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 8, line 9, filed 08 July 2026, with respect to the rejection of independent Claims 1 and 11 and their dependent Claims 3, 6, and 8-10; and 13, 16, and 18-21, respectively, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement; have been fully considered and, in light to the claim amendments made, are persuasive. The rejection of independent Claims 1 and 11 and their dependent Claims 3, 6, and 8-10; and 13, 16, and 18-21, respectively, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph has been withdrawn.
2. Applicant’s arguments, see page 9, line 10, filed 02 March 2026, with respect to the rejection of Claims 1, 3, 6, 8-11, 13, 16, and 18-21 under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (United States Patent Publication No. US 2015/0376445 A1), hereinafter Nakamura 2; in view of Nakamura et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/043395 A1; utilizing United States Patent Publication No. US 2019/0235380 A1 as an English language equivalent), hereinafter Nakamura 1; and in further view of Kimura et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2007/119391 A1), hereinafter Kimura; have been fully considered and, in light to the claim amendments made, are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ober et al. (United States Patent Publication No. US 2008/0038665 A1), hereinafter Ober.
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, 6, 8-11, 16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ober et al. (United States Patent Publication No. US 2008/0038665 A1), hereinafter Ober; in view of Nakamura et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2018/043395 A1; utilizing United States Patent Publication No. US 2019/0235380 A1 as an English language equivalent), hereinafter Nakamura 1.
6. Regarding Claims 1, 6, 8-11, 16, and 18-21, Ober teaches (Paragraphs [0020-0022]) an epoxy group-containing resin. Ober teaches (Paragraphs [0032-0033]) a metal oxide, therein metal oxide powder. Ober teaches (Paragraphs [0023-0030]) a cationic polymerization initiator. Ober teaches (Paragraph [0039]) a solvent. Ober teaches (Paragraphs [0020-0022]) the epoxy group-containing resin contains a resin represented by Formula (A1) of the present application. Ober teaches (Paragraphs [0020-0022]) the epoxy group-containing resin contains a compound including a partial structure represented by Formula (m1) of the present application. Ober teaches (Paragraph [0046]) a content of the component (I) is 1.5 to 5 parts by mass with respect to 100 parts by mass of the total amount of the component (A). Ober teaches (Paragraphs [0020-0022]) wherein a plurality of the partial structure (m1) of the present application are bonded through a group represented by - Y21-C(=O)-O- or a group represented by -C(=O)-O-Y21-, Y21 is a linear alkylene group having 1 to 5 carbon atoms. Ober teaches (Paragraphs [0045]) wherein a content of the epoxy group-containing resin with respect to a total amount of the epoxy group-containing resin, the cationic polymerization initiator, and the metal oxide is 35% by mass or more and less than 70% by mass. Ober teaches (Paragraph [0044]) a content of the metal oxide which is more than 30 parts by mass and 180 parts by mass or less with respect to 100 parts by mass of the epoxy group-containing resin. Ober teaches (Paragraph [0049]) a step of forming a photosensitive resin film on a support using the resin composition. Ober teaches (Paragraph [0049]) a step of exposing the photosensitive resin film. Ober teaches (Paragraph [0049]) a step of developing the exposed photosensitive resin film with a developing solution containing an organic solvent to form a negative-working pattern. Ober teaches (Claim 32) a cured film obtained by curing the resin composition. Ober teaches (Paragraph [0057]) a step of forming a photosensitive resin film on a support using the resin composition. Ober teaches (Paragraph [0057]) a photosensitive resist film obtained by laminating a photosensitive resin film containing an epoxy group-containing resin, a metal oxide, and a cationic polymerization initiator on a base film. Ober teaches (Paragraphs [0049 and 0057]) a step of forming a photosensitive resin film on a support using the resin composition. Ober teaches (Paragraphs [0049 and 0057]) a step of curing the photosensitive resin film to obtain a cured film. Ober teaches (Paragraphs [0049 and 0057]) a photosensitive resist film obtained by laminating a photosensitive resin film containing an epoxy group-containing resin, a metal oxide, and a cationic polymerization initiator on a base film. Ober teaches (Paragraph [0041]) a rolled body obtained by winding the photosensitive resist film around a winding core.
7. However, Ober fails to explicitly teach the epoxy group-containing resin comprises a compound (m2) represented by Formula (m2) of the present application. Furthermore, Ober fails to explicitly teach the photosensitive resist film comprises a laminate in which the photosensitive resin film and a cover film are laminated on the base film in this order.
8. Nakamura 1 teaches (Claim 9) the epoxy group-containing resin contains a compound represented by Formula (m2). Nakamura 1 teaches (Paragraph [0134]) the epoxy group-containing resin contains the resin, the compound represented by formula (m1) of the present application, and the compound represented by formula (m2) of the present application. Nakamura 1 teaches (Paragraph [0134]) that said compounds can achieve a desirable combination of hardness and flexibility.
9. 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 Ober to incorporate the teachings of Nakamura 1 to have the epoxy group-containing resin contains a compound represented by Formula (m2); and the epoxy group-containing resin contains the resin, the compound represented by formula (m1) of the present application, and the compound represented by formula (m2) of the present application. Doing so would result in a desirable combination of hardness and flexibility, as recognized by Nakamura 1.
10. Nakamura 1 teaches (Paragraphs [0304-0305]) the photosensitive resist film comprises a laminate in which the photosensitive resin film and a cover film are laminated on the base film in this order. Nakamura 1 teaches (Paragraphs [0304-0305]) said cover film can be utilized to cover and protect the photosensitive film underneath it.
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 Ober to incorporate the teachings of Nakamura 1 to have the photosensitive resist film comprises a laminate in which the photosensitive resin film and a cover film are laminated on the base film in this order.. Doing so would result in the ability to cover and protect the photosensitive film, as recognized by Nakamura 1.
Allowable Subject Matter
12. Claims 6 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art teaches all limitations therein save for the total amount of compound (m1) of the present application and compound (m2) of the present application of 25% or more with respect to a total amount of resin (A1) of the present application.
Conclusion
13. 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).
14. 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.
15. 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.
16. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
