Detailed Action
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Applicant’s Amendment filed 02/20/2026 has been entered and is being considered. Claim 1 has been amended substantially. Claims 2, 4, 6, 7, and 15-19 are amended for clarity. No new matter appears to be added with this amendment.
Response to Arguments
Applicant’s amendment and arguments based thereon regarding superior unexpected results is considered and appreciated, but is not persuasive because the subsection of the claim regarding organic solvents is still broader than the 3 embodiments relied upon to abet the claims of superior unexpected results. The claim language recites “ an organic solvent having a carbonyl group and comprising at least one member selected from the group consisting of propylene glycol monomethyl ether acetate, diethyl carbonate, and propylene carbonate” - this claim language does not discount the presence of other solvents by nature of the “comprising” and “at least one member” language, and renders the claim language indefinite by reciting a broader range/genus and a narrower genus in the same claim. The scope of the claim is rendered uncertain as to whether or not a single solvent or blend is used and whether or not the broad carbonyl solvent or the three named solvents are the coverage thereof. The examples pointed to do not include solvent blends.
Further, the closest example in the art Kato is one using methyl ethyl ketone, while the examples pointed to by Applicant do not cover this particular solvent embodiment. As such, the comparison being made is weakened by the lack of direct comparative data to the examples of the prior art. The provision of data supporting the stated position of unexpected results in regards to the closest prior art example would be appreciated in making this determination.
After consideration, a 35 USC 112b rejection is made in view of the amendments as detailed in the body of the office action below.
After further search and consideration of the prior art including that proffered in the prior Final Rejection, the examiner makes a new grounds of rejection on the basis that Kato does teach propylene glycol monomethyl ether acetate at [0144] as a solvent embodiment and an alternative to methyl ethyl ketone as outlined regarding the working example of Kato. A person having ordinary skill at the art would have found it obvious to substitute one solvent for another with the expectation that the substitution would not substantially affect the composition’s properties or the processing thereof, particularly when the solvents in question are presented as alternatives to one another.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 and 11-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation "an organic solvent having a carbonyl group”, and the claim also recites " which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Specifically, the claim language herein uses both “comprising” (open language, unrecited components may still be present) and then uses “consisting of” (closed language) to refer to “an” organic solvent. Comprising language leaves open the presence of other carbonyl-bearing solvents (such as, for instance, methylethylketone), while consisting language as claimed seems to point to solvent limitations that would exclude other solvents. The metes and bounds of the claim are both narrow and broad at one time, making the scope unsure – the claim language appears to encompass any number of solvents so long as at least one of the three named solvents are present, but is also used to refer to “an organic solvent” (singular).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US 20170329220 A1) as evidenced by Crivello and Liu (Crivello, J.V. and Liu, S. (2000), Photoinitiated cationic polymerization of epoxy alcohol monomers. J. Polym. Sci. A Polym. Chem., 38: 389-401).
Regarding Claim 1-3, and 6-9, Kato discloses a photosensitive resin composition comprising a resin having a phenolic hydroxyl group, a photosensitive acid generator, an aliphatic compound having at least two or more functional groups such as glycidyloxy group, and a compound such as an anthracene derivative (Abstract).
The composition’s resin (A) may be a phenolic resin such as a novolac derived from a phenolic compound and aldehyde as described from [0048]-[0064], such as cresol and pyrogallol.
The photoacid generating compound (B) is described from [0065]-[0081], and may be a sulfonium salt such as a triphenyl sulfonium having a sulfonic acid counterion or borate counterion.
A crosslinking agent (C) is described from [0082]-[0097], such as a glycouril. The C component may be present in an amount ranging from 5 parts by mass to 80 parts by mass relative to 100 parts by mass of the component (A)
A component (D) comprises an aliphatic compound having groups such as an oxetanyl, methacryloyloxy, glycidyloxy, vinyl ether, or hydroxyl group as described from [0098]-[0120], where the compound is multi-functionalized with these groups. The D component may be present in 1 part by mass to 70 parts by mass relative to 100 parts of the resin (A).
The component E1 is described from [0121]-[0126], where the component is a sensitizing agent such as an anthracene derivative, a phenothiazine derivative, or perylene derivative, among others as described in the cited paragraphs. The component E1 is present in an amount ranging from 0.01-2 parts by mass relative to 100 parts by mass of the resin (A).
A component G included may comprise siloxane and inorganic fillers used to improve thermal properties and adhesion ([0146]-[0156], such as 3-glycidoxypropyltrimethoxysilane.
Examples such as those shown in Table 1 disclose:
A-1 – cresol novolac resin
B-1 - triaryl sulfonium salt with a tetrakis(pentafluorophenyl)borate anion
C-1 – 1,3,4,6-tetrakis(methoxymethyl)glycouril
D-1 trimethylolpropane triglycidyl ether
E1-1 – 9,10-dibutoxyanthracene
F-1 methyl ethyl ketone
G-1 – 3-glycidoxypropyltrimethoxysilane
Herein, the D-1 compound functions as the claimed epoxy resin (a), the claimed cationic polymerization initiator (b) is represented as the triarylsulfonium salt B-1, the claimed anthracene derivative (c) is represented by (E1-1). As the epoxy component D-1 is a triglycidyl epoxy, it is a tri-epoxy resin (claim 3). The cationic polymerization initiator B-1 is a sulfonium salt having a tetrakis(pentafluorophenyl)borate anion (claims 6 and 7).
Regarding the anthracene derivative E1-1, 9,10-dibutoxyanthracene has the following structure:
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This structure reads upon the claimed (c) for where R1 and R2 are alkyl groups having 4 carbons and subscripts m and n are both 0 (claims 1 and 2)
Table 1 shows the epoxy resin component D-1 is present in 43 parts, and the sulfonium salt B-1 and anthracene compound E1-1 in 8.3 and 0.73 parts by mass respectively. Dividing the sulfonium and anthracene parts by mass respective to the epoxy parts by mass and multiplying by 100 to normalize to 100 parts by mass of epoxy yields that the sulfonium salt (cationic polymerization initiator) is present in 19.3 parts by mass relative to 100 parts by mass epoxy resin – falling within the claimed range of claim 8, and the anthracene compound is present in 1.7 parts by mass relative to 100 parts by mass epoxy resin - falling within the claimed range of claim 9.
Regarding the compound B-1, sulfonium salts are broadly disclosed as acid generators by the reference, but acid generation is a key step to initiating cationic polymerization so the sulfonium acid generator functions as a cationic polymerization initiator. This is evidenced by Crivello and Liu, who broadly disclose the reactivity of epoxy alcohol monomers upon UV irradiation of cationic photoinitiators as shown in the reaction scheme here:
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While the initiator herein is an aryliodonium salt and not an arylsulfonium salt, the same acid generation principle to initiate cationic polymerization applies to arylsulfonium and onium salts in general (see page 399 paragraph 1).
Kato however does not disclose in an experimental example a solvent having a carbonyl group selected from an ester, lactone, carbonic acid ester, and/or cyclic carbonic acid ester compound.
This limitation is met by the general disclosure of Kato.
Kato generally discloses a solvent (F) at [0143]-[0145], where a solvent listed may be used singly or in admixture. Specific solvents listed include ethyl lactate, gamma-butyrolactone, and propylene glycol monomethyl ether acetate.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference with recognition that it would be obvious to try various solvents either singly or in admixture so as to tune the solubility of the dissolved components and ease of solvent removal during processing.
Regarding Claim 13, the component G-1 of table 1 is a 3-glycidoxypropyltrimethoxysilane, which is recited as a silane coupling agent in the specification at [0147].
Regarding Claim 4 and 5, Kato discloses the limitations of the claim as required by claim 1 as discussed above. Kato does not, however, recite an explicit experimental example wherein the epoxy resin comprises a combination of a tri- or higher functional epoxy resin and a bifunctional epoxy resin.
This limitation is met by the general disclosure of Kato.
Kato discloses the component (D) from [0098]-[0120], where the component (D) comprises an aliphatic compound having at two or more functional groups from the group of arcryloyloxy groups, methacryloyloxy groups, glycidyloxy groups, oxetanyl alkyl ether group, vinyl ether group, and hydroxyl group. These compounds may be used singly or in admixture. Exemplary glycidyloxy compounds are listed from [0113]-[0114], such as the compound D-1 referenced above regarding claim 1 and, for example, ethylene glycol diglycidyl ether, 1,4-cyclohexanedimethanol diglycidyl ether, and propylene glycol diglycidyl ether. These three compounds are bifunctional epoxies. The 1,4-cyclohexanedimethanol diglycidyl ether is an epoxy having an alicyclic skeleton (claim 4). The reference asserts that the composition, when comprising at least one compound (D) exhibits improved flexibility of the resin layer and allows for increased adhesion between resin layers and substrates.
A person of ordinary skill in the art would have found it obvious to incorporate a bifunctional epoxy compound, such as 1,4-cyclohexanedimethanol diglycidyl ether, alongside a tri-functional or higher-functional epoxy resin into the composition of Kato, with the recognition that such incorporation would improve the adhesion between the resin composition and the substrate and prevent deformation during and after processing.
Regarding Claim 11, Kato meets the limitations of the claim as described regarding claim 1 above. Kato, however, does not disclose in an experimental example a sensitizing aid as part of the composition.
This limitation is met by the general disclosure of Kato.
Kato discloses component E1 from [0121]-[0136] and component E2 from [0137]-[0142], where such compounds include pyrene derivatives such as 1-methylpyrene and phenanthrene derivatives such as 3-methylphenanthrene. Kato asserts the inclusion of these compounds may be done singularly or in admixture and that when they are included the sensitivity of the composition is improved and thus the exposure dose needed for forming fine resist patterns is reduced. This reduced dose requirement further improves productivity in processing.
An ordinarily skilled artisan would have found it obvious to arrive at the claimed invention prior to the filing date from the general disclosure of Kato by incorporating, in addition to the 9,10-dibutoxyanthracene compound disclosed in the experimental examples, another E1 compound such as 1-methylpyrene or 2-methylphenanthrene to improve the sensitivity of the composition in pursuit of improved processing.
Regarding Claim 12, Kato meets the limitations of the claim as described regarding claim 1 above. However, Kato fails to discloses in an experimental example comprising an acid generator beyond that of the sulfonium salt referenced with regard to claim 1.
This limitation is met by the general disclosure of Kato, which discusses component B from [0065]-[0081], where exemplary acid generators may be, for example, diphenyliodonium hexafluorophosphate. These compounds may be used singly or in admixture, and such components are ascribed to improve negative resist patternability.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of Kato and incorporated an additional onium salt such as diphenyliodonium hexafluorophosphate into the composition so as to improve the negative resist patternability of the composition upon processing.
Regarding Claim 14-16,Kato meets the limitations of the claims as described above regarding claim 1. However, Kato does not describe an explicit experimental embodiment wherein the composition required by claim 1 is processed.
This limitation is met by the general disclosure of the reference.
The composition of Kato as described above regarding claim 1 is processed by coating onto a polyethylene terephthalate film and dried to create a photosensitive layer, after which the layer was laminated onto a silicon wafer, then exposed to i-line radiation through a mask using an i-line stepper. After exposure, post-exposure baking (curing) and development to remove unexposed portions was performed so as to arrive at a cured patterned film, wherein the shaped product is the cured film pattern ([0166]-[0177].
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US 20170329220 A1) and Crivello and Liu (Crivello, J.V. and Liu, S. (2000), Photoinitiated cationic polymerization of epoxy alcohol monomers. J. Polym. Sci. A Polym. Chem., 38: 389-401) as applied to claim 1 above, and further in view of Horiuchi (US 20160091789).
Regarding Claims 17 and 18, Kato discloses the limitations of the claim as required and discussed regarding claim 1 above. The examiner also will point out that Kato additionally discloses all of the actionable steps of claim 18, which are – a step of laminating a photosensitive resin composition on a substrate, pattern-exposing the composition, curing the exposed portion, and then removing an unexposed portion, wherein the pattern exposure is performed using i-line radiation.
Kato does not disclose a liquid discharge head or components thereof.
This limitation is met, in analogous art, by Horiuchi.
Horiuchi broadly discloses a production process for an optically shaped product, including the application of a photosensitive composition in dry film form to a substrate on which a hole is formed and performing patterning, as well as a method for producing a liquid discharge head (Abstract).
The composition of Horiuchi comprises a combination of a bifunctional epoxy resin and a tri- or higher functionality epoxy resin, a photoacid generator, an anthracene compound, a basic substance such as an amine, as well as a silane coupling agent and a sulfonium salt polymerization initiator (cationic polymerization initiator). The epoxy resins discussed in [0041] include a bisphenol A novolac epoxy resin and a tri-or-higher epoxy resin having an oxycyclohexane skeleton. In [0044], the solvent of choice used to dissolve the compositions is polyethylene glycol monomethacrylate, which bears a carbonyl group.
A method is disclosed in the examples of [0044]-[0046], where the photosensitive composition is applied onto a PET film and baked to evaporate solvent, then transferred to a substrate having a discharge energy generating element and a supply path provided in advance by means of a lamination method, after which the photosensitive composition is pattern exposed using an i-line exposure stepper though a flow-path forming mask having a flow path pattern. The exposed portion was then cured to form a flow path forming member. A second photosensitive composition was then transferred and laminated atop the first resin composition layer defining the flow path member, then exposed to i-line radiation from an exposure stepper through a discharge port forming mask, then cured to form a discharge port forming member. Unexposed portions of these two layers where collective removed to form a flow path and a discharge port.
As the compositions of Kato and Horiuchi are substantially similar, they necessarily will bear similar performances and properties in processing. A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention by incorporating composition of Kato into the processing steps of Horiuchi to arrive at a liquid discharge head having even discharge port height and flow path height ([0016]).
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US 20170329220 A1) and Crivello and Liu (Crivello, J.V. and Liu, S. (2000), Photoinitiated cationic polymerization of epoxy alcohol monomers. J. Polym. Sci. A Polym. Chem., 38: 389-401) as applied to claim 1 above, and further in view of Nawrocki et al (US 20150024326 A1, published 01/22/2015).
Regarding Claim 19, Kato discloses the limitations of the claim as discussed above regarding claim 1.
Kato does not disclose a composition wherein an organic solvent used in the composition is a carbonic ester or cyclic carbonic ester compound.
This limitation is met by Nawrocki.
Nawrocki discloses a photo imageable composition comprising a resin, cationic photoinitiators, solvents, and fluorinated compound (Abstract).
The resins of Nawrocki are epoxy resins such as novolac epoxy resins and phenolic resins ([0030]-[0042]. Cationic photoinitiators include sulfonium and iodonium salts such as those described from [0053]-[0055]. A radical initiator may also be present. A solvent used may be a film casting solvent such as propylene glycol monomethyl ether acetate, gamma-butyrolactone, dimethyl carbonate, diethyl carbonate, and propylene carbonate. Dimethyl/Diethyl carbonate are carbonic acid ester compounds. Propylene carbonate is a cyclic carbonic acid ester compound.
The solvent list of Nawrocki bears common components with that of Kato. As such, a person of ordinary skill in the art would consider the carbonate solvents of Nawrocki to be reasonable art-recognized alternatives to the solvents that are common to the two references. A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention by incorporating a solvent such as diethyl carbonate and/or propylene carbonate from Nawrocki into the composition of Kato so as to facilitate composition processing.
Conclusion
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/A.P.T./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734