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 .
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.
Election/Restrictions
The restriction requirement mailed on June 20, 2025 is withdrawn, as there is no significant burden to examine all of the claims.
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 1-2, 10-18, 22-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/418268 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
As to instant claims 1-2, App. No. ‘268 claims a composition comprising one or more resins, encapsulated imidazoles having latent activity, adhesion promoters and/or film formers, wherein a film formed from the composition has a Tg of >200°C, a storage modulus at 25°C of <6.5 GPa, or <5 GPa, and a storage modulus at 250°C of >0.1 GPa, or >0.2 GPa, further claiming the coefficient of thermal expansion of <250 ppm/°C (claims 1 and 17-18), which meets the limitations of the claimed invention.
As to instant claims 10-12, App. No. ‘268 claims the same structures.
As to instant claims 13-14, App. No. ‘268 claims the same DSC onset temperatures and minimum film melt viscosity (claims 1 and 6).
As to claims 15-16, App. No. ‘268 claims the DT from the DCS onset temperature to the DSC peak temperature of less than 20°C or less than 15°C, or less than 10°C or less than 5°C (claims 7-10).
As to claims 17-18 and 22-24, App. No. 268 similarly claims the method of preparing a cured film.
As to claims 25-29, App. No. 268 claims the cured film and wherein the film is an underfill film or wafer-level underfill film.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 6 is objected to because of the following informalities:
In claim 6, applicants attempt to claim the two electron-withdrawing groups; however, as the claim is currently written, it appears that the oxygen containing groups are part of the R1R2 definition.
Based on the specification (p. 18, [0043]), this claim might be better written as follows:
“The composition of claim 1, wherein the imidazole comprises at least two electron-withdrawing groups independently selected from the group consisting of substituted or unsubstituted aryl groups, cyano (-CN), halide (-X), -CHO, -COOH, -NR1R2, alkyl groups substituted with one or more groups independently selected from cyano (-CN), halide (-X) -CHO, -COOH, -NR1R2, and oxygen-containing groups, wherein each of R1 and R2 is independent selected from a hydrogen atom or a substituted or unsubstituted alkyl group.”
Appropriate correction is required.
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 15-16 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 15 recites the broad recitation less than 20°C, and the claim also recites less than 15°C, which is the narrower statement of the range/limitation.
In the present instance, claim 16 recites the broad recitation less than 10°C, and the claim also recites less than 5°C, which is the narrower statement of the range/limitation.
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.
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.
(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.
Claims 18-22, 25 and 28-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2021-097091; however, for convenience the machine translation will be cited below.
JP ‘091 discloses an underfill material bonded to the wafer-side surface of a semiconductor chip, and exemplifies a cured film prepared by applying with a comma coater, and discloses that the underfill material is cured at 250°C.
JP ‘091 exemplifies the composition used for forming the cured film as follows:
15 parts acrylic rubber;
22 parts PO-modified polyether type epoxy resin;
20 parts JER-1031S polyfunctional epoxy resin;
11 parts TD-2131, novolac type phenol;
1 part imidazole curing accelerator 2PHZ-PW, which is known in the art as 2-phenyl-4,5-bis(hydroxymethyl)imidazole and is a known latent accelerator; and
25-45 parts silica, which meets applicants’ inorganic filler.
JP ’091 anticipates instant claims 18-21, 25 and 28-29.
Claim 22 can be rejected, as claim 22 only limits the resin when it is a maleimide-containing resin, where epoxy and phenolic resins are listed as alternatives.
Claims 18-21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tachibana (US 2009/0273073).
Tachibana discloses a buildup layer comprising
a thermosetting resin, which includes epoxy resins, phenol resins, maleimide resins, etc. (p. 5, [0074] to p. 6, [0096]);
a film-forming resin (p. 7, [0103]-[0105]), which meets applicants’ film former;
an imidazole, which is specifically listed to include 2-phenyl-4,5-dihydroxymethylimidazole (p. 6, [0097] to p. 7, [0110]), and meets applicants’ preferred latent imidazole accelerator;
inorganic filler (p. 7, [0113]-[0114]); and
a coupler to improve wettability at the interface with the inorganic filler (p. 8, [0120]), suggesting applicants’ adhesion promoter.
2-phenyl-4,5-dihydroxymethylimidazole contains three electron withdrawing groups: a phenyl (aryl) group and two hydroxymethyl groups (alkyl groups substituted with oxygen-containing groups), where R3 and R4 of the formula in claim 8 are substituted alkyl groups, R1 is H, and R2 is C6 aryl.
Tachibana discloses applying the buildup layer composition to a substrate and drying at 160°C (p. 10, [0165]).
Tachibana anticipates instant claims 18-21.
Claim 23 can be rejected, as it only limits claim 18 when the resin is a (meth)acrylate, and epoxy and maleimide resins are listed as alternatives.
As to claims 28-29, Tachibana discloses the buildup layers as part of a new underfill for semiconductor element structures (p. 1, [0017]).
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.
Claims 1-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated or under 35 U.S.C. 103 as unpatentable over JP 2018-150456; however, for convenience, the machine translation will be cited below.
JP ‘456 exemplifies a composition comprising the following:
3 parts R-181S, an acrylic modified silicone low stress agent;
18 parts BMI-2300, phenylmethane bismaleimide with the formula below;
9 parts Pd-BOZ; and
70 parts silica filler:
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218
568
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Greyscale
, where n=0-5 and R2 is H.
JP ‘456 discloses that the composition includes an accelerator, specifically listed to include 2-phenyl-4-methyl-5-hydroxymethylimidazole, also known as 4-methyl-2-phenyl-1H-imidazole-5-methanol or 2P4MHZ, and is a known latent accelerator, has two electron withdrawing groups of methylhydroxy and phenyl, and meets applicants’ formula when R1 is H, R2 is phenyl (unsubstituted C6 aryl), R3 is a hydroxymethyl (or substituted alkyl) and R4 is methyl (or unsubstituted alkyl).
The composition is injection molded into a film and has the following properties:
a coefficient of thermal expansion α2 of 54.2 ppm/°C;
a Tg (DMA) of 339°C;
a storage modulus at 30°C of 5.519 GPa; and
a storage modulus at 250°C of 4.105 GPa.
While JP ‘456 does not disclose the storage modulus as 230°C, storage modulus values decrease as the temperature increases; therefore, the storage modulus at 230°C is inherently greater than 0.3 GPa, as claimed.
While JP ‘456 does not disclose the storage modulus as 25°C, the storage modulus between 30-250°C is stable compared to other compositions and inherently meets the claimed limitation of less than 6.5 GPa, as claimed.
Alternatively, one of ordinary skill in the art would expect the storage modulus of JP ‘456 at the claimed temperatures to meet the claimed values, as they are close and would not be expected to drastically change based on the difference between the modulus at 30°C and 250°C.
JP ‘456 anticipates or is prima facie obvious over instant claims 1-10.
Claims 11-12 can be rejected, as these claims only limit the thermosetting resin when it is a (meth)acrylate or an epoxy resin is present, where bismaleimide is listed as an alternative. The above example does not include a (meth)acrylate or epoxy resin.
As to claims 13-16, the composition includes applicants’ preferred bismaleimide resin, preferred imidazole accelerator, and preferred filler; therefore, the composition inherently meets the claimed onset temperatures, DT and viscosity measured by DHR2.
As to claims 17-18, JP ‘456 discloses using the obtained sealing resin composition in a low-pressure transfer molding machine, and curing at an elevated temperature. Transfer molding is a known manufacturing method in which casting material is introduced into a mold.
Claims 19-27 can be similarly rejected as above.
Claims 1-2, 3-9, 10, 11 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana (US 2009/0273073).
Tachibana teaches a buildup layer comprising
a thermosetting resin, which includes epoxy resins, phenol resins, maleimide resins, etc. (p. 5, [0074] to p. 6, [0096]);
a film-forming resin (p. 7, [0103]-[0105]), which meets applicants’ film former;
an imidazole, which is specifically listed to include 2-phenyl-4,5-dihydroxymethylimidazole (p. 6, [0097] to p. 7, [0110]), and meets applicants’ preferred latent imidazole accelerator;
inorganic filler (p. 7, [0113]-[0114]); and
a coupler to improve wettability at the interface with the inorganic filler (p. 8, [0120]), suggesting applicants’ adhesion promoter.
Tachibana teaches that build-up layer has a glass transition temperature of at least 170°C, as measured by TMA (p. 4, [0060]; the coefficient of linear expansion is 10-40 ppm/°C up to the glass transition temperature (p. 4, [0062]); the elastic modulus of the cured product of the resin part in the build-up layer at room temperature is preferably at least 5 GPa (p. 4, [0063]); and exemplifies the Tg of the cured composition as 240°C, as measured by DMA, and an elastic modulus of the cured product of the resin part in the build-up layer at 250°C is 0.8 Gpa (p. 11, Table 2, Material 1).
While Tachibana does not teach the storage modulus as 230°C, storage modulus values decrease as the temperature increases; therefore, the storage modulus at 230°C is inherently greater than 0.3 GPa, as claimed.
The build-up layer of Tachibana is prima facie obvious over instant claims 1-2 and 26-27, as the described properties meet or overlap the claimed Tg (DMA), modulus @ 25°C and modulus @ 250°C.
As to claims 3-9, 2-phenyl-4,5-dihydroxymethylimidazole contains three electron withdrawing groups: a phenyl (aryl) group and two hydroxymethyl groups (alkyl groups substituted with oxygen-containing groups), where R3 and R4 of the formula in claim 8 are substituted alkyl groups, R1 is H, and R2 is C6 aryl.
As to claims 10 and 22, the first maleimide structure in the claim is the most simple bismaleimide when n=0 and is prima facie obvious.
Claim 11 can be rejected, as it only limits claim 1 when the resin is a (meth)acrylate, and epoxy and maleimide resins are listed as alternatives.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM 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, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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