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 .
Claim Rejections - 35 USC § 102/103
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.
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.
2. Claims 1, 5-16, 18-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 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.
3. 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], as to instant claims 1 and 13).
4. 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 inherently 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).
“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.
5. In the formula (I) 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.
6. 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.
7. 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]).
Though Yamamoto et al does 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 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 will inherently have, or alternatively, 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. 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.
8. 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 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.
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.
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 alternatively, 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.
9. 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]).
10. Claims 1-16, 18-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mizori (US 2018/0237668, Mizori’668), 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.
11. Mizori’668 discloses a curable adhesive composition comprising:
A) a maleimide compound; and
B) an anionic curing catalyst including imidazole and its derivatives ([0007], [0017], as to instant claim 13).
12. As to instant claims 1, 2, the maleimide compound of component A) is having the following Structure B:
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Structure B,
Wherein the Structure B is produced using a dimer diamine commercially available under a tradename PRIAMINE-1075 ([0150]-[0151]), and is having viscosity of 1000-1500 cps (1-1.5 Pa.s, as to instant claim 3).
13. 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]).
It is noted that the commercial product PRIAMINE 1075 is used in instant invention as the dimer acid-derived diamine and is characterized as being hydrogenated and having dimer : trimer ratio of 98:2 (see p. 39, lines 5-6 of instant specification).
Therefore, the commercial product PRIAMINE 1075 used to form the maleimide of Mizori’668 will inherently be hydrogenated and having at least 98%by mass of the dimer acid derived hydrocarbon as well (as to instant claim 1).
“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.
14. Though Mizori’668 does not explicitly recite the number average molecular weight of the maleimide having the structure B, since said compound of Mizori’668 is essentially the same as that claimed in instant invention, and is produced from the same reactants including commercial diacid derived diamine PRIAMINE-1075, therefore, the maleimide having the structure B of Mizori’668 will inherently 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 claim 4). 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’668, since the compositions of Mizori’668 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.
15. As to instant claims 1, 5,
the maleimide compound of the component A) is having the following Structures C or D ([0163], pages 18, 32):
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Structure C
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Structure D
Wherein the residue of the diacid-derived diamine Priamine-1075 in Structures C and D correspond to groups D of formula (1-2) of instant claim 5, and the groups in the Structures C and D corresponding to the group A of the claimed formula (1-2) are the same as those cited in instant claim 11.
16. Though Mizori’668 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 C or D above as the component A), as determined according to the conditions as claimed in instant invention, since said cured product is produced using the same the curable composition comprising the maleimide having the Structures C or D above as the component A) of Mizori’668 as that claimed in instant invention, therefore, said cured product will inherently have, or alternatively, 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’668, since the compositions of Mizori’668 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.
17. As to instant claims 1, 8,
the maleimide compound of the component A) is having the following Structure E below (pages 19, 33),
wherein the residue of the diacid-derived diamine Priamine-1075 in Structure E correspond to groups D of formula (1-3) of instant claim 8, and the groups in the Structure E corresponding to the group A of the claimed formula (1-3) are the same as that cited in instant claim 11,
and the group in the Structure E corresponding to the group B of the claimed formula (1-3) is an aliphatic ring as to instant claim 10, and
n and m are integers of 1-10 ([0164]):
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Structure E
18. As to instant claim 9, given
i) the values of “n” and ‘m” in the Structure E of Mizori’668 maybe 1-10, 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 E 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 1075 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 E 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.
19. Though Mizori’668 does not explicitly recite the glass transition temperature of the composition comprising Structure E as the component A), and the bonding pattern in the Structure E being alternative, block or random, since said composition of Mizori’668 is essentially the same as that claimed in instant invention comprising the same compound having the structure corresponding to structure (1-3) of instant claims, therefore, the composition of Mizori’668 comprising the Structure E as the component A), will inherently have, or alternatively, 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) and the bonding in said Structure E will be being alternative, block or random as well. 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’668, since the compositions of Mizori’668 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.
20. As to instant claims 14-16, 18-19, the composition of Mizori’668 is used in electronics packaging industry, as adhesives, adhesive coatings, interposer, printed wiring boards, copper clad laminate, in semiconductive packaging to encapsulate entire packaging ([0200]-[0203]).
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.
21. Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mizori (US 2018/0237668, Mizori’668), as evidenced by Yamamoto et al (WO 2020/203834), in further 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.
22. The discussion with respect to Mizori (US 2018/0237668, Mizori’668), as evidenced by Yamamoto et al (WO 2020/203834), set forth in paragraphs 10-20 above, is incorporated here by reference.
23. Though Mizori’668 does not explicitly recite the properties of the Structure E above, and does not explicitly teach the prepregs comprising said compositions,
Mizori’643 discloses the same compounds as disclosed by Mizori’668, specifically:
1)
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Compound 13 (p. 8)
Compound 13 (corresponding to Structure B of Mizori’668 and compound (1-1) of instant claim 2);
2)
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Compound 12 (corresponding to Structure C of Mizori’668 and compound (1-2) of instant claim 5);
3)
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Compound 11 (p. 38)
Compound 11 (corresponding to Structure E of Mizori’668 and compound (1-3) of instant claim 8);
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. Mizori’643 further explicitly teaches the compositions comprising said compounds used to make prepregs with included fabrics, printed wiring boards, adhesive films, laminates [0182], ([0184], [0186]-[0191]).
25. Since both Mizori’643 and Mizori’668 are related to compositions comprising the same maleimide compounds, and thereby belong to the same field of endeavor, wherein Mizori’643 explicitly teaches said compositions used for making prepregs, adhesive films, printed wiring boards, therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the compositions comprising the Structures A-E of Mizori’668 for making prepregs along with printed wiring boards as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
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
26. Claims 1-7, 17 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-12 of an application 17/957,378 (to be issued as US 12,516,163). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
27. The application 17/957,378 claims: a heat-curable maleimide resin composition for RTM, comprising:
(A-1) a maleimide compound having at least one dimer acid skeleton-derived hydrocarbon group per one molecule, and having a viscosity of not higher than 20 Pa-s;
(A-2) a maleimide compound having at least one dimer acid skeleton-derived hydrocarbon group per one molecule, having a viscosity of greater than 20 Pa s, and exhibiting a fluidity at 25°C;
(B) a radical polymerization initiator; and
(C) a polymerization inhibitor, wherein the viscosities of the components (A-1) and (A-2) are measured in accordance with a method described in JIS Z8803:2011, at a measurement temperature of 25°C, and using a Brookfield-type rotary viscometer with a rotation rate of a spindle being set to 5 rpm,
wherein the component (A-2) is a maleimide compound represented by the following formula (2):
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wherein B independently represents a cyclic structure-containing tetravalent organic group, X independently represents a divalent hydrocarbon group having 6 to 200 carbon atoms, at least one X is a dimer acid skeleton-derived hydrocarbon group, and n is 1 to 100, and wherein B in the formula (2) is any one of the tetravalent organic groups represented by the following structural formulae:
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wherein bonds in these structural formulae that are yet unbonded to substituent groups are to be bonded to carbonyl carbons forming cyclic imide structures in the formula (2).;
and the component (A-1) is a maleimide compound represented by the following formula (1):
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wherein a ratio between (A-1) and (A-2) on a mass basis is (A-1):(A-2)=95:5 to 40:60.
28. Though the application 17/957,378 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 claimed in application 17/957,378 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. 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 1-7, 17 are directed to an invention not patentably distinct from claims over claims 1-3, 6-12 of an application 17/957,378 (to be issued as US 12,516,163).
Specifically, see the discussion in paragraphs 26-28 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 application 17/957,378 (to be issued as US 12,516,163), 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.
30. Claims 1-7, 17 are rejected under 35 U.S.C. 103(a) as being obvious over US 2023/0133834 (to be issued as US 12,516,163).
Specifically, see the discussion set forth in paragraphs 26-28 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
31. Claims 1-14 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
32. 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; 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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134
521
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382
670
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And A is having one of the formulae below:
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54
629
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50
84
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56
204
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74
167
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185
620
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91
612
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59
525
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Further claimed a semiconductor device having a cured product of the encapsulation resin composition according to claim 1.
33. 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 claimed in application 18/203,792 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. 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.
34. Claims 1-14 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).
Specifically, see the discussion in paragraphs 31-33 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.
35. Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over US 2023/0399467 (application 18/203,792).
Specifically, see the discussion set forth in paragraphs 31-33 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
36. Claims 1-13, 15-16, 19 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
37. 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 catalyst (B):
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127
497
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529
660
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30
462
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38. 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 claimed in application 18/238,317 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. 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.
39. Claims 1-13, 15-16, 19 are directed to an invention not patentably distinct from claims over claims 1-10 of an application 18/238,317 (published US 2024/0117120).
Specifically, see the discussion in paragraphs 36-38 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.
40. Claims 1-13, 15-16, 19 are rejected under 35 U.S.C. 103(a) as being obvious over US 2024/0117120 (application 18/238,317).
Specifically, see the discussion set forth in paragraphs 36-38 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
41. Claims 1-14 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
42. 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 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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121
442
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190
605
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A is having one of the following formulas:
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434
497
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43. 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 claimed in application 18/408,733 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. 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.
44. Claims 1-14 are directed to an invention not patentably distinct from claims over claims 1-10 of an application 18/408,733 (published US 2024/0239988).
Specifically, see the discussion in paragraphs 41-43 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.
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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764