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
In response to the Remarks received on 09/02/2025, the examiner has carefully considered the remarks/amendments.
Response to Arguments
Applicant’s arguments, see Response/Remarks, filed 09/02/2025, with respect to claims 23 have been fully considered and are persuasive. The rejection of 1-6, 11-14, 17-18, 22 and 24 under 35 U.S.C. 103 as being unpatentable over Tabata et al (JP 2005317523) has been withdrawn. Applicant’s arguments are persuasive. The overall teachings of Tabata would not lead a skilled artisan to arrive at the presently claimed invention. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Takashima et al (WO2021/200258, effective filing date 3/31/2020).
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.
Claim(s) 1-4, 12-14, 17-18, 22 and 24-25 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Li et al (CN102181019, machine translated).
Li sets forth UV-curable silver ion migration resistant plasma display circuit protectants and methods for preparing such—see [0009]. Said compositions comprise a (meth)acrylic acid modified prepolymer (30-80 wt.%); photoreactive monomers (10-60 wt.%); a photoinitiator (2-8 wt.%); processing aids (0.1-5 wt.%); and a silver ion absorbent (0.05-1 wt.%)—see [0011].
Said silver ion absorbent is an anionic hydrotalcite-type inorganic compound, which is deemed to correspond to applicant’s ion scavenger—see [0013]. The hydrotalcite compounds have the structure [M1-x2+Mx3+(OH)2]x+(An-)x/n·mH2O; wherein M2+ is selected from Mg2+，Mn2+，Fe2+，Ni2+，Cu2+，Co2+，Zn2+，and Ca2; M3+ is selected from Al3+，Cr3+，Fe3+，Mn3+ and Co3; and An- is selected from CO32-，NO3-，Cl-，OH-，SO42-，PO43- and C6H4(COO)22—see [0014]. The silver ion absorbent if found in amounts from 0.05 to 1 wt. %--see [0025] and [0037]. The (meth) acrylic acid modified prepolymer is one of or a mixture of an epoxy (meth) acrylate or polyurethane (meth) acrylate and used in amounts from 30-80 wt. %—see [0015] and [0027]. The photoreactive monomers are set forth in sections [0018] to [0019] and include mono-functional and polyfunctional (meth) acrylate monomers which are found in amounts from 10-60 wt. % in the composition—see [0018], [0019]; [0025] and [0037]. The photoinitiators are found in section [0020] and are found in the composition in amounts from 0.1 to 5 wt. % in the composition—see [0020]; [0026]; and [0038].
Regarding claims 1-2: Li explicitly sets forth a photocurable silver ion absorbent composition comprising 20 wt. % of an epoxy acrylate, 40 wt. % of a polyurethane acrylate, 20 wt. of isobornyl methacrylate, 12.5 wt. % of trimethylolpropane triacrylate; 2 wt. % of α,α'-Di-Tetra-methylbenzoyl ketal (a photoinitiator), 2 wt. % of isopropylthiocarbamate (photoinitiator), 1 wt. % ethyl 4-dimethylaminobenzoate (photosensitizer), 0.5 wt. % of tego Rad 2100 (defoamer), 0.3 wt. % of defoamer 1400 from Dow Chemical, 0.2 wt. % Tego Wet KL 435 (wetting agent), 1 wt. % (methacryloyloxy)propyltrimethoxysilane (adhesion promoter) and 0.5 wt. % of silver absorbent-- [Mg6Al0.33(OH)0.33(CO)0.33H20—see example 1. This composition is deemed to anticipate claimed composition (Z) comprising 1.5 wt.% of and ion absorbent (silver absorbent-- [Mg6Al0.33(OH)0.33(CO)0.33H20)} based upon 100 wt. % of (X) and composition (X) containing 61.5 wt. % of mono-functional acrylic monomers (A) and 38.4 wt. % of polyfunctional monomers (B) based on 100 wt. % of (A) and (B)—isobornyl methacrylate and trimethylolpropane triacrylate—claims 1 and 2 are anticipated.
Regarding claims 3-4: the silver ion absorbent Mg6Al0.33(OH)0.33(CO)0.33H20)} are inorganic particles that comprise Mg (magnesium) and Al (aluminum).
Regarding claims 12-14: The isobornyl acrylate, as found in the example, is a monofunctional acrylic monomer having a fused ring/bicyclic hydrocarbon group (claim 12), wherein R1 is methyl group and R2 is a fused-ring (bicyclic) hydrocarbon group and nA is 0 (claim 13), and wherein R2 is the formula (4) as found in claim 14.
Regarding claim 18: The composition (Z) in example 1 comprises said photoinitiator in an amount of 10.9 (~11) wt. % based upon 100 wt. % of composition (X), wherein composition (X) comprises (A) and (B).
Regarding claims 20 and 25: the composition as found in example 1 is mixed at room temperature according to the steps found in sections [0037]- [0039] to obtain a UV curable silver ion migration composition which is then applied to a silver electrode with a spacing of 70 mm and a thickness of 1 mm and cured by exposure to ultraviolet radiation to obtain a coated electrode—see [0044].
Claim Rejections - 35 USC § 103
he 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) 1-6, 12-14, 17-18, and 20-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al (WO2021/200258, effective filing date 3/31/2020—machine translated) in view of Kato et al (JP2011032405).
Takashima sets forth curable compositions and cured products thereof and printed wiring boards using the same. Said compositions have excellent flexibility and resolution, as well as, excellent adhesion to copper—see abstract/overview. Said compositions comprise (A) an ion trapping component selected from the group consisting of zirconium (Zr); aluminum (Al); zinc (Zn); magnesium (Mg); calcium (Ca); antimony (Sb); and bismuth (Bi); (B) a photosensitive monomer; and (C) a photopolymerization initiator—see [0008]; [0017]. Additionally, said composition comprises a thermosetting resin (D)--[0009] and [0017]. Said composition has a viscosity at 50 deg. C of 50 mPa*s or less—see [0012] and [0056].
The content of the ion scavenger (ion trapping component) is from 0.01 parts by mass or more to 10 parts by mass or less, wherein said ion scavenger is an inorganic cationic, anionic or amphoteric ion scavenger—see [0010]; [0018]; and [0026]. Said photosensitive monomer contains a monofunctional (meth) acrylate and a polyfunctional (meth) acrylate—see [0011] and [0027]. The photopolymerization initiator is found in amounts from 0.2 parts by mass or more to 25 parts by mass or less—see [0036]. Said photoinitiator is useable in combination with a photoinitiator assistant—see [0036]. The thermosetting resin (D) is found in amounts from 1 part by mass or more to 30 parts by mass or less to provide and improve heat resistance in the cured composition—see [0038] and [0047].
Takashima sets forth a photosensitive composition in example 4 comprising 0.1 parts by mass of the ion trapping agent (ion scavenger) IXEPLAS-A1 (Zr-Mg-Al system); 20 parts by mass of isobornyl acrylate (acrylic monofunctional monomer); 10 parts by mass of 4-hydroxybutyl acrylate (monofunctional monomer, OH value of 389 KOH/g); 10 parts by mass of trimethylolpropane triacrylate (multi-functional acrylate monomer); 15 parts by mass of 1,9-nonanediol diacrylate (multi-functional acrylate monomer); 24 parts by mass of dipropylene glycol diacrylate (multi-functional acrylate monomer); 5 parts by mass of photoinitiator (Omnirad 379); 10 parts by mass of trifunctional blocked polyisocyanate (thermal crosslinker); 0.1 parts by mass surfactant-BYK 315N; 0.2 parts by mass of a blue pigment (blue 15:3); and 0.3 parts by mass of a yellow pigment (yellow 147)—see example 4.
Regarding claim 1: The composition, in example 4, corresponds to applicant’s claimed (Z) photocurable composition. Said ion-trapping agent, in example 4, corresponds to applicant’s claimed (Y) component. The isobornyl acrylate and 4-hydroxybutyl acrylate both correspond to applicant’s claimed (A) component. The trimethylolpropane triacrylate; 1,9-nonanediol diacrylate; and dipropylene glycol diacrylate correspond to applicant’s claimed (B) component. The primary difference is the composition of example 4 comprises 38 wt. % of compounds corresponding to applicant’s claimed (A) component and 62 wt. % of compounds corresponding to applicant’s claimed (B) component. However, it is known in the art of photocurable compositions concerned with ion migration in electronic devices that the addition amount of alkyl and cycloalkyl monofunctional (meth) acrylate compounds effects the insulation reliability in the cured composition, as well as, it is known the addition amount of polyfunctional (meth) acrylate compounds effects the tackiness and flexibility in the cured composition, as taught by Kato. Kato sets forth photocurable compositions for covering/insulating electrodes that are excellent in electric insulation and ion migration—see abstract to examples. Kato expressly teaches an addition amount of 30 to 90 wt. % of a mono-functional (meth) acrylate monomer having an alkyl group of 8 or more carbon atoms or a cycloalkyl group having 8 or more carbon atoms enhances the insulation properties of the photocurable composition—see [0039]- [0040]. Kato, additionally, teaches an addition amount from 1 to 30 parts by weight of a compound having two or more (meth) acrylate groups (polyfunctional (meth) acrylate) reduces the tackiness/adhesive properties of the cured composition—see [0058] - [0061]. Kato and Takashima are analogous art because they are concerned with the same problem, that is the ion migration of photocurable composition for use in electronic devices. The courts have upheld, Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."--In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would have been within the skill level of an ordinary artisan to tailor the amount of (mono) functional (meth) acrylate monomers and polyfunctional (meth) acrylate monomer, as suggested by Takashima, with a reasonable expectation of successfully tailoring/balancing the insulation properties and adhesive properties of the photocurable composition, as suggested Kato, in absence of evidence to the contrary and/or unexpected results.
Regarding claim 2-6: The content of the ion scavenger (ion trapping component) is from 0.01 parts by mass or more to 10 parts by mass or less, wherein said io scavenger is an inorganic cationic, anionic or amphoteric ion scavenger— (claim 2), see [0010]; [0018]; and [0026]. The content of the ion-trapping component in example 4 is 0.1 part by mass which is encompassed in claimed addition amount for (Y)—claim 2. Takashima sets forth the ion-trapping agents (ion scavenger) are inorganic cationic, anionic or amphoteric ion scavenger—see [0010]; [0018]; and [0026]—claim 4. Takashima expressly sets forth inorganic ion trapping agents are selected from the group consisting of zirconium (Zr); aluminum (Al); zinc (Zn); magnesium (Mg); calcium (Ca); antimony (Sb); and bismuth (Bi); (B) a photosensitive monomer—claim 5, see [0017] – [0026]. The ion-trapping agent in example 4 is IXEPLAS-A1 which is a Zr-Mg-Al system—claim 6, see example 4.
Regarding claim 12-14: The isobornyl acrylate, as found in example 4, is a monofunctional acylate having a bicyclic (polycyclic) fused hydrocarbon ring represented by the following structure:
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203
385
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. Claim 13 is met when nA is 0, R1 is H; and R2 is a polycyclic fused ring having at least 8 carbon atoms. The isobornyl acrylate corresponds to formula (4) in claim 14.
Regarding claim 17: The photopolymerization initiator is found in amounts from 0.2 parts by mass or more to 25 parts by mass or less—see [0036]. The photoinitiator, in example 4, is found in an amount of ~6 (5.9) wt. % per 100 parts by mass of composition (X) which comprises (A) and (B).
Regarding claim 18: Takashima does not expressly set forth the viscosity at 25 deg. C is between 1 and 100 mPa*s. Takashima sets forth said viscosity at 50 deg. C of 50 mPa*s or less. It is known that viscosity and temperature have an inverse relationship, i.e., as the temperature decreases the viscosity increase and vis/versa. Therefore, in absence of evidence to the contrary it is deemed the viscosity of the compositions set forth by Takashima should inherently have a viscosity of at least 50 mPa*s or more at 25 deg. C.
Regarding claim 20-21: Takashima sets forth the photocurable compositions can be applied to the substrate by inkjet printing methods and cured by exposure to active energy radiation, such as ultraviolet, electron beam and actinic rays: thus, an inkjet ink composition—see [0059].
Regarding claims 22-23: The jetted compositions and cured by exposure to radiation as set forth by Takashima, such as found in the examples are deemed to read on the product of claim 22. Takashima sets forth once the jetting compositions are exposure to radiation to cure, the exposed cured compositions are subsequently heated to obtain the final cured product—see [0065].
Regarding claims 24-25: Takashima sets forth the cured composition are useful as for forming pattern layers as permanent coatings for printed wiring boards, such as solder resist, coverlay, and interlayer insulating layer, and is particularly useful for forming solder resist. Furthermore, the curable composition of the present invention can form a cured product having excellent film strength even in a thin film, and therefore can be suitably used for forming a pattern layer in a printed wiring board that is required to be thin, such as a package substrate (a printed wiring board used for a semiconductor package). And additionally, the cured product obtained from the curable composition of the present invention has excellent flexibility and can therefore be suitably used for flexible printed wiring boards—see [0057] – [0058]. All electronic components.
Allowable Subject Matter
Claims 7-11, 15-16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
JP2011-032405 to Tanaka sets forth using a polyol having a hydroxyl value between 28 and 225 mgKOH/g to obtain a polyurethane acrylate oligomer for use in the ion migration composition but fails to suggest and/or explicitly teach the overall composition (X) has a hydroxyl value of 1 to 100 mgKOH/g or 5 to 40 mgKOH/g. Nor does Tanka suggest the polyurethane (meth) acrylate oligomer has a hydroxyl value between 150 to 200 mgKOH/g. The polyurethane (meth) acrylates used in the composition have molecular weights outside of applicant’s claimed 100 to 5000.
The above cited documents in the rejection, alone or in combination, set forth or render obvious a multifunctional acrylic monomer represented by formula (6) as found in claims 15-16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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