DETAILED CORRESPONDENCE
This Office action is in response to the amendment received June 30, 2026.
Any bold text is new language in the office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over OKADE et al (10,104,781) in view of GOTO et al (2018/0364566), ITO et al (2015/0219993), HATA et al (2009/0233230) and KUBOTA et al (2013/0334461) and KUBOTA (2015/0227042).
The claimed invention recites the following:
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OKADE et al report a photosensitive resin composition for circuit board comprising a hydroxymethyl methacrylate/styrene copolymer wherein the content of the styrene is reported to be in an amount of 45 % and 50% by mass, a photopolymerization initiator, and a sensitizer that include an anthracene-based structure, see Example 1 for the binder polymer in column 22, lines 34-39, the photopolymerizable compound reported in column 23, lines 59-67, and a sensitizing dye including anthracene compounds in column 14, lines 5-8, see below:
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GOTO et al report sensitizers for photopolymerizable composition used in circuits, para. [0230] and. The composition contains a dibutoxyanthracene and thioxanthone based sensitizers, see para. [0145] below:
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HATA et al report films comprising photopolymerizable monomers for wiring boards, wherein the photopolymerization monomer includes 2,2 bis-{(4-methacryloxypolyethoxy) cyclohexyl} propane, see the structure on page 4 and para. [0055]. The composition has improved adhesion, sensitivity and resolution, see page 11, para. [0132] to [0153].
With respect to claim 11, HATA further discloses the use of polymerization inhibitors such as t-butylcatechol as reported in para. [0085], in an amount meeting new claims 11-13 see below:
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With respect to claim 12, KUBOTA et al report functionally equivalent sensitizers for photopolymerization composition in para. [0221] to include diphenyl anthracene thioxanthone, phenothiazines, and chlorothioxanthone which are also reported in GOTO et al para [0145] above, see para. [0221] below:
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With respect to new claim 13, OKADA et al report the following photopolymerizable compound in column 12, lines 10-44 such as trimethylolpropane tri(meth)acrylate, see below:
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KUBOTA et al is cited to disclose the use of equivalent unsaturated compounds, see para [0077] and [0078] wherein either vinyl compound FA-023M and FA-024M can be used, see below. FA-024M is the commercial name for the newly amended compound in claim 1.
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Claim 2-4 are met by OKUDE et al above in column 23, lines 59-67.
Claim 5, report in column 10, lines 7-21 of OKADA et al structures having a value of 2 to 20 for m1, n2 and m2, and n2 in Chemical Formula (4a), meeting the oxyethylene group being less than 10 and 10 or more. Also see HATA et al page 3, para. [0023] in Formula (III).
Claim 6 is met by the disclosed Mw in column 8, lines 27-40 wherein the most preferred range is 23,000 to 60,000, 25,000 or more.
Claim 7 is met by column 14, lines 9-20 in OKADE et al.
Claim 8 is reported in Example 1 of OKADE et al.
The method of claims 9 and 10 are met by the method in column 25 to column 26 for the manufacture of photosensitive elements and the evaluation of sensitivity and developability.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to duplicate Example 1 of OKADA et al adding a sensitive such as an anthracene base compound such as any of the sensitizing dyes like dibutoxyanthracene, as reported in GOTO et al with known photopolymerizable monomers as reported in OKADE et al and HATA et al with the reasonable expectation of same or similar results for high adhesion, sensitivity and resolution.
And it would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to use photopolymerization inhibitors such as t-butylcatechol, sensitizers such as 9,10-diphenylanthracene and photopolymerizable compounds like trimethylolpropane triacrylate with the reasonable expectation of same or similar results for high adhesion, sensitivity and resolution.
And it would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to use any of the equivalent polymerizable compounds such substituting FA-024M in for FA-023M in the composition of OKADA et al and reasonably expect same or similar results for high adhesion, sensitivity and resolution.
The rejection is repeated wherein the evidence provided from the declaration under Rule 132 is not of proper scope, weight and character to over the obviousness rejection. Initially, the scope of the claim continues to recite the polymerizable compound comprising the (PO)(EO)(PO)-modified dimethacrylate which is met by either of FA-024M and/or FA-023M, as the structure seen above in KUBOTA. Secondly, the evidence provided is a statistical analysis and not the actual testing of the closest prior art composition to the claimed invention. The submitted application discloses the desire to improve the adhesiveness and resolution of photosensitive resin composition; however, no evidence has been submitted showing an unexpected improvement of adhesiveness or resolution over the closest prior art compositions. Because the statical analysis submitted fails to demonstrate actual improvement in adhesiveness and resolution of the claimed composition over the prior art, the rejection is repeated, and the action is made final.
THIS ACTION IS MADE FINAL. Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for replying 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 JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737 J. Chu
August 27, 2026
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