DETAILED ACTION
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 First Action On The Merits
The 19 NOV 2025 amendments to independent claim 10 have been entered.
Information Disclosure Statements
The IDS submitted on 11 SEP 2025 follows the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Claim Rejections - 35 USC § 102
See previous Office action for a quotation of 35 U.S.C. 102.
Claims 10-18 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by TAKAHASHI et al. (US 20190077961; below, “TAKAHASHI” – previously cited 22 FEB 2022 and 1 MAR 2022 IDS noted prior art reference).
RE 10, TAKAHASHI, in Abstract, paragraphs [0013]-[0030], [0050], [0147]-[0173], claims 13-24, discloses a negative type photosensitive composition comprising:
(I) a polysiloxane A comprising a repeating unit represented by the formula (Ia):
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512
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wherein,
RIa1 is an alkylene group having 1 to 5 carbon atoms, wherein —CH2— in the alkylene group may be replaced with —O—,
RIa2 is each independently hydrogen, an alkyl group having 1 to 5 carbon atoms, or an alkylene group having 1 to 5 carbon atoms, wherein —CH2— in the alkyl group and the alkylene group may be replaced with —O—, and when RIa2 is alkylene, a bond not bonded to nitrogen is bonded to Si contained in another repeating unit represented by the formula (Ia) (e.g., [0165]),
(II) a polymerization initiator (e.g., [0018]),
(III) a compound containing two or more (meth)acryloyloxy groups having a molecular weight of 2,000 or less (e.g., [0015], [0167], Table 1), and
(IV) a solvent (e.g., [0019], [0167], Table 2).
Thus, TAKAHASHI anticipates this claim.
RE 11, TAKAHASHI discloses the composition according to claim 10, wherein the polysiloxane A further comprises a repeating unit represented by the formula (Ib):
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252
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wherein,
RIb represents hydrogen, a C1-30 linear, branched or cyclic, saturated or unsaturated, aliphatic hydrocarbon group or aromatic hydrocarbon group,
the aliphatic hydrocarbon group and the aromatic hydrocarbon group may be each
substituted with fluorine, hydroxy or alkoxy, and
—CH2— in the aliphatic hydrocarbon group and the aromatic hydrocarbon group may be replaced with —O— or —CO—, provided that RIb is neither hydroxy nor alkoxy (e.g., [0162] to [0164]).
RE 12, TAKAHASHI discloses the composition according to claim 10, wherein the total number of Si atoms of the formula (Ia) contained in the polysiloxane A is 1 to 15% based on the total number of Si atoms in the polysiloxane (e.g., [0050], [0173]).
RE 13, TAKAHASHI discloses the composition according to claim 10, further comprising an acrylic resin and/or a polysiloxane B containing no repeating unit of the formula (Ia) (e.g., [0050], [0165]).
RE 14, TAKAHASHI discloses the composition according to claim 10, wherein the content of the polysiloxane A is 20 to 100 mass %, based on the total mass of all polymer contained in the composition (e.g., [0165]).
RE 15, TAKAHASHI discloses a method for producing a cured film, comprising applying the composition according to claim 10 onto a substrate to form a coating film (e.g., [0026]), exposing the coating film (e.g., [0027]), and developing (e.g., [0028]).
RE 16, TAKAHASHI discloses the method according to claim 15, further comprising a process of heating at a temperature of 70 to 130° C. after the development (e.g., [0029], [0154]).
RE 17, TAKAHASHI discloses a cured film formed by the method according to claim 15 (e.g., [0147] to [0159], claim 22).
RE 18, TAKAHASHI discloses an electronic device comprising the cured film according to claim 17 (e.g., [0030], claim 24).
Claims 10-18 are rejected.
Response to Arguments
Applicants’ 19 NOV 2025 rebuttal arguments (REM pages 4-5) are found to be unpersuasive in light of the arguments and positions detailed in the claim rejections supra. Applicants first assert that prior art reference TAKAHASHI does not teach a compound containing two or more (meth)acryloyloxy groups having a molecular weight of 2000 or less. REM page 4. The Office is unpersuaded by applicants’ first assertion. As outlined in the rejection of independent claim 1, TAKAHASHI teaches a two-or-more-(meth)acryloyloxy-group-containing compound, e.g., methacrylic acid, methyl methacrylate, having a molecular weight of 2,000 or less. Hence, applicants’ first assertion in not persuasive.
Applicants next assert that: i. no reason exists for an ordinary skilled artisan to drastically adjust the molecular weight to support a prima facie case of obviousness; and ii. polysiloxane C is taught as being comparative, and therefore a teaching away. REM page 4. The Office finds applicants’ second assertion unconvincing. Regarding i, as noted in the rejection of amended claim 1 above, novelty is lacking and a legal conclusion is not relied upon. Regarding ii, applicants have failed to apply the proper legal standard for “teaching way.” “A reference may be said to teach away when a person of ordinary skill, upon examining the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). Therefore, applicants’ second assertion is not persuasive.
Lastly, referring to Table 1 of the claimed invention, applicants assert that unexpected results are demonstrated. REM page 4. Applicants’ third assertion is unpersuasive because applicants do not provide persuasive reasoning or credible evidence that the claimed invention achieves any advantage over and/or results different from the ones taught by TAKAHASHI. Thus, applicants’ third assertion is not persuasive.
In view of these remarks, applicants’ arguments vis-à-vis patentability are not persuasive. Accordingly, the rejections of claims 10-18 are maintained.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Walter Swanson whose telephone number is (571) 270-3322. The examiner can normally be reached Monday to Thursday, 8:30 to 17:30 EST.
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/WALTER H SWANSON/Primary Examiner, Art Unit 2815