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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogihara (US 20100086870).
Regarding Claim 16,
Ogihara teaches a composition which contains a polysiloxane (Abstract), an acid (Abstract), a solvent (Abstract), and an ionic liquid compound (Paragraph 117).
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.
Claims 17-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ogihara (US 20100086870) as applied to Claim 15.
Regarding Claims 17-18,
Ogihara teaches that the siloxane polymer can be made by condensing two or more monomer units where the number of non-oxygen substituents on the silicon atom are preferred to be 0 or 1 (Paragraph 71) and where the non-oxygen substituent (R) includes hydrogen, alkyl groups such as methyl or ethyl, and aryl groups such as phenyl (Paragraph 73). While Ogihara is silent on the ratio of Si-O bonds to Si-OH bonds (and the corresponding IR ratio between the two), Ogihara teaches in synthesis example 1 (Paragraph 178) a siloxane polymer generated from 100 g of methyltrimethoxysilane, 10 g of phenyltrimethoxysilane, and 50 g of tetraethoxysilane. The molar ratio of the trialkoxysilane to tetraalkoxysilane is 3.26 in this example, very close to the 3.17 ratio of applicant’s siloxane B in the specification. As such, it would logically follow that the S2/S1 ratio of the siloxane taught by Ogihara would have a similar ratio to that of the applicant.
Regarding Claims 19-20,
Ogihara teaches the use of ammonium salts (Paragraph 116) such as tetramethylammonium, tetrapropylammonium and tetrabutylammonium with counterions such as formate, acetate, oleate, propionate, salicylate, and trifluoromethanesulfonate (Paragraph 125), meeting the requirements of the instant claims.
Regarding Claim 21,
Ogihara teaches that the molecular weight of the polysiloxane is most preferably between 300 and 30,000 (Paragraph 113), containing the range of the instant claim and further teaches in synthesis examples 1-5 molecular weights of 2000 to 3000 (Paragraphs 178-182), meeting the requirements of the instant claim.
Regarding Claim 22,
Ogihara teaches that the amount of the ionic liquid component is from 0.01 to 50 parts by weight relative to the siloxane (Paragraph 126), which overlaps with the range of the instant claim. One of ordinary skill in the art, noting that Ogihara teaches this component to accelerate curing (Paragraph 116) would adjust its incorporation amount to reach a desired curing rate. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 23,
Ogihara teaches the use of the ionic liquid in amounts of 0.01 to 50 parts by weight relative to the siloxane is preferred (Paragraph 126) and also teaches the use of an acid component in amounts of 0.001 to 25 parts by mass relative to the siloxane (Paragraph 128). Ogihara teaches that the acid is used to stabilize the composition (Paragraph 128) and as such, the ordinarily skilled artisan would adjust the amount of the acid to achieve the desired stability. Ogihara also teaches that the ionic liquid is used to accelerate curing (Paragraph 116), so the ordinarily skilled artisan would adjust its amount to obtain a desired curing rate. As such, it would have been obvious prior to the effective filing date of the instant application to have set the ratio of ionic liquid to acid to any ratio that afforded the desired level of composition stability and curing rate.
Regarding Claim 24,
Ogihara teaches the use of organic acids such as maleic, citraconic, and phthalic acid (Paragraph 128), meeting the requirements of the instant claim.
Regarding Claim 25,
Ogihara teaches in synthesis example 1 a reaction with 0.24 moles of tetraethoxysilane (formula Ib) in combination with 0.734 moles of methyltrimethoxysilane and 0.05 moles of phenyltrimethoxysilane (both formula Ia), which results in a percentage of units of formula Ib of 23% of the composition, meeting the requirements of the instant claim.
Regarding Claim 26,
Ogihara teaches the use of solvents such as propylene glycol monomethyl ether acetate (PGMEA), propylene glycol monomethyl ether (PGME), and butanediol (Paragraphs 89 and 134).
Regarding Claim 27,
Ogihara teaches that the amount of solvent is preferred to be 400 to 50,000 parts by mass relative to the siloxane (Paragraph 136), which overlaps with the range of the instant claim. As Ogihara intends for the composition to be spin-coated (Paragraph 160), the ordinarily skilled artisan would be aware that the amount of solid mass relative to the amount of solvent would have an effect on the thickness of the film formed. As such, one of ordinary skill in the art would adjust the amount of solvent used to obtain a film of the desired thickness. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 28-29,
Ogihara teaches that the film is coated onto a substrate by spin coating and cured by heating, preferably above 50 °C and below 400 °C (Paragraph 160) and teaches in the examples a curing temperature of 200 °C (Paragraph 193), meeting the requirements of the instant claims.
Regarding Claim 30,
Ogihara teaches that the composition is used in the manufacture of semiconductor devices (Paragraph 2) and specifically used as an etch mask (Paragraph 199).
Double Patenting
Claims 16-22 and 24-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 18 of copending Application No. 19/219796. While the claims in question are not identical, there is extensive overlap in the allowable ranges of functional groups and component incorporation. Application 19/219796 is directed towards a polysiloxane composition which utilizes the identical monomers with overlap in the allowable R groups and which requires the ratio of S2/S1 to be 0.02 to 0.2, which is identical to claim 17 of the instant application. Further, both compositions require the use of acid, ionic liquid, and solvent with the allowable compounds having extensive overlap. Similarly, the amount of solvent and ionic liquid relative to the siloxane component is identical in both the instant application and the copending application. Both applications require curing by heating to the same required temperature and are used to manufacture an electronic device.
This is a provisional nonstatutory double patenting rejection.
Claims 16-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of copending Application No. 18/999387. While the claims in question are not identical, there is extensive overlap in the allowable ranges of functional groups and component incorporation. Application 18/999387 is directed towards a polysiloxane composition which utilizes the identical monomers with overlap in the allowable R groups and which requires the ratio of S2/S1 to be 0.01 to 0.1, which overlaps with the range of claim 17 of the instant application. Further, both compositions require the use of acid, ionic liquid, and solvent with the allowable compounds having extensive overlap. Similarly, the amount of solvent and ionic liquid relative to the siloxane component is identical in both the instant application and the copending application. Both applications require curing by heating to the same required temperature and are used to manufacture an electronic device.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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