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 .
Election/Restrictions
Claims 7-10 and 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/4/25.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 11-14, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al. (WO 2019225363 A1 – English translation attached) in view of Masuko et al. (JP 2005116999 A – English translation attached).
Matsuda et al. teaches a method for producing a resin pattern comprising: (1) forming a photosensitive transfer material layer over a substrate, preferably a conductive layer [0198], wherein the photosensitive layer comprises a temporary support, such as a glass or resin substrate (translation, p. 5, 1st full paragraph), and a photosensitive resin layer comprising a polymer A having an acid group protected by an acid-decomposable group and a photoacid generator (abstract) (regarding Step Y1 of claim 1); (2) exposing the photosensitive resin layer using actinic rays through a mask having a predetermined pattern wherein the photoacid generator is decomposed to generate an acid [0203] (regarding Step Y2 of claim 1) and the exposure light source wavelength is in a range of 300 nm to 450 nm [0204] (claims 4 and 12); (3) developing the exposed photosensitive resin layer to form a pattern after the exposing step wherein the developer is an alkaline aqueous solution [0206] and the exposed portion can be removed by spraying the developer, which may be organic solvent based (translation, paragraph bridging pp. 40-41) onto the exposed photosensitive resin layer [0207] (regarding Step Y3 of claim 1).
Matsuda et al. further teaches the acid-decomposable group of polymer A is preferably a group having a structure protected in the form of an acetal from the viewpoint of sensitivity and resolution (claim 2) wherein the polymer A having the acid-decomposable group is represented by formula A:
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351
315
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wherein R31 and R32 each independently represent a hydrogen atom, an alkyl group or an aryl group, at least one of R31 and R32 is an alkyl group or an aryl group, and R33 is an alkyl group or represents an aryl group, and R31 and R32 and R33 may combine to form a cyclic ether, R34 represents a hydrogen atom or a methyl group, and X0 represents a single bond or a divalent linking group [0087-0088] or alternatively by formula A2:
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389
474
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wherein R34 represents a hydrogen atom or a methyl group, and R35 to R41 each independently represents a hydrogen atom or an alkyl group having 1 to 4 carbon atoms [0092-0093] or alternatively by formula A3:
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347
538
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wherein RB1 and RB2 each independently represent a hydrogen atom, an alkyl group, or an aryl group, at least one of RB1 and RB2 is an alkyl group or an aryl group, and RB3 is an alkyl group or represents an aryl group, RB1 or RB2 and RB3 may be linked to form a cyclic ether, RB4 represents a hydrogen atom or a methyl group, and XB represents a single bond or a divalent linking group; RB12 represents a substituent, and n represents an integer of 0 to 4 [0097-0098] or alternatively by formula A4:
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332
581
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wherein RB4 represents a hydrogen atom or a methyl group, RB5 to RB11 each independently represents a hydrogen atom or an alkyl group having 1 to 4 carbon atoms, RB12 represents a substituent, and n represents an integer of 0 to 4 [0102-0103] (claims 1, 3, and 11). The photoacid generator of the photosensitive resin composition layer is a compound that generates an acid in response to an actinic ray having a wavelength of 300 nm or more, preferably 300 nm to 450 nm (claims 4, 12, and 19) [0133]. A bonding step is performed wherein the outermost layer on the photosensitive resin layer side of the photosensitive transfer material is brought into contact with a substrate having a conductive layer on the surface for bonding [0198] (claims 5, 13, and 20).
However, Matsuda et al. is silent on the following steps of claim 1: Step Y4: a step of supplying a conductive composition to the opening portion in the resin layer to form a conductive composition layer; Step Y5: a step of removing the resin layer using a stripper; and Step Y6: a step of sintering the conductive composition layer on the substrate by heating.
Masuko et al. teaches a manufacturing method comprising the steps of: (1) forming a paste layer from a non-photosensitive paste composition in which inorganic powder is dispersed on a first support; (2) forming a positive resist film from a positive resist on the paste layer (regarding Step Y1 of claim 1); (3) exposing the resist film to form a latent image of the resist pattern (regarding Step Y2 of claim 1); (4) a step of developing the resist film using a first developer to reveal a resist pattern, and etching the paste layer to form a first pattern corresponding to the resist pattern wherein the developer is an organic solvent-based developer [0206] and (translation, bottom of p. 20) (regarding Step Y3 of claim 1); (5) exposing the resist pattern; (6) forming a second pattern of the conductor layer from a conductive paste composition containing conductive particles in the recesses of the first pattern of the paste layer (regarding Step Y4 of claim 1) (7) peeling the resist pattern using a second developer (regarding Y5 of claim 1); (8) transferring the first pattern and the second pattern to a second support; (9) It includes a step of laminating a shaped article formed through the steps (1) to (8) as necessary and then firing [0011] (regarding Step Y6 of claim 1) wherein the firing step is performed by heating to about 300 to 1500 ° C for 0.5 to 10 hours [0054] (claim 1). The conductive paste composition is formed of conductive particles comprising at least one metal selected from gold, silver, copper, tin, platinum, palladium, ruthenium, iron, nickel, cobalt, germanium, silicon, zinc, titanium, magnesium, aluminum, and the like [0081] (claims 6 and 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have combined the method for producing a resin pattern of Matsuda et al. with the conductive paste composition and associated method steps of Masuko et al. because “different types of inorganic material patterns are finely processed with high dimensional accuracy… the obtained shaped object is easy to stack and transfer…[and]… can be suitably used for manufacturing chip components and passive component-embedded substrates”[X]. See MPEP § 2143, rationales (A). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of 365 nm from the wavelength range of 300 nm to 450 nm as disclosed by Matsuda et al. because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Note that claims 5, 13, and 20-21 do not actively require performing any of steps X1-X7. They are met by choosing Y1-Y6 to meet claim 1.
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered but they are not persuasive.
Applicant’s arguments regarding steps X1-X7 are unconvincing because they are presented in the alternative only. All claims permit the performance of steps Y1-Y6 instead.
Applicant argues that steps Y1-Y6 are not met because the references do not suggest development with an organic solvent-based developer. The argument is unconvincing because Matsuda (translation, paragraph bridging pp. 40-41) and Masuko (translation, bottom of p. 20) both teach organic solvent developers.
Applicant argues that if an organic solvent is used, it is impossible to carry out exposure of the resist pattern. The argument is unconvincing because the exposure can be carried out regardless of the solvent used.
Applicant argues that Masuko does not teach a glass or resin substrate. The argument is unconvincing because primary reference Matsuda does (translation, p. 5, 1st full paragraph).
Applicant’s arguments regarding claim 21 are unconvincing because claim 21 may be met by performing steps Y1-Y6 instead of X1-X7.
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 MICHAEL B CLEVELAND whose telephone number is (571)272-1418. The examiner can normally be reached Monday-Friday; 9:00 am - 5:30 pm.
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/MICHAEL B CLEVELAND/ Supervisory Patent Examiner, Art Unit 1712
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