DETAILED ACTION
Status of Application
This action is responsive to nonprovisional application filed 07/19/2023. Original claims 1-9 are currently pending and under examination herein.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . However, in the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 07/19/2023 and 09/23/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections – 35 U.S.C. 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.
Claims 1-2, 4-5 and 7-9 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 Larbig et al (WO 2022/117715 A1) (‘Larbig’).
Regarding Claims 1-2 and 4-5; reference to Larbig is directed to dielectric polymer material formed by reacting a bismaleimide compound, in particular, specific bismaleimide compounds containing cardo/spiro moieties (see page 1, ll. 6-7, 22-24). More specifically, the dielectric polymer material is formed by (i) providing a formulation comprising one or more bismaleimide compound according to the Larbig invention; and (ii) curing said formulation (see page 10, ll. 9-15); wherein the formulation preferably contains an initiator for free radical polymerization or an initiator for ionic polymerization, such as alkylamine lithium compounds [for claim 2] (see page 40, ll. 18-21 and page 42, ll. 1-3). In Example B (see pages 50-53) Larbig details synthesis of oligomers (7) and (8) having the following formulae:
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311
629
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326
633
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In Examples C and D (see pages 57, l. 20 to page 59, l. 13), Larbig describes that the oligomers are blended with a photoinitiator to perform slit coating on a glass substrate, and the resultant film is firstly dried at room temperature and then at 100oC for 30 minutes on a hot plate and then the film is cured via broad band UV exposure finally removed from the substrate to provide a free-standing film. Said resultant film and cured film of Larbig are respectively qualify as an “uncured resin film” [for claim 4] and “cured resin film” [for claim 5].
Further as to aforementioned oligomers (7) and (8), each is seen to correspond to instant formula (1) where A independently represents a tetravalent organic group having 4 to 200 carbon atoms, and A has therein a fluorene frame represented by instant formula (2), and B independently represents a divalent organic group having 2 to 200 carbon atoms. And while Larbig does not explicitly quantify “n” for either oligomer, Larbig does define “oligomer” as a molecular complex that consists of “a few monomer units” (see page 15, ll. 1-3), thus implying oligomers (7) and (8) individually comprise multiple (e.g., n = 2) monomer units. In addition, Larbig’s analytics for the respective oligomers report Mn values of 4.9 kDa (= 4,900 g/mol) and 6.3 kDa (= 6,300 g/mol) (see page 51, ll. 31-32 and page 53, l. 7). As these values fall well within the Applicant’s disclosed range for number-average molecular weight of claimed component (A), i.e., 3,000 to 50,000 (cf., Spec., page 15, final para), a plausible basis exists to infer that described oligomers (7) and (8) each implicitly meet the limitation of “n is 2 to 100” for instant formula (1). Accordingly, embodiments of the instant invention according to claims 1-2 and 4-5 are deemed fully disclosed by Larbig.
Regarding Claim 7, Larbig further discloses an electronic device comprising a dielectric layer according to the Larbig invention, wherein the polymer material forms a dielectric layer that serves to electrically separate one or more electronic components being part of the electronic device from each other (see page 45, ll. 5-10). As such, Larbig is seen to disclose an embodiment wherein the described dielectric polymer layer effectively functions as a substrate, as claimed, for one or more electronic components of the same electronic device.
Regarding Claim 8, Larbig further discloses use of the bismaleimide compounds of that invention as starting material for various application including in adhesive formulations (see page 7, ll. 22-30). As such, Larbig is considered to disclose or at least render obvious to one of ordinary skill in the art use of either of aforementioned oligomer (7) or (8) as a component of an adhesive formulation, thereby providing an adhesive, as claimed.
Regarding Claim 9, Larbig further discloses as an invente object that the bismaleimide compounds described therein are photostructurable and can be used as starting material for various applications in electronic device manufacturing such as e.g. for the preparation of repassivation layers in packaged electronic devices (including passivation of conductive or semiconducting components in a redistribution layer (RDL) or die attach), in thin film formulations and/or in adhesive formulations (see page 7, ll. 22-30). Official notice is taken of the fact that “passivation layer” is commonly defined in the art to mean an outer shield material applied as a coating or microcoating in semiconductor devices to reduce environmental effects. In light of Larbig’s description of passivation of semiconducting components and the common understanding of “passivation layer,” an ordinarily skilled practitioner would have expected any of the bismaleimide compounds disclosed therein to be viable as a semiconductor encapsulating material. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of effective filing to have used either of the aforementioned oligomers (7) and (8) of Larbig in such application, thereby providing a semiconductor encapsulant material as claimed.
Claim Rejections – 35 U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US 2022/0169791 A1) (‘Sugawara’).
Regarding Claims 1-2, reference to Sugawara is directed to a polyamic acid resin which is a reaction product of an aminophenol compound (a), an aliphatic diamino compound (b), a tetrabasic dianhydride (c), and an aromatic diamino compound (d), wherein the polyamic acid resin has amino groups at both terminals, and a terminal-modified polyimide resin (bismaleimide compound) which is a reaction product of a polyimide resin, which is an imidized product of the polyamic acid resin, and maleic anhydride (see paras [0009]-[0013]). In addition, Sugawara also discloses that the aminophenol compound (a) or the tetrabasic dianhydride (c) can have a fluorene skeleton as claimed (see paras [0014], [0017]-[0021]), and that the modification of the terminal of the terminal-modified polyimide resin is caused by a copolymerization reaction and an imidization reaction between the amino groups of the polyimide resin at both terminals and maleic anhydride, whereby both terminals of the polyimide resin become maleimide groups (see para [0057]). Sugawara goes on to provide synthesis examples wherein BAFL (9,9-bis (4-aminophenyl)fluorene, PRIAMINE1075, BAFA (2, 2-bis (3-amino-4-hydroxypheny)hexafluoropropane), and cyclohexanone were added and reacted with ODPA (oxydiphthalic anhydride), triethyl amine, and toluene to obtain a polyimide resin solution (A- 8) (see Example 8, para [0100]) and MIR - 3000 (biphenyl skeleton-containing maleimide resins) and dicumyl peroxide (DCP) as a radical initiator [for claim 2] were mixed with the polyimide resin solution (A-8) to obtain a resin composition (see para [0102] (Table 5)). Although the terminal of the resin obtained in aforementioned Example 8 is not maleimidized, Sugawara clearly teaches as alternative embodiments adding the maleimide resin to react with the terminal amino group of the polyimide resin or the terminal maleimide group of the terminal-modified polyimide resin (see para [0065]).
It would have been obvious to one of ordinary skill in the art to substitute the polyimide resin solution (A-8) in Example 8 of Sugawara by the corresponding terminal-modified polyimide resin as the two are considered to be equivalents for purposes of Sugawara. Simple substitution of one known material for another to obtain predictable results, provides the rationale for a prima facie case of obviousness. See MPEP § 2143. Further, the resulting resin composition will meet all the requirements of claims 1-2.
Regarding Claim 6, Sugawara renders obvious the heat-curable bismaleimide resin composition according to claim 1 as discussed above. Sugawara further teaches a prepreg having the heat-curable bismaleimide resin composition and a fiber base material in the form of reinforced fiber or alumina fiber (see paras [0084]-[0085]). In light of such teaching, it would have been obvious to one of ordinary skill in the art to further modify Sugawara by incorporating a fiber base material into the resin composition of Example 8 as modified above, to obtain a prepreg as per claim 6.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hu et al (J. Applied Poly. Sci., 107, 1288-1293 (2008)) is cited as pertinent to synthesis of chain-extended bismaleimide (BMI) monomers and thermal curing thereof via self-polymerization (note Schemes 1-2). The citation does not teach a heat-curable BMI resin composition comprising (A) a BMI compound represented by instant formula (1) wherein n is 2 to 100, and (B) a reaction accelerator.
Potentially Allowable Subject Matter
Claim 3 is objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
The closest prior art to Larbig et al and Sugawara et al, discussed above, does not describe the invention of instant claim 3, especially claimed feature wherein a cured product of the heat-curable bismaleimide resin composition has a glass-transition temperature of not lower than 200oC, or provide proper rationale to modify either of their disclosed inventions into the invention of instant claim 3.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/02-10-26