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 Status
Claims 1-13 are under consideration
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is less than 50 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-8 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation that “0 ≤ b < 1” where b may be a positive number or 0, and the claim also recites that b is a “positive number” which is the narrower statement of the range/limitation by excluding 0. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The examiner suggests changing “a, b and c are positive numbers” to “a, b and c are
Regarding claim 2, the claim limitation “the hydroxyl group-substituted alkyl ether skeleton has from 9 to 20 carbon atoms” is unclear, as the limitation may be interpreted as:
“the hydroxyl group-substituted alkyl ether skeleton contains at least 9 to 20 carbon atoms” or as
“the hydroxyl group-substituted alkyl ether skeleton contains only 9 to 20 carbon atoms”.
Furthermore, regarding the first interpretation, the ranges may be considered indefinite as the range of at least 9 carbon atoms is broader than the range of at least 20 carbon atoms. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner also notes that it is unclear how much of the polymer may be considered “the hydroxyl group-substituted alkyl ether skeleton”, as portions may, for example, alternatively be considered divalent linking groups, substituents, or other skeleton moieties.
Further, it is unclear if the limitation of “9 to 20 carbon atoms” refers cumulatively to all recurring units of “the hydroxyl group-substituted alkyl ether skeleton” or separately to each recurring unit.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 1 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (US20200165394A1, published 5/28/2020) in view of Konno (WO2016076205A1, published 2016, references made to provided translation).
Regarding claims 1 and 9-13,
Maruyama teaches a polymer containing a silphenylene skeleton, an isocyanuric acid skeleton, a polysiloxane skeleton, and a polyether skeleton (alkyl ether) in a backbone having an epoxy group in a side chain [claims 1 and 3].
Maruyama fails to teach their polymer containing a hydroxyl group substituted to their polyether skeleton.
Konno, analogous art, teaches a radiation sensitive resin composition comprising of a polymer which may be a polysiloxane and aromatic polyether copolymer [abstract]. Konno teaches an example of their polyether moiety as shown below, where Z may be a divalent hydrocarbon group having 1 to 12 carbon atoms (which may be an alkenediyl group) which may be substituted with a hydroxy group [page 11 paragraph 1-4], reading on the instant hydroxyl group-substituted alkyl ether skeleton.
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Konno further teaches their composition forms a film with excellent insulation and corrosion resistance [page 4 paragraph 5].
As both teach similar film forming compositions, it would have been obvious to a person of ordinary skill in the art to further include a polyether skeleton containing a hydroxyl substituent as taught by Konno to the polymer of Maruyama for the benefits disclosed by Konno, reading on instant claim 1.
Maruyama teaches further including a photoacid generator and a cationic polymerizable crosslinker (crosslinking agent) [claims 8 and 10], reading on instant claims 10-11.
Maruyama teaches a film of the polymer having a thickness of 10 μm has a transmittance of at least 97% with respect to light of wavelength 405 nm [0010]. Although silent to light of wavelength 400 nm, it would have been obvious to a person of ordinary skill that the polymer of Maruyama would have a transmittance of at least 95% with respect to light of wavelength 400 nm, as the wavelengths of light are close, reading on instant claim 9.
Maruyama teaches a pattern forming process comprising the steps of:
(i) applying the photosensitive resin composition of claim 8 onto a substrate to form a photosensitive resin film thereon,
(ii) exposing the photosensitive resin film to radiation, and
(iii) developing the exposed resin film in a developer [claim 13], reading on instant claim 12.
Maruyama teaches a method for fabricating an opto-semiconductor device (optical semiconductor device) involving the pattern forming process of claim 13 (as disclosed above), the device comprising the patterned photosensitive resin film [claim 14], reading on instant claim 13.
Claims 1 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Urano (US20130196114A1, published 2013) in view of Konno (WO2016076205A1, published 2016, references made to provided translation).
Regarding claim 1 and 9-13,
Urano teaches a polymer containing a silphenylene skeleton, an isocyanuric acid skeleton, and a polysiloxane skeleton, which further contains an epoxy group on a side chain [claim 3].
Urano fails to teach their polymer containing a hydroxyl group-substituted alkyl ether skeleton.
Konno, analogous art, teaches a radiation sensitive resin composition comprising of a polymer which may be a polysiloxane and aromatic polyether copolymer [abstract]. Konno teaches an example of their polyether moiety as shown below, where Z may be a divalent hydrocarbon group having 1 to 12 carbon atoms (which may be an alkenediyl group) which may be substituted with a hydroxy group [page 11 paragraph 1-4], reading on the instant hydroxyl group-substituted alkyl ether skeleton.
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Konno further teaches their composition forms a film with excellent insulation and corrosion resistance [page 4 paragraph 5].
As both teach similar film forming compositions, it would have been obvious to a person of ordinary skill in the art to further include a polyether skeleton containing a hydroxyl substituent as taught by Konno to the polymer of Urano for the benefits disclosed by Konno, reading on instant claim 1.
Urano teaches a photoacid generator [0069], reading on instant claim 10.
Urano teaches a crosslinker such as 1,1′-diglycidoxybisphenol A (cation-polymerizable crosslinking agent) [0068, 0081], reading on instant claim 11.
Urano teaches a patterning process comprising steps of forming a photoresist film on a substrate, exposure to light, and development in a developer [0215-0217], reading on instant claim 12.
Urano teaches their cured film used in electric and electronic parts, semiconductor devices, and the like [0225], which would include optical semiconductor devices, reading on instant claim 13.
Urano in view of Matsumoto teaches all of the limitations of claim 1 of the instant application. Furthermore, Matsumoto teaches the film comprising the their polymer exhibiting suitable transparency [page 13 paragraph 3]. A person having ordinary skill in the art, in view of Urano and Matsumoto, would have achieved a transmittance of at least 95% with respect to light of wavelength 400 nm for a 10 µm thick film through routine optimization, since it has been held the discovering the optimum or workable ranges or values of a result-effective variable involves only routine skill in the art, MPEP 2144.05(II), and given the transparency taught by Matsumoto, reading on instant claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20180004088A1, US20200165456A1, US20130196114A1, US20170283581A1, and US20170313904A1 each teach similar polymers comprising of a silphenylene skeleton and isocyanuric acid skeleton in a backbone and having an epoxy group in a side chain.
US20190354014A1 teaches a similar polymers comprising of a silphenylene skeleton, an isocyanuric acid skeleton, and an alkyl ether skeleton in a backbone and having an epoxy group in a side chain, further teaching the polymer has crosslinking groups such as epoxy and hydroxyl groups or crosslinking reaction-susceptible reactive sites in the molecule.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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, Keith Walker can be reached at (571) 272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander N. Lee/Examiner, Art Unit 1737
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