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
Applicant’s arguments, see pages 9-13, filed 26 June 2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102 or, in the alternative, under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of WO 2018164259 A1 (hereby referred to as WO ‘259).
Applicant has amended instant claim 1 to add a limitation that states that the photosensitive resin composition comprises a thermosetting resin (C), wherein the thermosetting resin (C) comprises (C1) a thermosetting resin having an alicyclic structure and (C2) a thermosetting biphenyl-based epoxy resin not having an alicyclic structure. Claim 1 additionally recites a content ratio of component (C1) with respect to component (C2), said ratio being that the mass ratio of component (C1) with respect to component (C2) is within the range of 70/30 to 90/10. Claim 1 was previously 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 JP 2018021978 A (hereby referred to as JP ‘978), and similarly 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 US 20170045817 A1 (hereby referred to as Nagoshi). Applicant argues that neither JP ‘978 nor Nagoshi discloses or renders obvious a photosensitive composition comprising a thermosetting resin comprising both a thermosetting resin having an alicyclic structure and a thermosetting biphenyl-based epoxy resin not having an alicyclic structure, wherein the ratio of such thermosetting resins is within the range recited by instant claim 1. Whilst Nagoshi teaches biphenyl-based epoxy resins not having alicyclic structures (such as YX4000H) (Nagoshi, paragraph 0053), the Examiner finds the Applicant’s argument that neither JP ‘978 nor Nagoshi disclose or render obvious a thermosetting resin comprising components (C1) and (C2) in the ratio recited by instant claim 1. Therefore, the previous rejections are withdrawn. However, a new rejection is presented in view of WO 2018164259 A1 (hereby referred to as WO ‘259), as explained below.
Applicant further argues that instant claim 1 cannot be considered prima facie obvious in view of the previously cited art (JP ‘978 and Nagoshi), due to the claimed invention achieving unexpected superior results. Applicant cites Example 5 and Comparative Example 3 of Table 1 of the instant application’s specification. Example 5 and Comparative Example 3 different in the types and contents of the thermosetting resin (C), as seen in Table 1 of the instant application’s specification. Example 5 utilizes 8.80 parts by mass of an alicyclic structure-containing epoxy resin and 2.20 parts by mass of a biphenyl type epoxy resin, which is within the scope of instant claim 1. Comparative Example 3, by contrast, utilizes 5.50 parts by mass of the same alicyclic structure-containing epoxy resin and 5.50 parts by mass of a naphthalene type epoxy resin. All other components in Example 5 and Comparative Example 3 are identical in both structure and amount. Applicant cites that the results of Example 5, which is within the scope of instant claim 1, are superior to those of Comparative Example 3, which is not within the scope of instant claim 1. Whilst the results demonstrated in Table 1 support these findings, the comparison of these two examples is insufficient to provide evidence that the claimed invention yields unexpectedly superior results. The two examples being compared differ in two facets, both of which are relevant to the claimed invention. First, Comparative Example 3 does not utilize a component according to (C1) in combination with a component according to (C2). Second, the content ratio of the two epoxy resins in Comparative Example 3 would not be within the range recited by instant claim 1, even if both epoxy resins satisfied (C1) and (C2). Thus, the difference in results cannot be concluded to be the result of one variable being changed, as two variables are changed simultaneously between the two examples being compared. In other words, the evidence provided by the Applicant does not conclusively demonstrate unexpectedly superior results, as the differences between the inventive example and the comparative example are too great. The Applicant’s results do not demonstrate the criticality of the claimed range of the (C1)/(C2) ratio, thus failing to rebut the prima facie case of obviousness, per MPEP 2144.05 III. A. Furthermore, per MPEP 716.02(d) II., the Applicant’s evidence fails to compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. The data provided by the Applicant is scarce and thus the results demonstrated are insufficient to demonstrate unexpectedly superior results. The burden to establish unexpected results falls upon the Applicant, per MPEP 716.02(b). In this case, the Applicant has not sufficiently supported the allegation of unexpected results, and therefore the Applicant’s arguments in this regard are not found to be persuasive.
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.
Claim(s) 1-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018021978 A (hereby referred to as JP ‘978) in view of WO 2018164259 A1 (hereby referred to as WO ‘259).
Regarding Claims 1 and 20, JP ‘978 discloses a solder resist composition for printed circuit boards. JP ’978 discloses that the resist composition (which is considered analogous to the photosensitive resin composition of the instant application) comprises a photopolymerizable prepolymer (oligomer) represented by Chemical Formula 1, a photopolymerizable vinyl monomer as a reactive diluent, an epoxy compound, and a photopolymerization initiator (JP ‘978, paragraph 0006-0010 of the English translation). Chemical Formula 1 is reproduced below (see page 2 of the original JP ‘978 publication).
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In the above Chemical Formula 1, R1 is any of the groups shown at the bottom of page 2 of JP ‘978, and Y is a dicyclopentadiene skeleton represented by Chemical Formula 3 (see the top of page 3 of JP ‘978) (JP ‘978, paragraph 0014 of the English translation). In particular, JP ‘978 discloses that the photopolymerizable prepolymer (which is analogous to component (A) of the instant application) is obtained by reacting a dicyclopentadiene phenol novolac multifunctional epoxy (a1) with a monocarboxylic acid containing a vinyl group (b) and then reacting with a saturated or unsaturated polyanhydride (c) (JP ‘978, paragraph 0007). This is the same synthetic route the instant application uses to produce the photopolymerizable compound (A1) (see paragraph 0021 of the instant application’s specification). In a specific inventive example, JP ‘978 discloses that the photopolymerizable prepolymer is obtained by reacting dicyclopentadiene phenol novolac multifunctional epoxy resin (NPPN-272H, trademark of Nan Ya Plastics Corporation) with acrylic acid, and the intermediate is subsequently reacted with tetrahydrophthalic anhydride (THPA) (JP ‘978, paragraph 0032 of the English translation). This is analogous to the Synthesis Example 1 of the instant application (see paragraph 0132 of the instant application’s specification), which utilizes dicyclopentadiene epoxy resin with acrylic acid and THPA to obtain component (A1-1). As the thermosetting resin, dicyclopentadiene phenol novolac multifunctional epoxy resin (i.e. a thermosetting resin having an alicyclic structure) may be used, either singly or in combination with epoxy resins that do not have alicyclic structures (JP ‘978, paragraph 0021 of the English translation). The photopolymerizable prepolymer (which is analogous to component (A) of the instant application) is present in an amount of 20 to 70% by weight in the resin composition (JP ‘978, paragraph 0007 of the English translation) and the epoxy compound (which is analogous to component (C1) of the instant application) is present in an amount of 5 to 30% by weight in the resin composition (JP ‘978, paragraph 0009 of the English translation).
JP ‘978 does not explicitly disclose an example in which the photopolymerizable prepolymer is present in a resin with only an alicyclic epoxy resin. However, whilst not explicitly stated that the component (C1) is present in the composition in an amount of 10 parts by mass or more based on 100 parts by mass of component (A), JP ‘978 discloses a range which overlaps the claimed proportion of these components, and thus, per MPEP 2144.05 I., it would have been obvious to include component (C1) in an amount of 10 parts by mass or more based on 100 parts by mass of component (A) in the resin composition disclosed by JP ‘978. One having ordinary skill in the art would be motivated to include the respective components in the claimed amounts because controlling the ratio of the photopolymerizable compound having an alicyclic structure with respect to the epoxy resin having an alicyclic structure yields a composition that produces a film having desirable dielectric properties (see JP ‘978, paragraph 0015 of the English translation).
However, JP ‘978 is silent in regards to the thermosetting resin comprising both a thermosetting resin having an alicyclic structure and a thermosetting biphenyl-based epoxy resin not having an alicyclic structure. WO ‘259 teaches a resin material, a laminated film, and a multilayer printed circuit board. The resin material comprises an epoxy compound, a curing agent, and a filler (silica) (WO ‘259, paragraph 0021 of the English translation). Exemplary resin compositions are demonstrated in Table 1 of WO ‘259 (see page 29 of the original WO ‘259 publication). An English machine translation of Table 1 is provided below.
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The Examiner draws attention to Example 9 in Table 1 of WO ‘259. Example 9 utilizes a combination of 11.0 parts by weight of epoxy resin XD-1000 and 1.5 parts by weight of epoxy resin YX-4000H. This ratio is equivalent to a mass ratio of 88/12 (
11.0
p
a
r
t
s
11.0
p
a
r
t
s
+
1.5
p
a
r
t
s
*
100
%
=
88
%
). XD-1000 is a thermosetting alicyclic-structure containing epoxy resin used by the instant application (refer to page 61 of the instant application’s specification; see also paragraph 0116 of the English translation of WO ‘259). YX-4000H is a biphenyl type epoxy resin (WO ‘259, paragraph 0116 of the English translation; see also page 61 of the instant application’s specification). Thus, WO ‘259 teaches a composition containing a thermosetting resin (C) comprising components corresponding to (C1) (XD-1000) and (C2) (YX-4000H), wherein the ratio of (C1)/(C2), based on mass, is within the range of 70/30 to 90/10.
JP ‘978 and WO ‘259 are analogous art because both references pertain to resin compositions for use in printed circuit boards (see JP ‘978, paragraph 0001 of the English translation; WO ‘259, paragraph 0001 of the English translation; and paragraph 0001 of the instant application’s specification). It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to use a thermosetting resin comprising a thermosetting resin having an alicyclic structure and a thermosetting biphenyl-based epoxy resin not having an alicyclic structure in a mass ratio of 70/30 to 90/10, as taught by WO ‘259 in place of the epoxy resin disclosed by JP ‘978 because inclusion of a biphenyl-based epoxy resin in the composition improves storage stability of the composition and exhibits improved adhesion properties (WO ‘259, paragraph 0033 of the English translation). Furthermore, utilizing a thermosetting resin having both components according to (C1) and (C2) in the claimed range demonstrates improved storage stability, peel strength, blister prevention, and a low coefficient of thermal expansion (CTE) (refer to Table 1 of WO ‘259, Example 9).
Regarding Claim 2, the combination of JP ‘978 and WO ‘259 renders obvious the composition according to instant claim 1, as discussed above. The photopolymerizable prepolymer (which is analogous to component (A) of the instant application) is produced from reacting dicyclopentadiene phenol novolac multifunctional epoxy resin (NPPN-272H, trademark of Nan Ya Plastics Corporation) with acrylic acid, and the intermediate is subsequently reacted with tetrahydrophthalic anhydride (THPA) (JP ‘978, paragraph 0032 of the English translation). The structure of the epoxy resin NPPN-272H is reproduced below (see page 21 of the original JP ‘978 publication).
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When the above structure is functionalized with acrylate groups (via the reaction with acrylic acid and THPA), the photopolymerizable prepolymer obtained is a polyfunctional vinyl monomer having at least three polymerizable ethylenically unsaturated groups.
Regarding Claims 3-6, the photopolymerizable prepolymer disclosed by JP ‘978 in the resin composition is synthesized from a dicyclopentadiene phenol novolac multifunctional epoxy resin, which was subsequently reacted with acrylic acid and THPA to add ethylenically unsaturated groups (JP ‘978, paragraph 0032 of the English translation). The dicyclopentadiene group of the resulting photopolymerizable polymer is an alicyclic structure having the rings according to instant claims 3-5 and the structure of general formula (a) as recited by instant claim 6.
Regarding Claim 7, JP ‘978 discloses that the photopolymerizable prepolymer (which is analogous to component (A) of the instant application) is produced from reacting dicyclopentadiene phenol novolac multifunctional epoxy resin (NPPN-272H, trademark of Nan Ya Plastics Corporation) with acrylic acid, and the intermediate is subsequently reacted with tetrahydrophthalic anhydride (THPA) (JP ‘978, paragraph 0032 of the English translation). The structure of the epoxy resin NPPN-272H is reproduced below (see page 21 of the original JP ‘978 publication).
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The reaction with the above structure with acrylic acid and THPA, as disclosed by JP ‘978, yields a structure representative of general formula (A-1) as recited by instant claim 7, wherein RA3 is an alkyl chain having an acrylate group.
Regarding Claim 8, JP ‘978 discloses that the photopolymerizable prepolymer (which is analogous to component (A) of the instant application) is produced from reacting dicyclopentadiene phenol novolac multifunctional epoxy resin (NPPN-272H, trademark of Nan Ya Plastics Corporation) with acrylic acid, and the intermediate is subsequently reacted with tetrahydrophthalic anhydride (THPA) (JP ‘978, paragraph 0032 of the English translation). The resulting photopolymerizable prepolymer contains an alicyclic structure (dicyclopentadiene), an ethylenically unsaturated group, and a carboxy group.
Regarding Claim 9, JP ‘978 discloses the use of NPPN-272H as the epoxy resin (JP ‘978, paragraph 0021 of the English translation), which has the following structure.
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The above structure matches that of general formula (C-1) as recited by instant claim 9.
Regarding Claim 10, JP ‘978 discloses that the resin composition may further comprise an inorganic filler (JP ‘978, paragraph 0011 of the English translation).
Regarding Claim 11, JP ‘978 discloses that the resin composition may further comprise a catalyst (JP ‘978, paragraph 0012 of the English translation). The catalyst is a curing reaction accelerator and may be an imidazole compound, a quaternary ammonium compound, or a quaternary phosphate compound (JP ‘978, paragraph 0026 of the English translation), which are amongst the same curing agents utilized by the instant application (see pages 45 and 46 of the instant application’s specification).
Claim(s) 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018021978 A (hereby referred to as JP ‘978) in view of WO 2018164259 A1 (hereby referred to as WO ‘259) as applied to claim 1 above, and further in view of US 20170045817 A1 (hereby referred to as Nagoshi).
Regarding Claims 12-18, the combination of JP ‘978 and WO ‘259 renders obvious the photosensitive resin according to instant claim 1, as explained above. The resin composition comprises a photopolymerizable compound corresponding to component (A1) of the instant application and a thermosetting resin comprising compounds corresponding to components (C1) and (C2) of the instant application. The Examiner notes that claims 12-13 of the instant application are directed towards intended uses of the composition, which does not further limit the scope of the claims. See MPEP 2111.02 II., which states “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. However, the features recited by instant claims 12-13 are nonetheless obvious, as explained below.
JP ‘978 is silent in regards to the use of the photosensitive resin composition for photo via formation, the use of the resin composition to produce a cured film, the use of the photosensitive resin composition for an interlayer insulating layer, and the use of the photosensitive resin composition in multilayer printed wiring boards or semiconductor packages. WO ‘259 teaches the use of the resin composition as an interlayer insulating resin material (WO ‘259, paragraph 0027 of the English translation). WO ‘259 further teaches the use of the resin material to obtain a cured product (WO ‘259, paragraph 0029 of the English translation) and the use of the resin for an interlayer insulating layer in a multilayer printed wiring board (WO ‘259, paragraph 0027). WO ‘259 is silent in regards to a semiconductor package.
Nagoshi teaches a photosensitive resin composition comprising a photosensitive prepolymer having at least one ethylenically unsaturated group and a carboxyl group in the molecule, a photopolymerization initiator, a photoreactive compound, a polyfunctional epoxy resin, and an inorganic filler material (paragraph 0034). The resin composition taught by Nagoshi may also render obvious the resin according to instant claim 1, as explained below. Further, Nagoshi teaches that the cured product formed using the photosensitive film can be suitably used as an interlayer insulating film (Nagoshi, paragraph 0086). Nagoshi teaches that a photosensitive film is formed from the photosensitive composition (Nagoshi, paragraph 0126). Nagoshi further teaches that a cured product formed using the photosensitive film can be suitably used as an interlayer insulating film (Nagoshi, paragraph 0086). Nagoshi teaches that a substrate for a printed wiring board was pretreated and subsequently a photosensitive film was laminated upon the substrate (Nagoshi, paragraph 0129). As stated above, the photosensitive film can suitably act as an interlayer insulating film (Nagoshi, paragraph 0086). Further, after the laminate was left to stand, additional layers were applied to the structure, resulting in a multilayer printed wiring board (Nagoshi, paragraph 0130-0131). Nagoshi teaches a semiconductor package (Nagoshi, paragraph 0082-0086). Nagoshi further teaches that the multilayer printed wiring board is included in the semiconductor package (Nagoshi, paragraph 0083).
JP ‘978, WO ‘259, and Nagoshi are analogous art because each reference pertains to resin compositions and their use. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to use the photosensitive resin composition obtained by combining JP ‘978 and WO ‘259 to produce an interlayer insulating layer, a photosensitive resin film, a multilayer printed wiring board, and a semiconductor package, as taught by WO ‘259 and/or Nagoshi, because the use of a photosensitive resin such as those taught by JP ‘978, WO ‘259, and Nagoshi yield enhanced adhesiveness to other materials when used as an interlayer insulating layer (WO ‘259, paragraph 0033 of the English translation and Table 1; see also Nagoshi, paragraph 0086) or when used as a mask resist for printed wiring boards and semiconductor packages (Nagoshi, paragraph 0084). Furthermore, the cured film obtained from the photosensitive resin composition offers enhanced reliability of the film as a mask resist (Nagoshi, paragraph 0017 and 0020).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2018021978 A (hereby referred to as JP ‘978) in view of WO 2018164259 A1 (hereby referred to as WO ‘259) and US 20170045817 A1 (hereby referred to as Nagoshi) as applied to claim 14 above, and further in view of US 20040001961 A1 (hereby referred to as Ono).
Regarding Claim 19, the combination of JP ‘978, WO ‘259, and Nagoshi renders obvious the film according to instant claim 14. Nagoshi further teaches that the photosensitive film (which is formed from a photosensitive resin composition) is laminated on a substrate for a printed wiring board (Nagoshi, paragraph 0129). The photosensitive resin film is then exposed using a direct imaging exposure apparatus (paragraph 0130) and spray-developed (Nagoshi, paragraph 0131).
However, JP ‘978, WO ‘259, and Nagoshi do not disclose the formation of a via, a step of subjecting the interlayer and via to a roughening treatment, and a step of forming a circuit pattern. Ono teaches a curable resin composition useful for coating and a multilayer printed wiring board. Ono teaches a curable resin composition comprising a polyfunctional vinyl compound, a curing promotor, a thermosetting epoxy resin, an epoxy-curable compound, a photopolymerization initiator, and a diluent (Ono, paragraph 0023 and 0025). The curable resin features similar or identical components as the resins of JP ‘978, WO ‘259 and Nagoshi. Ono teaches that the curable resin is used to form a cured film, which is used as an interlayer insulating film for a multilayer printed wiring board (Ono, paragraph 0027). To form the multilayer printed wiring board, a pretreated substrate was coated with a thermosetting resin composition and heat-cured to form an interlayer insulating film (Ono, paragraph 0088). Via holes were then formed in the interlayer insulating film by making use of a laser to form a via-hole pattern (Ono, paragraph 0089). A surface-roughening treatment is then performed on the interlayer insulating film (Ono, paragraph 0089). Following some additional treatment steps, the interlayer insulating film is provided with a copper plating treatment (Ono, paragraph 0090). A negative film having a circuit pattern is superimposed on a dry film laminated over the interlaying insulating film, exposed to ultraviolet rays, and etched away using a chemical solution (Ono, paragraph 0091). As a result, a multilayer printed wiring board according to instant Claim 19 is formed.
JP ‘978, WO ‘259, Nagoshi, and Ono are analogous art because each reference pertains to photosensitive resin compositions and their uses. It would have been obvious to one having ordinary skill in the art at the time of the filing date of the instant application to use the resin composition obtained by combining JP ‘978 and WO ‘259 to form a cured film as, taught by WO ‘259 and Nagoshi, and then to form a multilayer printed wiring board as taught by Ono using said cured film because the method of forming a multilayer printed wiring board taught by Ono is standard practice in the art (see Ono, paragraph 0005) and because the compositions taught by JP ‘978 and WO ‘259 are said to provide improved adhesiveness, chemical resistance, electrical properties, and other desirable properties for producing printed circuit boards (JP ‘978, paragraph 0001 of the English translation; WO ‘259, paragraph 0033 of the English translation).
Claim(s) 1-3 and 8-18 under 35 U.S.C. 103 as being unpatentable over US 20170045817 A1 (hereby referred to as Nagoshi) in view of WO 2018164259 A1 (hereby referred to as WO ‘259).
Regarding Claims 1, 3, and 8-9, Nagoshi discloses a photosensitive element, a laminate, a mask resist, methods of producing the aforementioned products, and methods for producing semiconductor packages. The photosensitive element includes a support film and a photosensitive layer provided on the support film (paragraph 0027). The photosensitive layer is formed from a photosensitive resin composition (paragraph 0033), said photosensitive resin composition comprising a photosensitive prepolymer having at least one ethylenically unsaturated group and a carboxyl group in the molecule, a photopolymerization initiator, a photoreactive compound, a polyfunctional epoxy resin, and an inorganic filler material (paragraph 0034). The photosensitive prepolymer is a reaction product obtained by adding a saturated or unsaturated polybasic acid anhydride to an esterification product of an epoxy resin and an unsaturated monocarboxylic acid (paragraph 0035). This is equivalent to the method used to form Component (A1-1) of the instant application (see paragraph 0132 of the instant application’s specification). The polyfunctional epoxy resin corresponds to the thermosetting resin of the instant application. The polyfunctional epoxy resin may be a dicyclopentadiene skeleton epoxy resin, such as HP-7200 and HP-7200H (manufactured by DIC Corporation) (paragraph 0053). These epoxy resins can be represented by formula (C-1), as recited by instant claim 9. As can be seen in Table 1 of Nagoshi (see page 9 of the publication), the amount of the developer liquid-soluble resin (the photosensitive prepolymer) is 85 parts by mass and the total amount of the polyfunctional epoxy resin is 30 parts by mass (paragraph 0088 and Table 1). This corresponds to the thermosetting resin being within the range of 10 parts by mass or more based on 100 parts by mass of the photopolymerizable compound having an ethylenically unsaturated group. As stated above, Nagoshi discloses that the photosensitive prepolymer is formed from the reaction of an epoxy resin with an unsaturated monocarboxylic acid and then further reaction with a saturated or unsaturated polybasic acid anhydride (paragraph 0035). Suitable unsaturated monocarboxylic acids include methacrylic acid (paragraph 0036), and the polybasic acid anhydride may be tetrahydrophthalic anhydride (paragraph 0037). Nagoshi further discloses that the epoxy resin used to produce the photosensitive prepolymer is not particularly limited (paragraph 0035), and hydrogenated bisphenol A epoxy resins may be used for this purpose (paragraph 0035). Named examples of epoxy resins used to produce the photosensitive prepolymer include bisphenol type epoxy resin, a novolac type epoxy resin, a biphenyl type epoxy resin, and a polyfunctional epoxy resin (paragraph 0035), with Nagoshi seemingly preferring bisphenol A, bisphenol F, and bisphenol S type resins obtained by the reaction of the bisphenol with epichlorohydrin (paragraph 0035).
However, Nagoshi is silent in regards to the thermosetting resin comprising both a thermosetting resin having an alicyclic structure and a thermosetting biphenyl-based epoxy resin not having an alicyclic structure. WO ‘259 teaches a resin material, a laminated film, and a multilayer printed circuit board. The resin material comprises an epoxy compound, a curing agent, and a filler (silica) (WO ‘259, paragraph 0021 of the English translation). Exemplary resin compositions are demonstrated in Table 1 of WO ‘259 (see page 29 of the original WO ‘259 publication). An English machine translation of Table 1 is provided below.
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The Examiner draws attention to Example 9 in Table 1 of WO ‘259. Example 9 utilizes a combination of 11.0 parts by weight of epoxy resin XD-1000 and 1.5 parts by weight of epoxy resin YX-4000H. This ratio is equivalent to a mass ratio of 88/12 (
11.0
p
a
r
t
s
11.0
p
a
r
t
s
+
1.5
p
a
r
t
s
*
100
%
=
88
%
). XD-1000 is a thermosetting alicyclic-structure containing epoxy resin used by the instant application (refer to page 61 of the instant application’s specification; see also paragraph 0116 of the English translation of WO ‘259). YX-4000H is a biphenyl type epoxy resin (WO ‘259, paragraph 0116 of the English translation; see also page 61 of the instant application’s specification). Thus, WO ‘259 teaches a composition containing a thermosetting resin (C) comprising components corresponding to (C1) (XD-1000) and (C2) (YX-4000H), wherein the ratio of (C1)/(C2), based on mass, is within the range of 70/30 to 90/10.
Nagoshi and WO ‘259 are analogous art because both references pertain to resin compositions for use in printed circuit boards (see Nagoshi, paragraph 0001; WO ‘259, paragraph 0001 of the English translation; and paragraph 0001 of the instant application’s specification). It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to use a thermosetting resin comprising a thermosetting resin having an alicyclic structure and a thermosetting biphenyl-based epoxy resin not having an alicyclic structure in a mass ratio of 70/30 to 90/10, as taught by WO ‘259 in place of the epoxy resin disclosed by Nagoshi because inclusion of a biphenyl-based epoxy resin in the composition improves storage stability of the composition and exhibits improved adhesion properties (WO ‘259, paragraph 0033 of the English translation). Furthermore, utilizing a thermosetting resin having both components according to (C1) and (C2) in the claimed range demonstrates improved storage stability, peel strength, blister prevention, and a low coefficient of thermal expansion (CTE) (refer to Table 1 of WO ‘259, Example 9).
Regarding Claim 2, Nagoshi discloses that the photoreactive compound, which is present concurrently with the photosensitive prepolymer, is preferably a photopolymerizable monomer having two or more ethylenically unsaturated groups, with the inclusion of at least one or more kinds of polyfunctional photopolymerizable monomers each having three or more ethylenically unsaturated groups being particularly desirable (paragraph 0047). Specific examples include dipentaerythritol hexaacrylate (paragraph 0047), which is analogous to the dipentaerythritol hexa(meth)acrylate utilized by the instant Application’s composition (see page 24 of the instant Application’s specification).
Regarding Claim 10, Nagoshi discloses that the photosensitive composition includes inorganic filler material (paragraph 0034). Specific materials utilized are barium sulfate, barium titanate, powdered silicon oxide, amorphous silica, talc, clay, calcine kaolin, magnesium carbonate, calcium carbonate, aluminum oxide, aluminum hydroxide, mica powder, and the like (paragraph 0054).
Regarding Claim 11, Nagoshi discloses that the photosensitive resin composition may further comprise curing accelerators such as dicyandiamide (paragraph 0058), which is a compound cited by the instant application as a curing agent (see page 45-46 of the instant Application’s specification).
Regarding Claims 12-13, Nagoshi discloses a photosensitive resin composition according to instant Claim 1. Claims 12-13 of the instant application are directed towards intended uses of the composition, which does not further limit the scope of the claims. See MPEP 2111.02 II., which states “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, Nagoshi discloses that the cured product formed using the photosensitive film can be suitably used as an interlayer insulating film (paragraph 0086).
Regarding Claims 14-15, Nagoshi discloses that a photosensitive film is formed from the photosensitive composition (paragraph 0126). Nagoshi further discloses that a cured product formed using the photosensitive film can be suitably used as an interlayer insulating film (paragraph 0086).
Regarding Claims 16-17, Nagoshi discloses that a substrate for a printed wiring board was pretreated and subsequently a photosensitive film was laminated upon the substrate (paragraph 0129). As stated above, the photosensitive film can suitably act as an interlayer insulating film (paragraph 0086). Further, after the laminate was left to stand, additional layers were applied to the structure, resulting in a multilayer printed wiring board (paragraph 0130-0131).
Regarding Claim 18, Nagoshi discloses a semiconductor package (paragraph 0082-0086). Nagoshi further discloses that the multilayer printed wiring board is included in the semiconductor package (paragraph 0083).
Claim(s) 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 20170045817 A1 (hereby referred to as Nagoshi) in view of WO 2018164259 A1 (hereby referred to as WO ‘259) as applied to claim 1 above, and further in view of US 20100243970 A1 (hereby referred to as Toshimitsu).
Regarding Claims 4-7, the combination of Nagoshi and WO ‘259 renders obvious a photosensitive resin composition according to instant claim 1, as discussed above.
However, Nagoshi and WO ‘259 do not explicitly disclose a prepolymer formed from an epoxy resin that would have the alicyclic structure recited by instant claims 4-7. Toshimitsu teaches a light blocking photosensitive resin composition (Toshimitsu, paragraph 0066). The light blocking photosensitive resin composition comprises an alkali-soluble resin, a photopolymerization initiator, an ethylenically unsaturated compound, and a light-blocking component (Toshimitsu, paragraph 0066-0067). As the alkali-soluble resin, Toshimitsu teaches that epoxy acrylate resins are particularly preferred (Toshimitsu, paragraph 0080). To produce the epoxy acrylate resin, unsaturated monocarboxylic acid or unsaturated monocarboxylic acid ester having a carboxyl group is reacted with an epoxy resin and then further reacted with a polybasic acid anhydride to create alkali solubility (Toshimitsu, paragraph 0081). This is analogous to the method disclosed by Nagoshi and the instant Application. The unsaturated monocarboxylic acid may be acrylic acid or methacrylic acid (Toshimitsu, paragraph 0085) and the polybasic acid anhydride may be tetrahydrophthalic anhydride (Toshimitsu, paragraph 0089). This is also analogous to the components disclosed by Nagoshi and the instant Application. Toshimitsu further teaches that the epoxy resin used to form the epoxy acrylate resin may include bisphenol A epoxy resins, bisphenol F epoxy resins, and epoxy resins prepared by the reaction of epihalohydrin with a polyaddition product of dicyclopentadiene with phenol or cresol (Toshimitsu, paragraph 0082). In a synthesis example, Toshimitsu teaches the synthesis of an epoxy acrylate resin formed from the reaction of XD1000 (polyglycidyl ether of dicyclopentadiene-phenol polymer, Nippon Kayaku Co.) with acrylic acid and tetrahydrophthalic anhydride (Toshimitsu, paragraph 0272). The resulting alkali-soluble resin would be a photopolymerizable compound having an acidic substituent and an alicyclic structure together with an ethylenically unsaturated group that could be represented by general formula (A-1), as recited by instant claim 7. This compound would also have the characteristics recited by instant claims 1 and 3-8.
Nagoshi, WO ‘259, and Toshimitsu are analogous art because each reference pertains to photosensitive resin compositions and their use. It would have been obvious to one having ordinary skill in the art at the time of the filing date of the instant application to replace the photosensitive prepolymer of the composition obtained by combining Nagoshi and WO ‘259 with the epoxy acrylate resin formed from a dicyclopentadiene-based epoxy resin taught by Toshimitsu because Toshimitsu teaches that dicyclopentadiene-based epoxy resins are equally suitable for use in alkali-soluble epoxy acrylate resins as bisphenol type epoxy resins (Toshimitsu, paragraph 0082) and the use of dicyclopentadiene-based epoxy resins to produce the epoxy acrylate resin yields a photosensitive resin composition with excellent light-blocking and light transmittance properties (see Fig. 1 and 3 of Toshimitsu as well as Tables 2 and 3 on pages 20-22 of Toshimitsu, specifically Examples 1 and 3 which use the above mentioned epoxy acrylate resin synthesized from XD1000 in combination with dipentaerythritol hexaacrylate).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 20170045817 A1 (hereby referred to as Nagoshi) in view of WO 2018164259 A1 (hereby referred to as WO ‘259) as applied to claim 14 above, and further in view of US 20040001961 A1 (hereby referred to as Ono).
Regarding Claim 19, the combination of Nagoshi and WO ‘259 renders obvious the photosensitive resin film according to instant claim 14. Nagoshi discloses that the photosensitive film (which is formed from a photosensitive resin composition) is laminated on a substrate for a printed wiring board (paragraph 0129). The photosensitive resin film is then exposed using a direct imaging exposure apparatus (paragraph 0130) and spray-developed (paragraph 0131).
However, Nagoshi and WO ‘259 do not disclose the formation of a via, a step of subjecting the interlayer and via to a roughening treatment, and a step of forming a circuit pattern. Ono teaches a curable resin composition useful for coating and a multilayer printed wiring board. Ono teaches a curable resin composition comprising a polyfunctional vinyl compound, a curing promotor, a thermosetting epoxy resin, an epoxy-curable compound, a photopolymerization initiator, and a diluent (Ono, paragraph 0023 and 0025). The curable resin features similar or identical components as the resin of Nagoshi. Ono teaches that the curable resin is used to form a cured film, which is used as an interlayer insulating film for a multilayer printed wiring board (Ono, paragraph 0027). To form the multilayer printed wiring board, a pretreated substrate was coated with a thermosetting resin composition and heat-cured to form an interlayer insulating film (Ono, paragraph 0088). Via holes were then formed in the interlayer insulating film by making use of a laser to form a via-hole pattern (Ono, paragraph 0089). A surface-roughening treatment is then performed on the interlayer insulating film (Ono, paragraph 0089). Following some additional treatment steps, the interlayer insulating film is provided with a copper plating treatment (Ono, paragraph 0090). A negative film having a circuit pattern is superimposed on a dry film laminated over the interlaying insulating film, exposed to ultraviolet rays, and etched away using a chemical solution (Ono, paragraph 0091). As a result, a multilayer printed wiring board according to instant Claim 19 is formed.
Nagoshi, WO ‘259, and Ono are analogous art because each reference pertains to photosensitive resin compositions and their uses. It would have been obvious to one having ordinary skill in the art at the time of the filing date of the instant application to use the resin composition obtained by combining Nagoshi and WO ‘259 to form a multilayer printed wiring board as taught by Ono because the method of forming a multilayer printed wiring board taught by Ono is standard practice in the art (see Ono, paragraph 0005) and because the composition taught by Nagoshi and WO ‘259 is said to provide improved adhesiveness with the semiconductor material (Nagoshi, paragraph 0155; WO ‘259, paragraph 0033 of the English translation), which is expected to improve quality of semiconductor devices (Nagoshi, paragraph 0005-0006).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734