DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Watanabe et al. (US 2015/0228527, “Watanabe”) in view of Kinoshita et al. (US 2005/0165196, “Kinoshita”).
Regarding claim 1, Watanabe teaches a resin composition comprising a polyimide having a diamine residue reading on claimed General Formula (1) ([0009] – [0012], [0011]) wherein the polyimide residue composition may be a diamine, wherein the groups corresponding to R1 to R4 may be phenyl groups thus reading on the claimed R1 to R4 groups ([0012]) and the groups corresponding to the claimed R5 and R6 groups may be alkyl groups having carbon number of 1 to 30, thus reading on the claimed construction ([0012]). Watanabe teaches that n may be from 5 to 30 ([0012]). Watanabe further teaches the inclusion of an additional thermosetting resin (e.g., epoxy resins, [0047]). The Examiner notes that the claimed diamine residue of General Formula (1) does not contain amino groups but is considered to have these groups implied at the terminal position insofar as the compound is not otherwise a diamine. Watanabe fails to specifically teach the dianhydride residue has a formula reading on that claimed. However, in the same field of endeavor of polyimide resins ([0023], [0024]), Kinoshita teaches that the inclusion of a silicone based (or silioxane) tetracarboxylic dianhydride improves moisture absorption or hydrolysis which is a characteristic problem of general polyimide resins (Formula 3, [0015], [0025] – [0027], [0040]). Therefore, it would have been obvious to have substituted the siloxane tetracarboxylic dianhydride of Kinoshita for the tetracarboxylic dianhydride of Watanabe in order to improve moisture absorption or hydrolysis which is a characteristic problem of general polyimide resins (Formula 3, [0015], [0025] – [0027], [0040]). Therefore, given the substitution of a siloxane dianhydride residue reading on claimed formula 2, the resultant composition of Watanabe would have up to 100% of diamine and acid dianhydride residues reading on formulas 1 and 2 (see Watanabe, [0024], [0038] wherein the amount of diamine and acid dianhydride residue may be, for example (content diamine reading on presently claimed formula 1 * total diamine content + content dianhydride reading on formula 2 * total acid dianhydride content) / (total diamine content + total acid dianhydride content) = (0.99*100+1*100)/(100+100) in similar fashion to the calculation Applicant has provided in the Remarks of 4/1/26, pp. 7-8).
Regarding claims 3 and 4, Watanabe additionally teaches that the total of the diamine and dianhydride residues may be from 40 mol% or greater as a component of all diamine or dianhydride residues ([0024], [0011], [0012], [0025], [0034]; and see discussion of substitution of siloxane acid dianhydride of Kinoshita in the rejection of claim 1, above).
Regarding claim 5, Watanabe additionally teaches that n may be from 5 to 30 ([0012]).
Regarding claim 6, Watanabe additionally teaches that the glass transition temperature (of the cured product, and thus the polymer) has no lower bound and may be lower than 20C and as low as or lower than -30C ([0024], [0048], [0050]). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 7, Watanabe additionally teaches that the resin composition includes a thermosetting resin (B) that may be an epoxy resin ([0047]).
Regarding claim 9, Watanabe additionally teaches that the resin may include an inorganic filler (e.g., quartz powder, mica, talc, etc. [0047]).
Regarding claim 11, Watanabe additionally teaches that the glass transition temperature (of the cured product, and thus the polymer) has no lower bound and may be lower than 20C and as low as or lower than -30C ([0024], [0048], [0050]). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claims 12 – 14, Watanabe additionally teaches that the cured resin may be formed into a laminated membrane or film (or sheet, e.g., [0014]) and may include an additional resin film ([0053]).
Regarding claim 18, because it would have been obvious to have substituted the siloxane tetracarboxylic dianhydride of Kinoshita for the tetracarboxylic dianhydride of Watanabe in order to improve moisture absorption or hydrolysis which is a characteristic problem of general polyimide resins (Formula 3, [0015], [0025] – [0027], [0040]), the total amount of such dianhydride based on all acid dianhydrides may be 100% (see also Watanabe, [0034] wherein a single tetracarboxylic acid may be used).
Regarding claims 19 and 21, Watanabe additionally teaches that the glass transition temperature (of the cured product, and thus the polymer) has no lower bound and may be lower than 20C and as low as or lower than -30C ([0024], [0048], [0050]). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 20, Watanabe further teaches the inclusion of an additional thermosetting resin in amounts necessary to improve characteristics of the resin and therefore the inclusion of a thermosetting resin in an amount of greater than 0.1 parts by weight would have been obvious to the ordinarily skilled artisan at the time of filing (e.g., epoxy resins, [0047]).
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe in view of Kinoshita as applied to claim 1, above, in further view of Iida et al. (US 2012/0295085, “Iida”).
Regarding claims 8 and 10, the combination remains as applied to claim 1, above. While Watanabe teaches to include an additional resin component (e.g., an epoxy resin, [0047]), Watanabe fails to teach the specific thermosetting resin. However, in the same field of endeavor of polyimide resin compositions (e.g., [0002]), Iida teaches that additional resins to include in polyimide resins for use in laminates may include epoxy compounds that include aromatic compounds (e.g., bisphenol A epoxy compounds, [0074], [0075], [0137]). In light of the general teaching by Watanabe to include an epoxy compound it would have been necessary for the ordinarily skilled artisan to have considered teachings regarding specific epoxy compounds and thus it would have been obvious to have included a bisphenol A epoxy compound in the resin as a specific example of an epoxy compound that is suitable for use in polyimide resins ([0005], [0074], [0075], [0137]). Further, Iida teaches that a suitable additive to include in a resin is a curing agent in order to allow for light curing of the resin composition (Iida, [0075]) and thus it would have been obvious to have included such a curing agent in the resin of Watanabe.
Claim(s) 15 – 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe in view of Kinoshita as applied to claim 1, above, in further view of Kato (US 2016/0233123, “Kato”).
Regarding claim 15, Watanabe teaches a laminate comprising at least two members ([0014]) and may include an additional resin film ([0053]) but does not teach that the linear expansion coefficients are different by one or more. However, in the same field of endeavor semiconductor manufacturing methods and devices ([0003], [0004]), Kato teaches that it is known and useful to adjust the linear coefficients of expansion of semiconductor support laminates in order to adjust for warpage based on changes in temperature during the manufacturing process (i.e., to control or cancel warpages during manufacture, [0004], [0009] – [0011]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have adjusted the linear coefficients of expansion of the layers of the laminate of Watanabe, including such that they had a difference of greater than one, in order to control for warpage based on changes in temperature during the manufacturing process (Kato, [0004], [0009] – [0011]).
Regarding claims 16 and 17, Watanabe additionally teaches that the resin may be made into a semiconductor manufacturing device or a wafer holder (e.g., [0062] – [0064]).
Response to Arguments
Applicant’s arguments, see Remarks, filed 4/1/26, with respect to the rejection(s) of claim(s) 1 and 2 under Watanabe have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Watanabe in view of Kinoshita as applied above.
Therefore, claims 1 and 3-21 are rejected as described above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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