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 .
Response to Amendment
Applicant’s Amendment filed 07/08/2026 has been considered and is entered here. Claim 1 has been amended as to the scope of claim limitations. Claims 3 and 4 are canceled. Claims 5-9, 11-13, and 18-19 have been amended for formatting purposes.
No new matter has been added with these claim amendments.
Response to Arguments
Applicant’s Amendments and arguments stemming therefrom are considered to change the scope of the claims so as to render them outside that of the scope of the prior art used to set forth the rejections in the prior office action. As such, all rejections over 35 USC 103 set forth in the prior office action are withdrawn.
However, Applicant’s assertions of superior unexpected results are found not persuasive on the grounds that the scope of the claims are too broad for the experimental examples to be exemplary of their entire scope. Applicant’s amended claim 1 comprises 9 different genera of trifunctional epoxy resins, but the experimental examples pointed in the specification to use 3 species of trifunctional resins, and some of these examples use bifunctional epoxy resins – which are not contemplated in the scope of claim 1 but rather in claim 5.
Applicant’s amendment has rendered the 35 USC 112(b) rejections made in the prior office action moot. These rejections are withdrawn.
After further search and consideration, the Examiner makes a new grounds of rejection. Applicant’s amendments necessitated the new grounds of rejection.
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) 1-2, 5-9, and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hakone et al (US 20210124265 A1, published 04/29/2021)
Regarding Claims 1, 2, 5-7, 11-16, Hakone disclsoses a negative photosensitive composition including a compound having a triazine ring represented by formula (1), an epoxy resin having a benzene backbone and at least two epoxy groups (B), and a cationic photoinitiator (C) (Abstract).
Hakone does not disclose a particular experimental embodiment that meets the sum total of the claim limitations.
These limitations are met by the general disclosure of the reference.
The compositional component (A) is discussed from [0012]-[0024] and [0042]-[0060], where the component is a triazine functionalized with a group having an oxetanyl group or a group bearing an epoxide.
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where R1 is an organic group having a glycidyl or oxetanyl group, and R1 is at least one of (1-1), (1-2), or (1-3):
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where R2 and R3 each represent C1-C8 alkylene groups, and R4 represents a C1-C6 alkyl group. In some embodiments, R1 may also include a vinyl group or methyl vinyl group as per formula (1-4) where at least one R1 is a group conforming to . The compound (A) when comprising two (1-1) R groups and one (1-4) R group is bifunctional epoxy resin (claim 5).
The epoxy resin (B) may be selected from embodiments (B-1)-(B-9) as presented from [0025]-[0034] and [0061]-[0086]. One embodiment of the resin is B-1, which conforms to the general formula (2):
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where R1 each independently represents a glycidyl group or a hydrogen atom, where at least two R are glycidyl groups. Subscript k represents an average and is a real number between 0 and 30.
The above resin meets the limitations of the claim for where it is at least tri-functional or higher-functional (where subscript k is 0-30, and where at least 3 R are glycidyl) epoxy resin having a bisphenol skeleton.
Hakone ascribes improved chemical resistance and low moisture absorption to the composition when it comprises (B-1) singly or in a mixture with (B-2) and (B-3) ([0063]).
The composition of the reference also comprises a cationic photoinitiator as described from [0089]-[0094], wherein the initiator generates cations in response to irradiation with UV, far UV, KrF, ArF, or electron radiation, and the cations initiate polymerization. These initiators are typically salts such as aromatic iodonium or aromatic sulfonium salts (claim 6). Exemplary initiators include but are not limited to those described at [0092]-[0093], such as diphenyliodonium hexafluorophosphate (PF6- anion), diphenyliodonium hexafluoroantimonate (SbF6- anion), 4-thiophenyldiphenylsulfonium hexafluoroantimonate, and toylcumyliodonium tetrakis(pentafluorophenyl)borate (B(C6F5)4- anion) (claim 7, where the SbF6, PF6, and B(C6F5)4- anions are presented). These cationic photoinitiators also function as acid generators, and may be used singly or in admixture. When a second initiator is used, it also meets the limitations of claim 12 for being an acid generator (In the experimental examples at Table 1, the cationic initiator C used is also referred to as a photoacid generator C-1).
The components of the composition are dissolved in solvent, where the solvent is not particularly limited so long as it is compatible with the chemistry of the composition, such solvents including but not limited to propylene glycol monomethyl ether acetate, acetone, cyclohexanone, and naphtha ([0097]).
Additional components in the composition include adhesion imparting agents and sensitizing agents. Adhesion imparting agents contemplate by the reference at [0099], silane coupling agents are discussed as preferable (claim 13). Exemplary sensitizing agents are discussed at [0102]-[0105], where sensitizing agents include anthracene derivatives such as 9,10-dibutoxyanthracene. 9,10-dibutoxyanthracene meets the limitations of claimed formula (1) for where R1 and R2 are each a butyl group, and subscript m and n are each 0 (claim 2- where the R1 and R2 groups represent a C4 alkyl group, and where Claim 2 does not require subscript m and n be non-zero). Additional sensitizing agents may be used in admixture with the anthracene derivative, such as a thioxanthone (claim 11, where the composition further comprises a sensitizing aid).
The photosensitive resin composition is used in the form of a solution added to a solvent, and then may be deposited onto a metal, ceramic, or organic substrate. After application to a substrate, the composition is baked to remove solvent to form a composition layer. The composition layer is pattern-exposed to radiation using a mask, then post-exposure baked. After this, the unexposed parts of the composition layer are developed with a liquid developer, then a further hard-baking treatment is performed to create a cured patterned product. Exposure to radiation may be performed with, for example “i-line” radiation (see [0119]), or another radiation source such as those discussed above regarding the cationic initiator (claim 14-16, where a patterned product is a shaped product as it has had “shaping” done to it after being formed into a composition layer as a result of the patterning process – wherein the shaped product is formed on the substrate, and i-line radiation is used in exposure).
As described above, Hakone ascribes improved chemical resistance and lowered moisture absorption to the cured products of the composition when the epoxy resin (B-1) is incorporated thereinto. A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date from the taught composition of Hakone, which is directed to a photosensitive composition substantially meeting the limitations of the claims, to arrive at a composition and cured product therefrom exhibiting improved chemical resistance and lowered moisture absorption.
Regarding Claim 8, Hakone teaches the limitations of the claims as discussed above regarding claim 1. Hakone does not disclose an experimental example meeting the limitations of the claim 1, and as such does not do so for claim 8.
These limitations are met by the general disclosure of Hakone.
Hakone discloses the cationic initiator may be present in the composition in an around ranging from 0.1 to 5 mass% of the total mass of components (A) and epoxy resin (B) ([0094]).
In the experimental example of Table 1, (B) comprises 98 parts by mass and in one example 108 parts by mass. The initiator is present in 1 to 1.5 parts by mass. The experimental range disclosed is thus 1/108 to 1.5/98, or 0.9 to 1.53 per 100 parts of (B), which overlaps the claimed range of 0.1 to 30 parts by mass with respect to epoxy resin’s solid fraction. A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date in view of the disclosure of the Hakone, which teaches an overlapping range with that of the claims (See MPEP 2144.05, in re Wertheim).
Regarding Claim 9, Hakone teaches the limitations of the claims as discussed above regarding claim 1. Hakone does not disclose an experimental example meeting the limitations of the claim 1, and as such does not do so for claim 8.
These limitations are met by the general disclosure of Hakone.
Hakone describes the sensitizing agents, such as the anthracene derivative 9,10-butoxyanthracene, from [0102]-[0105], where the sensitizing agents are present in an amount ranging from 0-30 mass% of the initiator (C). As discussed regarding claim 8, the initiator (C) is present in 0.9 to 1.53 per 100 parts of epoxy resin (B). The range of sensitizing agent ranges from 0(0.9) to 0.30(1.53) or 0% to 0.46% - or 0 to 0.46 parts by mass per 100 parts of epoxy (B), overlapping the claimed range of 0.1-30 parts at 0 to 0.46. A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date in view of the disclosure of the Hakone, which teaches an overlapping range with that of the claims (See MPEP 2144.05, in re Wertheim).
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hakone et al (US 20210124265 A1, published 04/29/2021) as applied to claim 1 above, and further in view of Horiuchi (US 20160091789 A1).
Regarding Claims 17 and 18, Hakone discloses the limitations of the claim as required and discussed regarding claim 1 above. The examiner also will point out that Hakone additionally discloses all of the actionable steps of claim 18 at [0111] and [0119] when discussing forming and patterning dry-film resists, which are – a step of laminating a photosensitive resin composition on a substrate with a cover film, pattern-exposing the composition (after removing the cover film), curing the exposed portion, and then removing an unexposed portion, wherein the pattern exposure is performed using i-line radiation.
Hakone 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 Hakone 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 Hakone into the processing steps of Horiuchi to arrive at a liquid discharge head having even discharge port height and flow path height ([0016]), such incorporation amounting to the use of a known composition as taught by Hakone in a known process as per Horiuchi to achieve the predictable result of a liquid discharge head.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hakone et al (US 20210124265 A1 , published 04/29/2021) as applied to claim 1 above, and further in view of Nawrocki et al (US 20150024326 A1, published 01/22/2015).
Regarding Claim 19, Hakone discloses the limitations of the claim as discussed above regarding claim 1.
Hakone 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 Hakone. 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 Hakone so as to facilitate composition processing - it is prima facie obvious to combine compositional elements from two compositions directed to the same general field of endeavor (photoimaging chemistry) to generate a third composition to be used for the same general purpose (See MPEP 2144.06, in re Kerkhoven).
Conclusion
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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW PRESTON TRAYWICK whose telephone number is (571)272-2982. The examiner can normally be reached Monday - Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.P.T./Examiner, Art Unit 1737
/SALLY A MERKLING/SPE, Art Unit 1738
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