RESIN, INSULATING FILM AND ORGANIC FIELD EFFECT TRANSISTOR COMPRISING SAME

§102 §DOUBLEPATENT

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 § 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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamakawa et al. (WO 2018/168676). Note: US 2021/0135115 is being used as an English language equivalent for WO 2018/168676. Considering Claims 1 and 2: Yamakawa et al. teaches a polymer comprising a monomer of the formula PNG media_image1.png 158 158 media_image1.png Greyscale , where R1 is hydrogen or a C1-C6 alkyl group, S1 represents -O- or -C(O)-, p represents 1 or 2, A1 represents a C6-C19 aryl group, Y is halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group, and k is 0 to s-1 (¶0020-21); and a monomer of the formula PNG media_image2.png 168 204 media_image2.png Greyscale , where R2 is hydrogen or a C1-C6 alkyl group, S2 is -O- or -C(O)-, q is 0 or 1, A2 is a C6-C19 aryl group, Y is halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group, j is an integer from 0 to (r-2), m is an integer from 1 to (r-j-1), and Z is a groups of one of the following formula: PNG media_image3.png 168 184 media_image3.png Greyscale , PNG media_image4.png 234 262 media_image4.png Greyscale , PNG media_image5.png 230 250 media_image5.png Greyscale , or PNG media_image6.png 190 186 media_image6.png Greyscale , R3 and R4 each is hydrogen, a C1-C6 alkyl group, an aryl group, or a carboxyalkyl group; and R5 to R29 is hydrogen, halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group (¶0020-22); where the monomer of the second formula is containing in an amount of greater than 20 mole percent (¶0020). Yamakawa et al. does not teach the second monomer has a HOMO level of -6.4 eV or less. However, Yamakawa et al. teaches the same chemical structures as the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. Considering Claim 3: Yamakawa et al. teaches an insulating film comprising a crosslinked product of the resin (¶0023). Considering Claim 4: Yamakawa et al. teaches an organic field effect transistor device in which, on a substrate, an organic semiconductor layer on which a source electrode and a drain electrode are attached and a gate electrode are stacked to each other via a gate insulating layer, wherein the gate insulating layer is the insulating film of the Yamakawa et al. (¶0023). 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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,291,587. Although the claims at issue are not identical, they are not patentably distinct from each other because: Considering Claims 1 and 2: Claim 1 of Patent ‘587 teaches a polymer comprising a monomer of the formula PNG media_image1.png 158 158 media_image1.png Greyscale , where R1 is hydrogen or a C1-C6 alkyl group, S1 represents -O- or -C(O)-, p represents 1 or 2, A1 represents a C6-C19 aryl group, Y is halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group, and k is 0 to s-1; and a monomer of the formula PNG media_image2.png 168 204 media_image2.png Greyscale , where R2 is hydrogen or a C1-C6 alkyl group, S2 is -O- or -C(O)-, q is 0 or 1, A2 is a C6-C19 aryl group, Y is halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group, j is an integer from 0 to (r-2), m is an integer from 1 to (r-j-1), and Z is a groups of one of the following formula: PNG media_image3.png 168 184 media_image3.png Greyscale , PNG media_image4.png 234 262 media_image4.png Greyscale , PNG media_image5.png 230 250 media_image5.png Greyscale , or PNG media_image6.png 190 186 media_image6.png Greyscale , R3 and R4 each is hydrogen, a C1-C6 alkyl group, an aryl group, or a carboxyalkyl group; and R5 to R29 is hydrogen, halogen, a cyano group, a carboxyalkyl group, an alkyl ether group, an aryl ether group, a C1-C18 alkyl group, a fluoroalkyl group, or a cycloalkyl group; where the monomer of the second formula is containing in an amount of greater than 20 mole percent. Patent ‘587 does not teach the second monomer has a HOMO level of -6.4 eV or less. However, Patent ‘587 teaches the same chemical structures as the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. Considering Claim 3: Claim 2 of Patent ‘587 teaches an insulating film comprising a crosslinked product of the resin (¶0023). Considering Claim 4: Claim 3 of Patent ‘587 teaches an organic field effect transistor device in which, on a substrate, an organic semiconductor layer on which a source electrode and a drain electrode are attached and a gate electrode are stacked to each other via a gate insulating layer, wherein the gate insulating layer is the insulating film of the Yamakawa et al. (¶0023). Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00. 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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LIAM J HEINCER/Primary Examiner, Art Unit 1767