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 and 16-19 are under consideration
Claims 14-15 are withdrawn
Election/Restrictions
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/26/2025.
Applicant traverses on grounds of sufficiently related subject matter. This basis does not overcome the burden as established in the restriction requirement mailed 10/30/2025. Applicant may request rejoinder if appropriate under MPEP should allowable subject matter be identified; as such, the remarks are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to because the drawings are not appropriately labeled (such as “FIG. 1”).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 more than 150 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 1-19 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.
Regarding claim 1,
It is unclear if the claim limitation of a “compound containing two or more nitrogen atoms having a glycidyl group represented by the following formula (C-2)” requires both structures in formula (C-2) or if it only requires at least one of the two shown structures.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-2, 4, and 6-19 are rejected under 35 U.S.C. 103 as being unpatentable over Takemura (US20200041903A1, published 2020) in view of Tsubaki (US20120315449A1, published 2012).
Regarding claim 1-2, 4, and 6-19,
Takemura teaches a photosensitive resin composition comprising of a solvent and an alkali-soluble polymer having a polyamide structural unit, a polyamide-imide structural unit, or a polyimide structural unit, selected from a polyamide, a polyamide-imide, a polyimide, a polyimide precursor, a polybenzoxazole, and a polybenzoxazole precursor, including a reaction product of a diamine containing at least one of a diamine shown by the following general formula (1) and a diamine shown by the following general formula (2), together with at least one of a tetracarboxylic dianhydride shown by the following general formula (3) as well as a dicarboxylic acid and a dicarboxylic halide shown by the following general formula (4) [abstract].
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Takemura teaches an example resin formed from 6FAP and AN-9 [0282], reading on the instant resin (A), reading on instant claims 4, 6-9, and 13.
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Takemura teaches a photoacid generator [0044], reading on the instant photoacid generator (B).
Takemura teaches a crosslinking agent may be the following [0222], where u is 1-3, reading on the instant crosslinking agent (C).
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Takemura teaches a thermal acid generator as shown below [0316], reading on the instant onium salt (D), reading on instant claim 2.
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However, Takemura only discloses their composition for use as a positive photosensitive resin composition.
Tsubaki, analogous art, teaches a positive resist composition decreases solubility in a negative developer when exposed to irradiation, then developing with a negative developer [abstract], functioning as a negative resist composition.
As both Takemura and Tsubaki teaches positive resist compositions, it would be obvious to a person of ordinary skill in the art that the resist film of Takemura may similarly function as a negative photoresist composition when exposed then developed with a negative developer, reading on instant claim 1.
Takemura teaches their resin may further contain a tetracarboxylic acid diester unit shown by the following general formula (22), wherein W1 represents a tetravalent organic group, and R16 is more preferably group shown by the following general formula ( 23-1 ) [0034-0037],
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where Rf is a linear, branched, or cyclic alkyl group or an aromatic group having 1 to 20 carbon atoms, provided that all of or a part of the hydrogen atoms is substituted by a fluorine atom, reading on instant claims 10-12.
Takemura teaches that a cured film of their invention is excellent as a protective film for electric and electronic parts as well as an insulating protective film using the polymer as a base resin [0079], reading on instant claims 16-19.
Claims 1-2, 5, 10-11, and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Urano (US20170298186A1, published 2020).
Regarding claims 1-2, 5, 10-11, and 16-19,
Urano teaches negative photosensitive resin composition comprising of a polyimide precursor polymer, a solvent, a photoacid generator, and one or two or more crosslinking agents selected from an amino condensate modified with formaldehyde or formaldehyde-alcohol, a phenol compound having on average two or more methylol groups or alkoxymethylol groups per molecule, a polyhydric phenol compound in which a hydrogen atom of a phenolic hydroxyl group is substituted with a glycidyl group, a polyhydric phenol compound in which a hydrogen atom of a phenolic hydroxyl group is substituted with a substituent shown by the following formula (C-1), and a compound containing two or more nitrogen atoms bonded to a glycidyl group as shown by the following formula (C-2),
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wherein the dotted line represents a bond, Rc represents a linear, branched, or cyclic alkyl group having 1 to 6 carbon atoms, and “s” represents 1 or 2 [abstract, 0055-0059], reading on the instant components (A), (B), (C), and (E).
Urano further teaches including an onium salt comprising of iodonium or sulfonium cations, such as diphenyliodonium trifluoromethanesulfonate and triphenylsulfonium trifluoromethanesulfonate, which may be used alone or in combination of two or more kinds [0187-0193], reading on the instant component (D), reading on instant claims 1 and 5.
Urano teaches a thermal acid generator as shown below [0341], aligning with the instant component (D) and reading on instant claim 2.
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Urano teaches their polymer formed from the following precursor,
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where X1 represents a tetravalent organic group and R1 may preferably be the following formula (3) [0026-0030], reading on instant claims 10-11.
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Urano teaches their cured film can serve as an excellent top coat for protecting electric and electronic parts or an excellent insulating top coat [0083], reading on instant claims 16-19.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Urano (US20170298186A1, published 2020) as applied to claim 1 above, and further in view of Oono (US6723483B1, published 2004).
Regarding claim 3,
Urano teaches the above limitations set forth.
Urano fails to teach their onium salt with an anion as shown in instant claim 3.
Oono, analogous art, teaches a sulfonium salt compound used as an acid generator and a photo polymerization initiator used in the chemically amplified resist compositions [col 1 lines 5-17], which may be a compound shown by general formula [3], where Zp- is an anion derived from a carboxylic acid, each X is a phenyl group, and p may be 1 [col 2 lines 46-61],
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where the carboxylic acid may be shown with formula [4], where R5 may be an aliphatic hydrocarbon group which may be a C1-C20 alkyl group [col 5 line 48 to col 6 line 6].
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As both Urano and Oono teach sulfonium salts for use as photoacid generators in resist compositions, it would have been obvious to a person of ordinary skill in the art that using a carboxylic acid derived anion as disclosed by Oono with the sulfonium salt of Urano would result in a comparable and expected photosensitive resist composition.
That is, the substitution of the carboxylic acid derived anion of Oono for the anion of Urano, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of functioning as a photoacid generator in a photosensitive resist composition, reading on instant claim 3. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Claims 1, 4-5, and 9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Iio (US20220043348A1, published 2/20/2022).
Regarding claims 1, 4-5, and 9,
Iio teaches a negative photosensitive resin composition comprising of an alkali-soluble resin containing at least one or more structures selected from a polyimide structure, a polyamide structure, a polybenzoxazole structure, a polyamide-imide structure, and a precursor structure thereof, a compound that generates an acid by light (photoacid generator), a crosslinking agent [abstract], and a solvent [0171], aligning with the instant components (A), (B), and (E).
Iino teaches their crosslinking agent is more preferably selected from an amino condensate modified by formaldehyde or formaldehyde-alcohol; and a phenol compound having two or more methylol groups or alkoxymethylol groups by average in one molecule [0138], aligning with the instant component (C).
Iino teaches their photoacid generator may be a sulfonium salt comprising of a triphenylsulfonium cation and a trifluoromethanesulfonate anion [0116-0117], where one of their acid generators may be used or a combination of two or more thereof may be used [0128], aligning with the instant component (D), reading on instant claims 1 and 5.
Iino teaches their polymer may be formed from 2,2-bis(3-amino-4-hydroxyphenyl)hexafluoropropane (6FAP) and 3,3′,4,4′-oxydiphthalic dianhydride (s-ODPA) [0198], reading on instant claims 4 and 9.
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Conclusion
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734