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
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 1 and dependent claims 2-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 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 claim is unclear due to inconsistencies between the number average molecular weight (Mn) limitation and the required repeat units of the claimed formulae (1) and (2). The repeat unit l values of 1 to 5 (or higher) would result in low molecular weight oligomers (depending on the type of repeat units incorporated) and not result in the required Mn range, similarly m and n values of 1 to 5 (or higher) also would not achieve the required Mn values.
Claim Interpretation
Due to inconsistencies between the required number average molecular weight (Mn) and the repeat units of the formula (1) and formula (2), it is interpreted that the claimed requirements are satisfied when the repeat unit requirements are met.
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 and 3-7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Mizori US 2018/0237668A1.
Regarding claims 1 and 4, Mizori teaches a curable adhesive composition comprising a maleimide terminated polyimide, an epoxide component and at least one anionic curing catalyst (reference claims 1, 8-9 and 12), where the structure of the maleimide terminated polyimide can be selected to be the following (page 34, third structure).
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with n = 2 to 10 (para [0066]) (where the repeat unit in the above structure has a molecular weight of ~665g/mol and n=10 would result in a number average molecular weight of ~6650).
The disclosed maleimide terminated polyimide corresponds to applicant’s formula (2), where m and n are the same and equal 2 to 10, where A1 is the same as A2 and meets formula (3) with R1 as unsubstituted aliphatic group having 2 carbon atoms with X3 as -CH2-, and X2 is
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Mizori further teaches (reference claim 18) anionic curing catalyst, also referred as an anionic curing initiator (para [0137]), 2,4-diamino-6-[2'-ethyl-4'-methylimidazolyl-(1')]-ethyl-s-triazine (2E4MZ-A), which is the same as utilized in the instant specification (page 21, C-1), and serves the dual role of a reaction initiator and a diaminotriazine ring-containing imidazole, meeting applicant’s (B) and (C).
Regarding claim 3, Mizori teaches solvent (para [0228]), meeting the claimed requirement.
Regarding claims 5-7, Mizori teaches (reference claims 31 and 32) a flip chip semiconductor device (para [0056]), and conformal coating for suitable for protecting microelectronic assemblies, meeting the claimed requirements.
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mizori US 2018/0237668A1, as applied to claims 1 and 3-7 above.
Regarding claim 2, as discussed when addressing claim 1, (2E4MZ-A) serves the dual role of a reaction initiator and a diaminotriazine ring-containing imidazole. Mizori discloses Table 3 (page 26) where 4 wt% of imidazole based catalyst is utilized in the overall composition with 85 wt% bismaleimide based resin (BMI). Based on the teachings of Mizori, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized 4wt% of (2E4MZ-A) along with the maleimide terminated polyimide (as shown in claim 1, corresponding to (A)) to generate the curable adhesive composition, resulting in components (B), (C) at (4/85) x 100 = 4.7 parts per 100 parts by mass of component (A).
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.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-8 of copending Application No. 18/882,091 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same curable maleimide resin composition with identical maleimide compounds corresponding to Formula (1) (when a=0) and Formula (2), reaction initiator and a diaminotriazine ring-containing imidazole.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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