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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 (as well as claims 2-9 due to their dependency from claim 1) and claim 4 are rendered indefinite because it is unclear whether the carbon content recited in claims 1 and 4 are based on weight, mole, etc.
Claim Interpretation
For the purpose of examination, the carbon content is understood to be based on weight.
Claim Rejections - 35 USC § 102 / 103
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.
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, 2, 4, and 6-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Endo (WO 2020/255984).
Note: since WO 2020/255984 was not published in the English language, citations in this action refer to US 2022/0319839 - which is the printed application of the US national stage application of WO 2020/255984.
Endo teaches a resist underlayer composition comprising a solvent and a heterocyclic compound having a dicyanostyryl group (paragraph 0016). The compound comprising the structure (paragraphs 0021-0029):
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wherein B may be an ether or ester linkage, m may be 2, and L is:
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This structure reads on the compound of claim 2 represented by formula (2) with divalent group X11 corresponding to -Q-, since both A and B may be direct bonds and m may be 2. The heterocyclic compound is preferably triazinetrione, R is preferably hydrogen, and Y is preferably an ether or ester linkage (paragraph 0081). The carbon content of the compound illustrated in Example 1 (paragraph 0116) with m being 2 would be about 60 wt%.
The resist underlayer composition is used to pattern a substrate by applying the composition to a substrate, subjecting to exposure to form a resist pattern, removing the portion between the pattern, plating with copper, then removing the pattern (paragraphs 0043-0049). An inorganic resist underlayer is applied over the inventive resist underlayer (paragraph 0166), corresponding to the light transmissive support substrate of claim 6 while the inventive underlayer corresponds to the adhesive layer of claim 7. The pattern is formed using a laser (paragraph 0169).
One of ordinary skill in the art would have immediately envisaged an embodiment wherein m is two based on the limited number (four) of values for m. Alternatively, it would have been obvious to one of ordinary skill in the art to use a heterocyclic compound wherein m is two based on the explicit teaching by Endo that m may be two.
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, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sugita (WO 2022/102691).
Note: since WO 2022/102691 was not published in the English language, citations in this action refer to EP 4,227,378 - which is the printed application of the European national stage application of WO 2022/102691.
Sugita is directed to an electronic component formed by arranging a chip component on a curable adhesive layer provided on a support tape, performing irradiation from the surface of the support tape having the chip component, applying a stimulus from the opposite surface of the support tape to transfer the chip component to a member, wherein the curable adhesive layer is formed from a polymerizable polymer and a reaction initiator (paragraph 0009). The stimulus is preferably provided by a laser (paragraph 0022). The curable adhesive comprises a UV absorber (paragraph 0043), such as ethylhexyl methoxycinnamate (paragraph 0049). Ethylhexyl methoxycinnamate has a carbon content of about 74 wt% and a structure that reads on formula (1) of claim 1, wherein X1 is an ether bond, n1=n2=zero, R1 is hydrogen, and R2 is -COO-. Since the adhesive is applied to the support tape as a solution (paragraph 0085), it must also contain a solvent.
Although Sugita does not illustrate an embodiment employing an adhesive comprising ethylhexyl methoxycinnamate, it would have been obvious to one of ordinary skill in the art based on the explicit teachings of Sugita that ethylhexyl methoxycinnamate may be added to the adhesive as a UV absorber.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sugita (WO 2022/102691) in view of Kirschner (US 2007/0249060).
Sugita teaches all the limitations of claim 5, as outlined above, except for the presence of the compound recited in the claim. However, Sugita does teach the addition of ethylhexyl methoxycinnamate as a UV absorber.
Kirschner discloses that a-cyano-4-hydroxycinnamic acid is known in the art as UV absorbing molecule (paragraph 0054). The compound a-cyano-4-hydroxycinnamic acid reads on the compound of claim 5, wherein X1 is an ether bond, n1=n2=zero, R1 is -CN, and R2 is -COO-.
It would have been obvious to use a-cyano-4-hydroxycinnamic acid as the UV absorber of Sugita since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (ee MPEP 2144.07). Kirschner discloses that it is known that a-cyano-4-hydroxycinnamic acid is suitable for use as a UV absorber.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/881,140 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because limitations in the preamble represent a statement of purpose or use since the body of the claim fully and intrinsically sets forth all the limitations of the claimed invention. See MPEP 2111.02. The courts have held that a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product satisfying the claimed structural limitations. See MPEP 2114.
As such, there is no patentably distinction between the composition recited in the claims of copending Application No. 18/881,140 as being "for forming a gap-filling material" and the composition of the instant claims directed to a "release agent composition."
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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, Callie Shosho, can be reached on 571 272-1123. 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.
/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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