges overlapping with those as claimed in instant invention as well (as to instant claims 3-4, 6-7, 12). 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.
61. Claims 1-12, 14, 20 are directed to an invention not patentably distinct from claims over claims 1-10 of an application 18/408,733 (published US 2024/0239988) in view of Mizori (WO 2021/113415, based on US equivalent US 2023/0143643, Mizori’643).
Specifically, see the discussion in paragraphs 56-60 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The 18/408,733 discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Response to Arguments
62. Applicant's arguments filed on March 30, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
63. 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.
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 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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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