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 .
Response to Arguments
1. Applicant’s arguments, see page 7, line 10, filed 01 August 2024, with respect to the rejection of Claims 1-11, 13-16, and 21-25 under 35 U.S.C. 103 as being unpatentable by Ito et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/101314 A1), hereinafter Ito; Claims 17-20 under 35 U.S.C. 103 as being unpatentable over Ito et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/101314 A1), hereinafter Ito, and in view of Komuro et al. (United States Patent Publication No. US 2016/0007454 A1), hereinafter Komuro; have been fully considered but they are not persuasive. Applicant argues that there is no teaching from Ito to combine the binder resin (C1-1) of Ito with the binder resin (C1-2) of Ito. This is not persuasive. The binder resin (C1-1) of Ito correlates to general formula (II) of Ito, See: Paragraph [0181] of Ito. The binder resin (C1-2) of Ito correlates to general formula (III) of Ito, See: Paragraph [0209] of Ito. Paragraph [0176] of Ito teaches:
The chemical structure of the epoxy (meth) acrylate resin is not particularly limited, but it is preferable to contain an epoxy (meth)acrylate resin having a repeating unit structure represented by general formula (II) and/or an epoxy (meth) acrylate resin having a partial structure represented by general formula (III) from the viewpoint of outgas reduction.
Herein, Ito explicitly teaches the combination of the binder resin (C1-1) of Ito with the binder resin (C1-2) of Ito. Furthermore, Applicant argues that the single data point of Example 4 of Ito would teach away from teaching of Ito. MPEP § 2123(I) states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” Also, MPEP § 2123(II) states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” Thus, Ito teaches to combine the binder resin (C1-1) of Ito with the binder resin (C1-2) of Ito since it is reasonably suggested, if not explicitly stated, as being taught by Ito. Furthermore, the experimental examples of Ito, including Example 4 of Ito, does not constitute a teaching away from the broader disclosure of Ito, which teaches a combination of the binder resin (C1-1) of Ito with the binder resin (C1-2) of Ito. Thus, said argument is not persuasive.
2. Applicant also appears to be making an argument that the present application achieves unexpectedly superior results over the prior art. The claims permit an exponential number of possible components in a composition wherein a photopolymerization initiator is not limited in any way in the independent claim, wherein an inorganic filler is not limited in any way in the independent claim, and a photopolymerizable compound limited only in that it has an ethylenically unsaturated group an acidic substituent and an alicyclic structure as well as any number of other components as the composition merely comprises said components and may thus comprise any number of other components not limited by the claim. Also, Applicant cites their three experimental examples, Examples 1-3, as providing evidence commensurate in scope with the claims of the present application. Each experimental working example comprises a specific two photopolymerization initiator (B) combination of unequal amounts, which is not claimed. Each experimental working example comprises a specific two thermosetting resin (C) combination of unequal amounts, which is not claimed. Each experimental working example comprises an elastomer compound (D), which is not claimed in any way in the independent claims. Each experimental working example comprises a specific inorganic filler (F) of a precise amount, which is not claimed. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02. As such, the claims to the present application are not commensurate in scope with the data provided and thus said argument is not persuasive.
Claim Rejections - 35 USC § 103
3. 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:
4. 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.
5. Claims 1-2, 8, 10-11, 13-16, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable by Ito et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/101314 A1), hereinafter Ito.
6. Regarding Claims 1-2, 8, 10-11, 13-16, and 21-25, Ito teaches (Paragraphs [0164-0170 and 0424-0426]) a photopolymerizable compound having an ethylenically unsaturated group, wherein Paragraphs [0164-0170] teach the introduction of ethylenically unsaturated groups via reaction with the epoxy or glycidyl groups of the Binder Resin of Paragraphs [0424-0426]. Ito teaches (Paragraphs [0277-0312]) a photopolymerization initiator. Ito teaches (Paragraphs [0082, 0166, and 0400]) a thermosetting resin. Ito teaches (Paragraphs [0424-0426]) the photopolymerizable compound having an ethylenically unsaturated group includes a photopolymerizable compound having an acidic substituent and an alicyclic structure together with an ethylenically unsaturated group. Ito teaches (Paragraphs [0271-0276]) the photopolymerizable compound having a polyfunctional vinyl monomer having at least three polymerizable ethylenically unsaturated groups is (meth)acrylate compounds having a dipentaerythritol-derived structure. Ito teaches (Paragraphs [0424-0426]) the photopolymerizable compound having an acidic substituent and an alicyclic structure together with an ethylenically unsaturated group is represented by the following general formula (A-1) of the present application. Ito teaches (Table 1) the content of the photopolymerizable compound having an ethylenically unsaturated group is 29.4% by mass on the basis of the whole amount of the solid components of the photosensitive resin composition. Ito teaches (Table 1, Paragraph [0375]) a content proportion mass ratio of [(a photopolymerizable compound having an acidic substituent and an alicyclic structure together with an ethylenically unsaturated group)/(a polyfunctional vinyl monomer having at least three polymerizable ethylenically unsaturated groups)] of 2 to 6. Ito teaches (Paragraphs [0082 and 0368]) the content of the thermosetting resin is 7 to 15% by mass on the basis of the whole amount of the solid components of the photosensitive resin composition. Ito teaches (Paragraphs [0271-0276 and 0424-0426]) the photopolymerizable compound having an ethylenically unsaturated group further includes at least one selected from the group consisting of a monofunctional vinyl monomer having one polymerizable ethylenically unsaturated group and a bifunctional vinyl monomer having two polymerizable ethylenically unsaturated groups. Ito teaches (Paragraphs [0205 and 0420]) the acidic substituent is at least one selected from the group consisting of a carboxy group, a sulfonic acid group, and a phenolic hydroxy group. Ito teaches (Paragraph [0420]) an elastomer. Ito teaches (Paragraph [0420]) the elastomer is an acrylic elastomer. Ito teaches (Paragraphs [0350-0351]) an inorganic filler. Ito teaches (Paragraphs [0277-0312 and 0424-0426]) the intended use of the photosensitive resin composition is for photo via formation. Ito teaches (Paragraphs [0277-0312 and 0424-0426]) the intended use of the photosensitive resin composition is for interlayer insulating layer. Ito teaches (Paragraphs [0399-0404]) a photosensitive resin film, therein a coating film, consisting of the photosensitive resin composition. Ito teaches (Paragraphs [0399-0404]) the intended use of the photosensitive resin film is for interlayer insulating layer. Ito teaches (Paragraphs [0350-0351]) the inorganic filler is 5% by mass or more on the basis of the whole amount of the solid components of the photosensitive resin composition. Ito teaches (passim) not containing an acid-modified ethylenically unsaturated group-containing epoxy derivative not containing an alicyclic structure. Herein, Applicant claims a negative limitation, i.e. not comprising, and Ito does not teach (passim) that an acid-modified ethylenically unsaturated group-containing epoxy derivative not containing an alicyclic structure is required for the invention taught therein. Ito teaches (Paragraphs [0372-0373]) a content of the photopolymerizable compound is 5 to 60% by mass on the basis of the whole amount of solid components of the photosensitive resin composition and a content ratio of the photopolymerizable compound to the whole amount of the component (A) is 20 to 95% by mass. Ito teaches (Paragraphs [0372-0373]) a content ratio of the component (A1) to the whole amount of the component (A) is 55% by mass or more.
7. However, Ito fails to explicitly teach all components of the composition limited by the present application with a single experimental example. That said, all components of the composition are described with sufficient detail by the prior art. Thus, a person of ordinary skill in the art in view of Ito would have found it obvious to try the combining the prior art elements of Ito which meet the limitations of the present application above according to known methods to yield predictable results. Herein, Ito included each element claimed by the present application for the relevant claims, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. Furthermore, one of ordinary skill in the art could have combined the elements as claimed by known methods taught by Ito, and that in combination, each element merely performs the same function as it does separately. Furthermore, Ito teaches one of ordinary skill in the art would have recognized that the results of the combination were predictable given that all of the elements are of the relevant claims of the present application are taught by Ito and are, even if not taught in a single experimental example, are taught as being functional alternatives to achieve predictable results in Ito’s stated aim of reduced outgassing after forming a cured product, excellent reliability, and good adhesion of a pattern during a developing step. (See: Ito Paragraph [0037]).
8. Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/101314 A1), hereinafter Ito, and in view of Komuro et al. (United States Patent Publication No. US 2016/0007454 A1), hereinafter Komuro.
9. Regarding Claims 17-19, Ito teaches all limitations of Claims 1 and 15 of the present application above. However, Ito fails to explicitly teach a multilayer printed wiring board comprising the photosensitive resin composition. Furthermore, Ito fails to explicitly teach a multilayer printed wiring board comprising the photosensitive resin film. Furthermore, Ito fails to explicitly teach a semiconductor package comprising the multilayer printed wiring board and having a semiconductor element mounted thereon.
10. Komuro teaches (Paragraphs [0151-0159]) a multilayer printed wiring board comprising the photosensitive resin composition. Komuro teaches (Paragraphs [0151-0159]) a multilayer printed wiring board comprising the photosensitive resin film. Komuro teaches (Paragraphs [0005]) a semiconductor package comprising the multilayer printed wiring board and having a semiconductor element mounted thereon. Komuro teaches (Paragraphs [0002-0005]) a multilayer printed wiring boards therein are useful in the production of IC chips and LCD displays.
11. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ito to incorporate the teachings of Komuro to comprise a multilayer printed wiring board comprising the photosensitive resin composition; a multilayer printed wiring board comprising the photosensitive resin film; and a semiconductor package comprising the multilayer printed wiring board and having a semiconductor element mounted thereon. Doing so would result in the capacity to produce IC chips and LCD displays, as recognized by Komuro.
12. Regarding Claim 20, Ito teaches all limitations of Claim 1 of the present application above. Furthermore, Ito teaches (Paragraphs [0399-0404]) a step of laminating the photosensitive resin film on one surface or both surfaces of a circuit substrate. Ito teaches (Paragraph [0405]) a step of exposing and developing the photosensitive resin film laminated to form an interlayer insulating layer having a via. Ito teaches (Paragraphs [0003 and 0405-0410]) a step of forming a circuit pattern on the interlayer insulating layer, therein a pattern from a negative mask pattern. However, Ito fails to explicitly teach a step of subjecting the via and the interlayer insulating layer to a roughening treatment.
13. Komuro teaches (Paragraph [0196]) a step of subjecting the via and the interlayer insulating layer to a roughening treatment. Komuro teaches (Paragraph [0196]) a roughening treatment improves the adhesiveness of the layer roughened.
14. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ito to incorporate the teachings of Komuro to comprise a step of subjecting the via and the interlayer insulating layer to a roughening treatment. Doing so would result in improved adhesiveness, as recognized by Komuro.
Conclusion
15. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
16. A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
17. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
18. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F HUFF can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737