DETAILED ACTION
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 I, claims 1-4, 10-12 in the reply filed on 11/10/2025 is acknowledged. Claims 5-9, 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/10/2025.
Claim Objections
Claim 1 objected to because of the following informalities: a proper Markush format is “selected from the group consisting of”. Appropriate correction is required.
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.
Claim(s) 1, 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by De et al (US 2022/0127459).
De teaches a dielectric film forming composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer (abstract, claim, 0024). The composition further comprises one solvent or catalyst (claims 9, 13).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2-3, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over De et al (US 2022/0127459).
De teaches a dielectric film forming composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer (abstract, claim, 0024).
De does not teach the content of each component.
However, it is prima facie obvious to mix the ingredients in any ratio because
each of them is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 2-3, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over De et al (US 2022/0127459) in view of Resham Thapa (Polyimides (PI) & Polybenzoxazoles (PBO): Advanced Dielectric Polymers for Wafer Bumping & Wafer Level Packaging, https://waferdies.com/polyimides-pi-and-polybenzoxazoles-pbo-advanced-dielectric-polymers-for-wafer-bumping-wafer-level-packaging/)
De teaches a dielectric film forming composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer (abstract, claim, 0024).
De does not teach the content of each component.
However, Resham Thapa teaches PI polymers are negative acting and PBO are positive acting, and their choice depends on the specific need of the end product requirements such as via diameter, Cu trace thickness etc. (page 2). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the contents of these two polymers through routine experimentation to balance between resolution of via and film thickness because the contents are result effective variables where the more PBO provides the better resolution of via or line/space, whereas the more PI provides a thicker film. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1, 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No.11,634,529. Although the claims at issue are not identical, they are not patentably distinct from each other because 529 claims a composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer.
Claims 1, 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 40 of copending Application No.18/782,630. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘630 claims a composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No.18/734,029. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘029 claims a composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No.18/542,862. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘862 claims a composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 9 of copending Application No.17/498,813. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘813 claims a composition comprising at least one of polybenzoxazole precursor, a polyimide precursor polymer or a fully imidized polyimide polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WENWEN CAI/
Primary Examiner, Art Unit 1763