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 without traverse of Group II, claims 5-9 in the reply filed on 5/28/2026 is acknowledged. However, applicants canceled the non-elected claims 1-4 and 10-21 and newly added claims 22-24 are encompassed by the elected group of invention.
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)(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.
Claim(s) 5,22 and 24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hayashi et al (US 2022/0236644).
Regarding claims 5,22 and 24, Hayashi et al disclose a photosensitive resin composition, a photosensitive dry film (corresponding to the claimed protective film), a laminate using the composition or dry film [0006]; the photosensitive resin composition comprising (A) a silicone skeleton-containing polymer [0008] and solvent [0011], [0095], wherein the silicone skeleton-containing polymer (A) has crosslinking groups such as epoxy and hydroxy groups [0035].
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.
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(s) 6-8 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (US 2022/0236644) as applied to claim 5 above.
Regarding claim 6, Hayashi et al disclose above for the claim 5 but fail to teach the film having the specified thickness.
However, Hayashi et al disclose that the photosensitive resin coating preferably has a thickness of 5 to 200 μm, more preferably 10 to 100 μm [0132], which overlaps the claimed thickness of 1 to 10 μm; and overlapping ranges are prima facie obvious, MPEP 2144.05.
With regards to claim 7, the limitation of “preventing metal contaminants of a wafer edge” is an intended use of the protective film, and Hayashi et al’s film has all the components and which is capable of performing in the claimed manner. Additionally, the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Regarding claim 8, Hayashi et al disclose above for the claim 5 but fail to teach the film is cured with a light having the specified wavelength.
However, Hayashi et al disclose that the photosensitive resin coating is exposed to radiation; The exposure radiation is preferably of wavelength 1 to 600 nm, more preferably 10 to 600 nm, even more preferably 190 to 500 nm [0125]; and aforesaid teaching reads on the claimed limitation of the cured by a light have the claimed wavelength; which overlaps the claimed light having wavelength of 170 to 800 nm; and overlapping ranges are prima facie obvious, MPEP 2144.05.
Regarding claim 23, Hayashi et al disclose above for the claim 5 but fail to teach the film has the claimed viscosity.
However, Hayashi et al disclose that the viscosity and fluidity of the photosensitive resin coating are closely correlated. As long as the photosensitive resin coating has a proper range of viscosity, it exhibits a sufficient fluidity to fill deeply even in a narrow gap or it softens to enhance the adhesion to the substrate. Accordingly, from the standpoint of fluidity, the photosensitive resin coating should preferably have a viscosity in the range of 10 to 5,000 Pa.Math.s, more preferably 30 to 2,000 Pa.Math.s, and even more preferably 50 to 300 Pa.Math.s at a temperature of 80 to 120° C. It is noted that the viscosity is measured by a rotational viscometer [0133].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the viscosity of the film as Hayashi et al suggest that the viscosity and fluidity of the photosensitive resin coating are closely correlated for improved adhesion of the film (corresponds to the protective film) on a substrate as suggested by Hayashi et al.
Claim(s) 5,7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwao et al (US 2014/0038423).
Regarding claims 5 and 9, Iwao et al disclose a negative photoresist solution (PR) (masking solution) applied to form a wafer-edge protective film forming composition for semiconductor manufacturing to form a masking film M (corresponds to the claimed protective film) ([0012], [0095], [0081], Figures 5B and 6) wherein, the negative photoresist solution obviously comprises a polymer compound or a compound having a cross-linkable group and a solvent [0094],[0109].
Iwao et al disclose also disclose that a liquid-immersion upper layer protective film solution (for example, an organic polymer containing fluorine) other than the negative photoresist solution may be used as the masking solution [0145]; and aforesaid also reads on the claimed film-forming composition comprises a polymer and a solvent because the protective film solution obviously included a solvent with the organic polymer.
With regards to claim 7, the limitation of “preventing metal contaminants of a wafer edge” is an intended use of the protective film, and Iwao et al’s film has all the components and which is capable of performing in the claimed manner. Additionally, the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Conclusion
The prior art made of record, listed in the PTO892 and not relied upon is considered pertinent to applicant's disclosure. Kawabata et al (US 11,567,405) disclose a photosensitive resin composition is provided that includes a polymer precursor selected from a polyimide precursor and a polybenzoxazole precursor; a photo-radical polymerization initiator; and a solvent (abstract); and the polymer having a crosslinkable group such as epoxy group (col.30, lines 62-67; col.32, lines 15-22).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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