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 § 102
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.
Claims 1-8, 12-18, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holub et al. (US Pat. 3,763,273).
Considering Claims 1-5, 8, 12, 21, and 22: Holub et al. teaches a imido substituted polyamide having the structure
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, M’ is a maleimide group, R’ is a divalent organic radical, including aliphatic and aromatic moieties (2:42-55) and n is 1 to 10 (4:15-66). Holub et al. teaches examples of the formula
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where n has a value of 4. This reads on the claimed invention where A is a an aromatic group with 13 carbon atoms, X is an amide group, and Ra is an aromatic group with six carbon atoms.
Considering Claim 6: Holub et al. teaches that the amine can be m-phenylenediamine (4:67-73), which reads on claimed formula (5a).
Considering Claim 7: Group B is optional in claim 1, and thus the further limiting of the optional component does not provide patentability.
Considering Claim 13: Holub et al. teaches providing the formulation comprising the compound and curing the composition (5:73-12).
Considering Claim 14: Holub et al. teaches a mixture comprising the bismaleimide oligomer and a further monomer (5:52-74).
Considering Claim 15: Holub et al. teaches the mixture as comprising an inorganic filler (8:39-46).
Considering Claims 16-18: Holub et al. teaches the crosslinked polymer as being a dielectric material (7:1-32).
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.
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.
Claims 9-11, 19, and 20 is rejected under 35 U.S.C. 103 as being unpatentable over Holub et al. (US Pat. 3,763,273) as applied to claims 1 and 16 above, and further in view of Ma et al. (US 2001/0056162) as evidenced by Mizori et al. (US 2004/0225059).
Considering Claims 9-11: Holub et al. teaches the compound of claim 1 as shown above.
Holub et al. does not teach the claimed structures for Ra or Rb. However, Ma teaches using Versamine 552 as the diamine for forming a bismaleimide compound (¶0082). Mizori et al. teaches Versamine 552 as having the structure
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(¶0014). Holub et al. and Ma are analogous art as they are concerned with the same field of endeavor, namely dielectric bismaleimde compounds. It would have been obvious to a person of ordinary skill in the art to have used the dimer diamine of Ma as the diamine of the compound of Holub et al., and the motivation to do so would have been, it is bio-based rather than petroleum based.
Considering Claims 19 and 20: Holub et al. teaches the polymer of claim 16 as shown above. Holub et al. teaches the polymer as being a dielectric and insulating material.
Holub et al. does not teach an electronic device. However, Ma et al. teaches a layer comprising the polymer in a microelectronic device (¶0003). The term repassivation material in a redistribution layer is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
It would have been obvious to a person of ordinary skill in the art to have used the compound of Holub et al. in an electronic device, as in Ma, and the motivation to do so would have been, as Ma suggests, it a suitable use for the bismaleimide compounds.
Response to Arguments
Applicant’s arguments with respect to claims 1-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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