DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
Claim(s) 1-10 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being -indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “* represents a bonding hand.” The scope of the claim is indefinite because it is not clear what is meant or encompassed by the phrase “bonding hand.” The term is not a standard term of art and the specification does not provide an explicit definition of the term. Dependent claims are rejected for the same reason.
Claim 4 recites “* represents a bonding hand.” The scope of the claim is indefinite because it is not clear what is meant or encompassed by the phrase “bonding hand.” The term is not a standard term of art and the specification does not provide an explicit definition of the term.
Claim 5 recites “* represents a bonding hand.” The scope of the claim is indefinite because it is not clear what is meant or encompassed by the phrase “bonding hand.” The term is not a standard term of art and the specification does not provide an explicit definition of the term.
Claim 6 recites four instances of “* represents a bonding hand”. The scope of the claim is indefinite because it is not clear what is meant or encompassed by the phrase “bonding hand.” The term is not a standard term of art and the specification does not provide an explicit definition of the term.
Claim 6 recites “in General Formula (d4), R5, R6, and X each have the same definitions as in General Formula (b1)”. There is insufficient antecedent basis for this limitation in the claim because there is no prior instance of “General Formula (b1)”. Claim 4 describes a General Formula (b1), claim 6 does not depend on the claim. Therefore, it is unclear what definitions are used for the identified groups.
Claim 11 recites “The semiconductor device according to claim 10, comprising…a resin film comprising a cured product of the photosensitive resin composition according to claim 1”. Parent claim 10, however, recites “A semiconductor device including a resin film comprising a cured product of the photosensitive resin composition according to claim 1.” It is unclear if the “a resin film” recited in claim 11 refers to the previously recited resin film in claim 10 or if this represents a new resin film.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1-7and 9-10 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/566,685. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose a photosensitive resin composition comprising similar materials.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1, 3, and 7:
Copending claim 15 discloses a photosensitive resin composition comprising (A) a photosensitive polymer according to its claim 1; (B) a crosslinking agent; and (C) a photosensitizer. Copending claim 1 discloses a photosensitive polymer, which in subsequent claims, particularly claim 8, is limited a polyimide comprising at at least one of the terminals to a group represented by General Formula (t-1), which is the same as present General Formula (b). Copending claim 16 further limits the (B) crosslinking agent to one having a structural unit according to General Formula (b), which is the same as which is the same as present General Formula (a).
Therefore, it would have been obvious to one of ordinary skill in the art to select from components (A) and (B), including those encompassed by the present claims, to provide a photosensitive resin composition according to the copending claims, and thereby arrive at the claimed invention.
Regarding claim 2:
See copending claim 17.
Regarding claims 4 and 6:
See copending claim 9.
Regarding claim 5:
See copending claim 8.
Regarding claims 9-10:
See copending claims 18-19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rhodes et al. (US 2018/0194880) disclose polymers formed from norbornene-based monomers for use in electronic applications [abstract; 0002; 0010]. The monomers include those having maleimide functionalization [0012-0019]:
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833
386
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Further bismaleimide compounds can be added [0145-0147]:
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590
397
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775
416
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
Prosecution Insights