Prosecution Insights
Last updated: July 17, 2026
Application No. 18/296,080

ESTER COMPOUND AND RESIN COMPOSITION

Non-Final OA §102§103§112
Filed
Apr 05, 2023
Priority
Oct 07, 2020 — JP 2020-170098 +1 more
Examiner
BAHTA, MEDHANIT W
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Ajinomoto Co., Inc.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allowance Rate
629 granted / 782 resolved
+20.4% vs TC avg
Strong +29% interview lift
Without
With
+28.8%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 0m
Avg Prosecution
37 currently pending
Career history
826
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
57.5%
+17.5% vs TC avg
§102
10.9%
-29.1% vs TC avg
§112
11.3%
-28.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 782 resolved cases

Office Action

§102 §103 §112
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 . Election/Restrictions Applicant's election with traverse of Group I, claims 1-10 and 12-23 in the reply filed on 11/26/2025 is acknowledged. The traversal is on the ground(s) that Xiong does not contain a fluorine-substituted arylcarbonyloxy group and that there is no explanation in the restriction requirement why the method of the reference is materially different from that of Group II. This is not found persuasive because: Compound 5s comprises the fluorine-substituted arylcarbonyloxy group (see the circled moiety shown below) PNG media_image1.png 147 207 media_image1.png Greyscale . The method for obtaining the compound 5s is shown above Table 3 (reproduced below), in which a fluorine-substituted arylcarboxylic acid 2 is reacted with compound 4 by replacing the H group of 4 with the fluorine-substituted arylcarbonyloxy group of 2; whereas in claim 11 of Group II, the fluorine-substituted arylcarboxylic acid is reacted with a compound including two or more aromatic rings to which a hydroxy group is directly bonded. Thus, the process of Xiong is materially different from that of Group II PNG media_image2.png 79 450 media_image2.png Greyscale . The requirement is still deemed proper and is therefore made FINAL. 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. Claim 19 is 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. The term “like” in the limitation “sheet-like” of claim 19 renders the claim vague and indefinite because the term does not limit the claim to the specie recited in the claim and thus is unclear as to how much variation of the recited specie is tolerated by the use of term “like”. Claim Rejections - 35 USC § 102 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 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 1-3, 5-9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu (Wu, Y. et al. “Efficient and Regioselectivity-Tunable Metal-Free Polycycloaddition of Activated Azide and Alkynes” Supporting information for Macromol. Rapid Commun., DOI: 10.1002/marc.201600620, 2017, pages 1-18). Regarding claims 1 and 12, Wu teaches in Scheme S4 (page 7) compounds 16 and 7 comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded PNG media_image3.png 101 282 media_image3.png Greyscale PNG media_image4.png 114 327 media_image4.png Greyscale Regarding claim 2, the above compounds are species of formula (A1), in which each Ar represents the aromatic ring each X represents the fluorine-substituted arylcarbonyloxy groups (cpd 7 has N3 as substituent group in each X in addition to F) Z represents a divalent isopropylidene group n is 1 m is 1 Regarding claim 3, compounds 16 and 7 fall under formula (A2), in which each Ar represents the aromatic ring each X represents the fluorine-substituted arylcarbonyloxy groups Y1 represents a divalent isopropylidene group (specie of -C(R1)2-) a is 0, thus Y2 is absent m is 1 Regarding claim 5, the limitation “wherein a ratio of the fluorine-substituted arylcarbonyloxy group to the hydroxy group” is not given patentable weight because in view of claim 2, in which the presence of the hydroxy group is an optional limitation. Regarding claim 6, the number of fluorine atoms in each fluorine-substituted arylcarbonyloxy groups in compounds 16 and 7 is 5 and 4, respectively. Regarding claims 7-8, the fluorine-substituted arylcarbonyloxy groups of compounds 16 and 7 read on formula (F1-1), wherein 4 and 5 of Rf groups are fluorine atoms. Regarding claim 9, the content of the fluorine atom in compounds 16 and 7 is 30.8% and 22.9% by mass, respectively, calculated by (totalwtfluorine/mol.weightcpd)x100 (mol.wt. of 16 and 7 are 616.4 and 662.45 g/mol, respectively). Regarding claim 12, the limitation “obtained by…” is a product by process claim language as a result of the product obtained. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product, but only to the structure implied by the steps, in this case, only to product. In view of the specification, the product obtained is a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded. See MPEP § 2113: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ). Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final product, i.e. a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded, the process step of claim 12 is not given patentable weight. See MPEP § 2113: The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture"). Claims 1-2, 5, 7-8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mandle (Mandle, R. J. et al. “Apolar Bimesogens and the Incidence of the Twist–Bend Nematic Phase” Chem. Eur. J. 2015, 21, 8158 – 8167, DOI: 10.1002/chem.201500423). Regarding claims 1 and 12, Mandle teaches compounds 26, 27 and 30 (Table 6, pg. 8163) comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded PNG media_image5.png 62 386 media_image5.png Greyscale PNG media_image6.png 161 137 media_image6.png Greyscale Regarding claim 2, the above compounds are species of formula (A1), in which each Ar represents the aromatic ring each X represents the fluorine-substituted arylcarbonyloxy groups Z represents a divalent -C9H18- group n is 1 m is 1 Regarding claim 5, the limitation “wherein a ratio of the fluorine-substituted arylcarbonyloxy group to the hydroxy group” is not given patentable weight because in view of claim 2, the presence of the hydroxy group is an optional limitation. Regarding claims 7-8, the fluorine-substituted arylcarbonyloxy groups of compounds 16 and 7 read on formula (F1-1), wherein 1 or 2 of Rf groups are fluorine atoms. Regarding claim 12, the limitation “obtained by…” is a product by process claim language as a result of the product obtained. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product, but only to the structure implied by the steps, in this case, only to product. In view of the specification, the product obtained is a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded. See MPEP § 2113: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ). Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final product, i.e. a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded, the process step of claim 12 is not given patentable weight. See MPEP § 2113: The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture"). Claims 1-9, 12-13 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishichi (Nishichi, A. et al. Patent application publication number US2005/0265686A1). Regarding claims 1 and 12, Nishichi teaches compounds BPDES and BP6FBA (Examples 2 and 3, pg. 15) comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded PNG media_image7.png 161 498 media_image7.png Greyscale 4,4'-bis(2,3,4,5,6-pentafluorobenzoyloxy)diphenyl ether (BPDES) PNG media_image8.png 314 492 media_image8.png Greyscale 2,2-bis(pentafluorobenzoyloxyphenyl)-1,1,1,3,3,3-hexafluoropropane (BP6FBA) Regarding claim 2, the above compounds are species of formula (A1), in which each Ar represents the aromatic ring each X represents the fluorine-substituted arylcarbonyloxy groups Z represents a divalent -O- group (BPDES) and fluorinated isopropylidene group (BP6FBA) n is 1 m is 1 Regarding claim 3, the compounds fall under formula (A2), in which each Ar represents the aromatic ring each X represents the fluorine-substituted arylcarbonyloxy groups Y1 represents a divalent i-O- group (BPDES) and fluorinated isopropylidene group (BP6FBA) (specie of -C(R1)2-) a is 0, thus Y2 is absent m is 1 Regarding claim 4, Y1 of BP6FBA is fluorinated isopropylidene group. Regarding claim 5, the limitation “wherein a ratio of the fluorine-substituted arylcarbonyloxy group to the hydroxy group” is not given patentable weight because in view of claim 2, the presence of the hydroxy group is an optional limitation. Regarding claim 6, the number of fluorine atoms in each fluorine-substituted arylcarbonyloxy groups in the above compounds is 5. Regarding claims 7-8, the fluorine-substituted arylcarbonyloxy groups of the compounds read on formula (F1-1), wherein 5 of Rf groups are fluorine atoms. Regarding claim 9, the content of the fluorine atom in compounds BPDES and BP6FBA is 32.2% and 41.96% by mass, respectively, calculated by (totalwtfluorine/mol.weightcpd)x100 (mol.wt. of BPDES and BP6FBA are 590.32 and 724.35 g/mol, respectively). Regarding claim 12, the limitation “obtained by…” is a product by process claim language as a result of the product obtained. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product, but only to the structure implied by the steps, in this case, only to product. In view of the specification, the product obtained is a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded. See MPEP § 2113: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ). Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final product, i.e. a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded, the process step of claim 12 is not given patentable weight. See MPEP § 2113: The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture"). Regarding claim 13, Nishichi teaches compositions comprising polymethyl methacrylate resin (PMMA) and BPDES or PMMA and BP6FBA ([0145] and Tables 6-7). Regarding claim 20, Nishichi teaches a resin sheet comprising a glass plate as a support and a thin film of the resin composition ([0145]). 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. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Nishichi (Nishichi, A. et al. Patent application publication number US2005/0265686A1). The teachings of Nishichi have been set forth above. While Nishichi exemplifies the resin composition comprising the compound with fluorine-substituted arylcarbonyloxy group and PMMA resin, the reference fails to exemplify the limitations of claim 16. However, in nonexemplified embodiments, the teaches a formed body containing the resin composition as insulating coating film on surface wiring of printed circuit board among other applications ([0102]). As such, the instantly claimed resin composition to form an insulating layer of a printed wiring board is obvious in view of the disclosure of Nishichi. Claims 10, 14-15, 17-19 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nishichi (Nishichi, A. et al. Patent application publication number US2005/0265686A1) in view of Nakamura (Nakamura, S. et al. Patent application publication number US2017/0154841A1). The teachings of Nishichi have been set forth above. Regarding claim 10, the reference further teaches that the compounds with fluorine-substituted arylcarbonyloxy group are used as additive for transparent resin material resulting in the transparent resin material low in a water absorbing ratio and high in water repellency, thus forming a resin composition. The transparent resin material comprises a polymer to form a formed body having transparency, and examples include acrylic resin, polycarbonate resin, fluoro resin, epoxy resin, polyether resin, polyester resin, polyallylate resin, cycloolefin resin, norbornene resin, polyimide resin, silicon resin, polysulfone resin, and polyketone resin ([0061]). However, Nishichi fails to teach an epoxy curing agent using the resin composition comprising compounds with fluorine-substituted arylcarbonyloxy group as epoxy curing agent. Regarding claims 14-15 and 18, the reference also fails to teach the resin as further comprising an inorganic filler (claims 14-15); and a cured product of the resin composition (claim 18). Regarding claim 17, while Nishichi teaches the resin composition as a semiconductor element ([0102]), the reference fails to teach encapsulating the resin in a semiconductor chip. Regarding claim 19, Nishichi further teaches a resin composition that forms into a body such as sheet-like shapes ([0101]), but fails to teach a sheet-like laminate material comprising the resin composition (claim 19). Regarding claims 21-22, Nishichi teaches that the resin composition as insulating coating film on surface wiring of printed circuit board ([0102]), but fails to teach that the insulating layer is formed of a cured product of the resin composition. The deficiencies are however cured by Nakurama. Regarding claims 10 and 14-15, Nakurama teaches a curing resin composition containing (A) an epoxy resin, (B) a curing agent, and (C) an inorganic filler in which the content of (C) the inorganic filler is 55% by mass or higher with respect to 100% by mass of a non-volatile component within the resin composition ([0015]-[0021]). Regarding claim 17, Nakurama teaches a semiconductor device comprising a printed wiring board containing the resin composition, wherein the semiconductor device of the present invention can be manufactured by mounting a component (a semiconductor chip) at a conducting part of the printed wiring board ([0214]-[0217]). Regarding claim 18, the reference also teaches a cured product of the resin composition ([0015]). Regarding claim 19, Nakurama teaches a laminating a support-attached resin sheet ([0044]). Regarding claims 21-22, Nakurama further teaches a printed wiring board comprising an insulating layer formed of the cured product of the resin composition ([0011] and [0014]). Nishichi teaches that addition of compounds with fluorine-substituted arylcarbonyloxy group to the resin materials show result in resin materials with improved low water-absorption property which can be preferably usable for various applications such as optical communication, optical waveguide, optical recording, and liquid crystal display fields. Accordingly, a skilled artisan would have been motivated in using the resin composition of Nishichi comprising compounds with fluorine-substituted arylcarbonyloxy group in Nakurama’s resin compositions with different application and would have a reasonable expectation of success in arriving at resins with low in water absorbing ratio and high in water repellency. It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in obtaining an epoxy resin curing agent comprising the claimed compound with fluorine-substituted arylcarbonyloxy group, a resin composition comprising an inorganic filler, a cured product of a resin composition comprising the claimed compound with fluorine-substituted arylcarbonyloxy group, a sheet-like like material comprising the resin composition and a printed wiring board comprising a cured product of the resin composition in view of the teachings of Nishichi and Nakurama. Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Nishichi (Nishichi, A. et al. Patent application publication number US2005/0265686A1) in view of Nakamura (Nakamura, S. et al. Patent application publication number US2017/0154841A1) as applied to claims 21-22 above, and further in view of Funakoshi (Funakoshi, C. et al. Patent number EP3419051A1). The teachings of Nishichi and Nakurama have been set forth above, but the references fail to teach that the semiconductor device is a fan-out semiconductor. The deficiency is however cured by Funakoshi. The reference teaches that in recent years, demands for downsizing have been swelling in the field of semiconductor circuits, etc., and a semiconductor circuit is sometimes put into a package (Chip Size Package) with a size close to the chip size in order to meet the demand. As one of means for realizing a chip size package, a packaging method called a wafer level package (hereinafter occasionally abbreviated as WLP), which is bonded together at the wafer level and fragmented, has been proposed. The WLP has been attracting attention, because it can contribute to reduction of the cost and size. A WLP is mounted face down on a circuit board on which electrodes are formed. Incidentally, along with downsizing and highly advanced integration of a semiconductor chip, the number of electrodes (terminals or bumps) for external connections of the semiconductor chip tends to increase, and therefore, the pitch of the electrodes for external connections tends to become smaller. However, it is not always easy to mount a semiconductor chip, on which bumps are formed with a fine pitch, directly on a circuit board. In order to overcome such a problem as described above, a method, by which a region of a semiconductor encapsulant is formed on the outer periphery of a semiconductor chip, and a redistribution layer connected to electrodes is formed also in the region of a semiconductor encapsulant so as to increase the pitch of the bumps, has been proposed. Since the size of the mounting area for bumps is larger than the size of the semiconductor chip, such a WLP is called a fan-out wafer level package (hereinafter occasionally abbreviated as "FO-WLP"). However, in spite of reducing the amount of warpage by heating the WLP having a redistribution layer disposed only on one face as described above, the redistribution layer will expand when heated at a WLP mounting temperature (260°C, for example), with the result that warpage occurs in the package. Consequently, there arise problems including interlayer peeling inside the package and difficulties in connecting some terminals during mounting. On the other hand, if an adjustment is made so as to reduce the amount of warpage at a WLP mounting temperature for the purpose of reducing warpage of the package during the WLP mounting, warpage will occur in the wafer when the package is cooled to room temperature, because of shrinkage of the redistribution layer that includes the insulation film. Consequently, there arise problems including difficulties in conveying wafers and higher risk of causing stress to break the wafers with a slight shock. The reference thus teaches a curable resin composition that can reduce the amount of warpage both at a temperature for mounting a semiconductor wafer or a semiconductor package, in particular, a fan-out wafer level package (FO-WLP) and at room temperature. The curable resin composition comprises a curable component (A1), among which are epoxy resins ([0023]) and a curable component (B1), among which are polyacrylates ([0065]). Accordingly, due to the above advantages, a skilled artisan would have been motivated to use the fan-out semiconductor device of Fukanoshi in the combination of Nishichi and Nakurama with a reasonable expectation of success in reducing warpage of a wafer or package. It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in obtaining a semiconductor comprising a printed wiring board comprising an insulating layer formed of a cured product of a resin composition containing the claimed compound with fluorine-substituted arylcarbonyloxy group, wherein the semiconductor device is a Fan-Out semiconductor device in view of the teachings of Nishichi, Nakurama and Fukanoshi. Conclusion Claims 1-10 and 12-23 are rejected and no claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm. 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, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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Prosecution Timeline

Apr 05, 2023
Application Filed
Apr 22, 2026
Non-Final Rejection mailed — §102, §103, §112
Jul 14, 2026
Applicant Interview (Telephonic)
Jul 14, 2026
Examiner Interview Summary

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12674804
Modular Chemical Probe For Detection Of Amino Acid Citrulline In Physiological Samples
4y 5m to grant Granted Jul 07, 2026
Patent 12673909
METHOD FOR CONTROLLING A REACTIVE DISTILLATION COLUMN
3y 1m to grant Granted Jul 07, 2026
Patent 12673911
PRODUCTION OF CANNABIDIOL FROM HEMP USING SUBCRITICAL LIQUID CARBON DIOXIDE
3y 1m to grant Granted Jul 07, 2026
Patent 12662439
METHOD FOR PREPARATION OF 1, 4-CYCLOHEXANEDIMETHANOL
3y 12m to grant Granted Jun 23, 2026
Patent 12662438
HFO-1234ZE AND HFO-1234YF COMPOSITIONS AND PROCESSES FOR PRODUCING AND USING THE COMPOSITIONS
1y 6m to grant Granted Jun 23, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
99%
With Interview (+28.8%)
2y 0m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 782 resolved cases by this examiner. Grant probability derived from career allowance rate.

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