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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02 March 2026 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 8, line 9, filed 02 March 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 but they are not persuasive. Applicant argues that amendments to said claims wherein the relative amounts of the three necessary components of the claimed composition, including the epoxy group-containing resin (A) necessarily comprising compounds (m1) and (m2) of the present application, overcomes the rejection of record. This is not persuasive. In the prior Office Action, Examiner stated in Paragraph #5:
Claims 1 and 11 are described in an open-ended manner by claiming a composition “comprising” “an epoxy group-containing resin (A); a metal oxide (M); and a cationic polymerization initiator.” Thus, any composition imaginable would be within the scope of said limitation, as long as the composition had a non-zero amount of resin, metal oxide and initiator, provided that they meet the amended limitation regarding the relative (not absolute) amounts of a metal oxide and epoxy group-containing resin. Thus, the limitations are of non-zero amounts of three types of compounds and also the performance metrics with regards to Martens hardness and viscoelasticity. The specification describes compositions overwhelmingly those three compounds and optionally compound (m1) and (m2) of the present application. There is no indication that Applicant was in possession of all, or anything close to it, of compositions with the claimed performance metrics with regards to Martens hardness and viscoelasticity and non-zero amounts of resin, metal oxide and initiator.
Applicant’s amendments limit the relative amounts of an epoxy group-containing resin (A) and a cationic polymerization initiator (I), as well as the relative amounts of compounds (m1) and (m2) of the present application which the epoxy group-containing resin (A) comprises. The claims of the present application allow for the epoxy group-containing resin (A), metal oxide (M), and cationic polymerization initiator (I) are present at trace levels of each component of the composition, as well as where all three components comprise 99.9% of the mass of the composition. As previously stated, “the specification describes compositions overwhelmingly comprising [the] three [necessary] compounds.” There is no indication that Applicant was in possession of all, or anything close to it, of compositions with the claimed performance metrics with regards to Martens hardness and viscoelasticity, wherein there are non-zero amounts of resin, metal oxide and initiator. While Applicant has amended said claims to limit the relative amounts of the three necessary components within the claimed composition, there’s still no indication that Applicant was in possession of all, or anything close to it, of compositions with the claimed performance metrics with regards to Martens hardness and viscoelasticity and non-zero amounts of resin, metal oxide and initiator. Thus, said independent Claims 1 and 11 and their dependent Claims 3, 6, and 8-10; and 13, 16, and 18-21 are rejected under 112(a) for lacking sufficient written description.
3. Applicant’s arguments, see page 9, line 10, filed 02 March 2026, with respect to the rejection of Claims 1, 3-4, 6-11, 13-14, and 16-21 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 but they are not persuasive. Applicant argues that the amendments overcome the rejection of record. Nearly all of the amendments to the independent Claims 1 and 11 were previously limited by now cancelled dependent claims. Given that the prior art of record taught said limitations, said argument regarding said incorporated limitations are not persuasive. That said, some of the claim amendments introduce limitations not previously addressed by the prior Office Action and will be addressed here. Applicant further limits Claims 1 and 11 wherein “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).” Paragraph [0089] of Nakamura 2 teaches a content of the component (I) is 0.05 to 8 parts by mass with respect to 100 parts by mass of the total amount of the component (A); a range which the entirety of the claimed range lies in side of. Applicant has further limited Claims 1 and 11 wherein a plurality of the partial structure (m1) 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. Paragraphs [0041-0045] teaches said limitation with a number of exemplary compounds shown which are within the scope of said limitation. Applicant further limited Claims 1 and 11 wherein a ratio of the compound (m1) to the compound (m2), as a mass ratio represented by compound (m1)/ compound (m2), is 2/8 to 8/2. Herein, Nakamura 2 in view of Nakamura 1 teaches said limitation. Nakamura 2 teaches compound (m1) and Nakamura 1 teaches compound (m2). At minimum, a person having ordinary skill in the art would understand Nakamura 2 in view of Nakamura 1 to teach a 1:1 ratio of compounds (m1) and (m2), which is within the scope of said claimed amendment. Thus, Applicant’s arguments are not persuasive.
4. Applicant further argues that the present application presents unexpected results. 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. At minimum, the new limitation limiting the relative amounts of compounds (m1) and (m2) renders Working Example 7 outside the scope of the present application. But a review of Table 1 finds that Working Example 7 of the present application performs as well as or better than a number of Working Examples of the present application which are within the scope of the present application. Thus, Applicant has not shown unexpected results over the entire claimed range, especially given the fact that the composition could have any number of other components of any amount and still be within the scope of the present application’s claims. Therefore, Applicant’s argument of unexpected results is not persuasive.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1 and 11 are described in an open-ended manner by claiming a composition “comprising” “an epoxy group-containing resin (A); a metal oxide (M); and a cationic polymerization initiator (I).” Thus, any composition imaginable would be within the scope of said limitation, as long as the composition had a non-zero amount of resin, metal oxide and initiator, provided that they meet the limitations regarding the relative (not absolute) amounts of a metal oxide, epoxy group-containing resin, cationic polymerization initiator, and epoxy group-containing resin’s compounds (m1) and (m2). Thus, the limitations are of non-zero amounts of three types of compounds, including relative amounts of two compounds of one of the three types of compounds, and also the performance metrics with regards to Martens hardness and viscoelasticity. The specification describes compositions overwhelmingly comprising those three compounds. There is no indication that Applicant was in possession of all, or anything close to it, of compositions with the claimed performance metrics with regards to Martens hardness and viscoelasticity and non-zero amounts of resin, metal oxide and initiator. Thus, said Claims and their dependent claims are rejected under 112(a) for lacking sufficient written description.
Claim Rejections - 35 USC § 103
7. 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:
8. 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.
9. Claims 1, 3, 6, 8-11, 13, 16, and 18-21 are rejected 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.
10. Regarding Claims 1, 3, 6, 8-11, 13, 16, and 18-21, Nakamura 2 teaches (Paragraphs [0009-0035]) an epoxy group-containing resin. Nakamura 2 teaches (Paragraph [0096]) a metal oxide, therein inorganic fillers e.g. silica and alumina. Nakamura 2 teaches (Paragraphs [0077-0089]) a cationic polymerization initiator, therein also known as a curing catalyst. Nakamura 2 teaches (Paragraphs [0038-0051], particularly Paragraph [0045]) the epoxy group-containing resin contains a resin represented by Formula (A1) of the present application. Nakamura 2 teaches (Paragraphs [0038-0051], particularly Paragraphs [0040 and 0045]) the epoxy group-containing resin contains a compound including a partial structure represented by Formula (m1) of the present application. Nakamura 2 teaches (Paragraph [0089]) 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). Nakamura 2 teaches (Paragraphs [0041-0045]) 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. Nakamura 2 teaches (Paragraphs [0050-0051]) 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. Nakamura 2 teaches (Paragraphs [0100-0107]) a step of forming a photosensitive resin film on a support using the resin composition. Nakamura 2 teaches (Paragraphs [0100 and 0105-0106]) a cured film obtained by curing the resin composition. Nakamura 2 teaches (Paragraphs [0100 and 0105-0106]) a step of forming a photosensitive resin film on a support using the resin composition. Nakamura 2 teaches (Paragraphs [0100 and 0105-0106]) a step of curing the photosensitive resin film to obtain a cured film. Nakamura 2 teaches (Paragraphs [0100-0107]) 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. Nakamura 2 teaches (Paragraphs [0100-0107]) 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, such as therein SMC molds. Nakamura 2 teaches (Paragraphs [0100-0107]) a rolled body obtained by winding the photosensitive resist film around a winding core.
11. However, Nakamura 2 fails to explicitly teach 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. Furthermore, Nakamura 2 fails to explicitly teach the epoxy group-containing resin comprises a compound (m2) represented by Formula (m2) of the present application. Furthermore, Nakamura 2 fails to explicitly teach the epoxy group-containing resin contains the resin, the compound (m1), and the compound (m2), and a total amount of the compound (m1) and the compound (m2) with respect to a total amount of the resin (Al), the compound (ml), and the compound (m2) is 15% by mass or more. Furthermore, Nakamura 2 fails to explicitly teach a step of forming a photosensitive resin film on a support using the resin composition; a step of exposing the photosensitive resin film; and a step of developing the exposed photosensitive resin film with a developing solution containing an organic solvent to form a negative-working pattern. Furthermore, Nakamura 2 fails to explicitly teach a ratio of the compound (m1) to the compound (m2), as a mass ratio represented by compound (m1)/ compound (m2), is 2/8 to 8/2.
12. Kimura teaches (Paragraph [0084]) 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. Kimura teaches (Paragraph [0017]) compositions comprising metal oxides therein are able to achieve good thermal stability, a thicker film which helps achieve a high aspect ratio, improved mechanical strength, all while not containing a toxic metal making it is safe for handling and for the environment.
13. 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 Nakamura 2 to incorporate the teachings of Kimura to have 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. Doing so would result in good thermal stability, a thicker film which helps achieve a high aspect ratio, improved mechanical strength, all while not containing a toxic metal making it is safe for handling and for the environment, as recognized by Kimura.
14. 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, and a total amount of the compound represented by formula (m1) of the present application and the compound represented by formula (m2) of the present application with respect to a total amount of the resin, the compound represented by formula (m1) of the present application, and the compound represented by formula (m2) of the present application is 15% to 25% by mass. Nakamura 1 teaches (Paragraph [0134]) that said compound in the above ranges can achieve a desirable combination of hardness and flexibility.
15. 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 Nakamura 2 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, and a total amount of the compound represented by formula (m1) of the present application and the compound represented by formula (m2) of the present application with respect to a total amount of the resin, the compound represented by formula (m1) of the present application, and the compound represented by formula (m2) of the present application is 15% to 25% by mass. Doing so would result in a desirable combination of hardness and flexibility, as recognized by Nakamura 1. Furthermore, given that Nakamura 2 teaches compound (m1) of the present application and Nakamura 1 teaches compound (m2) of the present application, at minimum a person having ordinary skill in the art would understand Nakamura 2 in view of Nakamura 1 to teach a 1:1 ratio of compounds (m1) and (m2), which is within the scope of 8/2 to 2/8 ratio of said compounds claimed.
16. Nakamura 1 teaches (Claim 12) a step of forming a photosensitive resin film on a support using the resin composition. Nakamura 1 teaches (Claim 12) a step of exposing the photosensitive resin film. Nakamura 1 teaches (Claim 12) a step of developing the exposed photosensitive resin film with a developing solution containing an organic solvent to form a negative-working pattern. Nakamura 1 teaches (Paragraph [0015]) that said method can be employed to obtain a cured film with improved hardness and to provide a negative type photosensitive resin composition which is capable of forming a pattern having an excellent shape.
17. 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 Nakamura 2 to incorporate the teachings of Nakamura 1 to have a step of forming a photosensitive resin film on a support using the resin composition; a step of exposing the photosensitive resin film; and a step of developing the exposed photosensitive resin film with a developing solution containing an organic solvent to form a negative-working pattern. Doing so would result in the ability to obtain a cured film with improved hardness and to provide a negative type photosensitive resin composition which is capable of forming a pattern having an excellent shape, as recognized by Nakamura 1.
Conclusion
18. 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.
19. 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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21. 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.
/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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