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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 March 2026 has been entered.
Response to Arguments
Applicant’s cancellation of claims 1-2 is acknowledged.
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
Applicant has amended claim 6 to change claim 6 from a dependent claim to an independent claim. Instant claim 6 recites that the EO/PO modified 9-phenylacridine photosensitizer is selected from a group of compounds. Notably, the compounds recited by instant claim 6 were previously presented in claim 1, which has since been cancelled. From a practical stance, claim 6 (as amended) has the same scope as the previous presentation. Applicant argues that the previously cited art (Ajioka and Takamura) fails to disclose or render obvious the invention according to instant claim 6. Specifically, Applicant argues that the photopolymerization initiation (C) of Ajioka is different from the EO/PO modified 9-phenylacridine photosensitizer. In response to this argument, the Examiner reminds the Applicant that per MPEP 2111.01 IV., Applicant may be their own lexicographer. Per paragraph 0090-0091 of the instant application’s pre-grant publication (PGPUB), the photosensitive resin composition may further comprise auxiliary agents, such as other photoinitiators and/or sensitizers. This language suggests by the applicant that such terms are being used interchangeably. Furthermore, the proposed modification of Ajioka’s photoinitiator, by utilizing the alkylene oxide (AO) modification method taught by Takamura would yield a structurally identical compound as some of the compounds recited by instant claim 6. Thus, the resulting compound is structurally identical to the EO/PO 9-phenylacridine photosensitizer recited by instant claim 6. Therefore, this argument is not found to be persuasive.
Applicant argues that Ajioka utilizes an ethylene oxide (EO) modified compound (UA-11) in Examples 1-4, but not in Example 5. Per the results of Ajioka, the Applicant argues that the inclusion of such a compound does not yield improved photosensitivity, and therefore one having ordinary skill in the art would not be motivated to perform EO/PO modification on the 9-phenylacridine photoinitiator. In response to this argument, the Examiner notes that Example 5 of Ajioka replaces the UA-11 compound used in Examples 1-4 with an equal amount of a different EO-modified compound (Refer to Table 1 and paragraph 0131 of Ajioka). Specifically, the EO-modified urethane dimethacrylate (UA-11) is replaced with an EO-modified trimethylolpropane trimethacrylate (TMPT21). Example 5 and Example 1 of Ajioka are compositionally identical, other than the EO-modified compound present in the composition. Per Table 2 of Ajioka, the only conclusion that can be drawn from this comparison is that TMPT21 provides improved sensitivity over UA-11, all other things being equal. As both UA-11 and TMPT21 are EO-modified compounds, the conclusion drawn from one having ordinary skill in the art would not suggest that including EO-modified compounds yields reduced photosensitivity. Furthermore, the results of Table 2 of Ajioka suggest that the inventive examples 1-5, which contain 9-phenylacridine derivatives, provide improved photosensitivity than Comparative Examples 1 and 2, which do not contain a 9-phenylacridine derivative. Thus, the proper conclusion derived from Ajioka’s inventive and comparative examples is that 9-phenylacridine derivatives provide improved photosensitivity. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, Ajioka provides teachings that 9-phenylacridine derivatives provide improved photosensitivity. Takamura further teaches that the appropriate amount of alkylene oxide modification is performed, excellent photosensitivity can be obtained (see Takamura, paragraph 0018). Thus, hindsight reasoning is not relied upon to suggest combining the respective features of Ajioka and Takamura to obtain further improved photosensitivity. Therefore, this argument is not found to be persuasive.
Lastly, Applicant argues that the AO-modification taught by Takamura is performed on a (meth)acrylate compound, and thus the resulting AO-modification, when applied to Ajioka’s compound, would not yield any of the compounds recited by instant claim 6. This argument has been responded to in previous actions (see, for instance, paragraph 6 of the final rejection filed 20 November 2025 or paragraph 5 of the advisory action filed 17 February 2026). The Examiner’s position is unchanged at this time.
With the above points considered, Applicant’s arguments are not found to be persuasive and therefore the previous rejection is not withdrawn. The claim rejections following below have been updated to reflect the most recent claim amendments, but are otherwise the same in scope and substance as previously presented.
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) 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0040290 A1 (Ajioka) in view of US 2015/0038662 A1 (Takamura).
Regarding Claims 6-10, Ajioka discloses a photosensitive resin composition and products formed from the same. The photosensitive resin composition comprises a binder polymer (A), a photopolymerizable compound having an ethylenically unsaturated bond (B), and a photopolymerization initiator (C) (paragraph 0031). The binder polymer is of similar structure as the alkali-soluble polymer used in the instant application (compare paragraph 0034 of Ajioka and page 6 line 20 through page 7 line 5 of the instant application’s specification). Ajioka suggests that the binder polymer is alkali-soluble (paragraph 0033-0034 and 0038). The binder polymer is included in the composition in an amount of 30 to 80 parts by mass with respect to 100 parts by mass of the total amount of binder polymer and photopolymerizable compound (paragraph 0044). The photopolymerizable compound is included in the composition in an amount of 25 to 60 parts by mass with respect to 100 parts by mass of the total amount of binder polymer and photopolymerizable compound (paragraph 0059). The photopolymerization initiator is included in the composition in an amount of 0.1 to 10 parts by mass with respect to 100 parts by mass of the total amount of binder polymer and photopolymerizable compound (paragraph 0064). Ajioka discloses that the composition may further comprise a compound (D) which is represented by general formula (3), which is reproduced below (paragraph 0074).
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In general formula (3), X is a carbon or nitrogen atom, more preferably a carbon atom; R3 to R5 represent a halogen atom or a C1-C5 alkyl group, wherein halogens are preferred; R6 is a C1-C5 alkyl group or a C1-C5 alkoxy group, and n is an integer of 0 to 4 (paragraph 0075). Ajioka discloses that the compound represented by general formula (3) may include tribromomethylphenyl sulfone, which is recited by instant claim 9 and meets the requirements of instant claims 6 to 8. The compound (D), which is a photoacid generator, is included in the composition in an amount of 0.1 to 10 parts by mass with respect to 100 parts by mass of the total amount of binder polymer and photopolymerizable compound (paragraph 0077). Ajioka further discloses that the photosensitive resin composition my contain additional components, such as dyes, thermal development inhibitors, plasticizers, and the like (paragraph 0079). The aforementioned photoinitiator is a compound according to general formula (1) (paragraph 0015), which is reproduced below.
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As can be seen in the above structure, Chemical Formula 1 of Ajioka is a 9-phenylacridine derivative. Ajioka discloses that R1 may be a halogen, an amino group, a C1-6 alkyl group, a C1-6 alkoxy group, or a C1-6 alkylamino group, and m is an integer having a value of 1 to 5 (paragraph 0015). When R1 is chosen to be an alkoxy group, specifically one having 2 carbons or 3 carbons, a compound having structural similarities to the compound claimed by instant claim 1 is obtained. Ajioka’s compound according to general formula (1) is similar to the claimed compound in the case that m and n as recited by instant claim 1 are both zero. Some examples of the compound according to general formula (1) disclosed by Ajioka are named in paragraph 0062, including some ethoxy group-substituted 9-phenylacridine compounds.
However, Ajioka does not disclose that the 9-phenylacridine compound is modified with an ethylene oxide (EO) or propylene oxide (PO) substituent. Takamura teaches alkylene oxide (AO) modifications to (meth)acrylate compounds and reactive compositions containing such compounds. Takamura specifically teaches the modification of dipentaerythritol (meth)acrylate compounds with AO groups (Takamura, paragraph 0015). Takamura teaches that it is known in the art that AO-modified compounds can reduce viscosity and/or crystallinity of reactive compositions (Takamura, paragraph 0006). The AO-modifications taught by Takamura include ethylene oxide, propylene oxide, or butylene oxide (Takamura, paragraph 0023). Takamura teaches that the alkylene oxide is introduced to the base compound through a method using a cyclic carbonate, ethylene chlorohydrin, or alkylene oxides (Takamura, paragraph 0028). In the case that ethylene chlorohydrin is utilized, the alkylene oxide group would take the structure of -CH2-CH2-OH. Takamura teaches that an AO-modified compound can be used in a typical photosensitive composition that is cured by, for example, ultraviolet rays or electron beams (Takamura, paragraph 0041). Takamura teaches that the AO-modified compound has the following structure (Takamura, paragraph 0015):
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In the above structure, AO represents one member or two or more members selected from alkylene oxide units represented by -CH2CH2O-, -CH2CH(CH3)O-, -CH2CH2CH2CH2O-, and -CH2CH(C2H5)O-, and l represents the polymerization degree of the added alkylene oxide and has a value of 5 or less (Takamura, paragraph 0015). The first two alkylene oxide units described above are ethylene oxide (EO) and propylene oxide (PO), respectively.
Ajioka and Takamura are analogous art because both references pertain to photosensitive materials and compositions. Furthermore, both references aim to provide a composition having improved photosensitivity (see Ajioka, paragraphs 0014 and 0016; and Takamura, paragraphs 0012 and 0018). It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to modify the 9-phenylacridine compound disclosed by Ajioka with an ethylene oxide (EO) group or a propylene oxide (PO) group, as taught by Takamura, because performing alkylene oxide (AO) modification containing these groups results in enhanced photosensitivity of the compound (Takamura, paragraph 0164) and would be expected to make the compound easier to process through viscosity and/or crystallinity reduction (Takamura, paragraph 0169). When the aforementioned modification is made, the structure of Ajioka would be modified such that the alkoxy group disclosed by Ajioka is replaced by either a ethylene oxide group or a propylene oxide group, yielding the structure according to general formula (I) of the instant application, wherein the value of p is 3, the value of q is 0, the values of m and n are both zero, X is either an ethylene group or a propylene group, and R is a hydrogen atom, thus yielding at least one of the structures recited by instant claim 6. For instance, Takamura teaches an AO-modification that, when combined with the teachings of Ajioka as suggested by the Examiner, would at least yield the following structures recited by instant claim 6.
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Regarding Claim 11, Ajioka discloses a photosensitive element depicted by Fig. 1 of Ajioka (paragraph 0084). The photosensitive element comprises a photosensitive resin composition laminated on a support (paragraph 0084). The photosensitive resin composition layer is a layer composed of the photosensitive resin composition disclosed by Ajioka (paragraph 0084). Thus, it would have been obvious to one having ordinary skill in the art before the filing date of the instant application to form a photosensitive resin laminate utilizing the photosensitive resin containing the alkylene oxide-modified compound rendered obvious by the combination of Ajioka and Takamura (as discussed above) as the photopolymerization initiator (C) in the photosensitive composition disclosed by Ajioka.
Conclusion
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734