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.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Iwayama et al. (JP2015135522) in view of Hirano et al. (U.S. 2018/0299774). Translation attached.
Iwayama et al. teaches a positive photosensitive resin composition of the present invention contains an epoxy resin, a phenol resin, a cationic photopolymerization initiator, and a heterocyclic compound. The heterocyclic compound is preferably a nitrogen-containing heterocyclic compound, and more preferably an imidazole-based compound [0009-0010] (claim 1) and in the case of containing the heterocyclic compound, any known epoxy resin can be used, such as EOCN-1020 [0022] which is equivalent to an epoxy compound containing on average at least 4 epoxy groups per molecule of instant claim 1. Iwayama et al. also teaches as the phenol resin, a known phenol resin can be used. Examples thereof include a phenol novolac resin, a cresol novolac resin, a bisphenol A type novolac resin, a bisphenol F type novolac resin, and a naphthol novolac resin. Among these, a phenol novolac resin and a cresol novolac resin are preferable, and a phenol novolac resin is particularly preferable. These phenol resins may be used alone or in combination of two or more thereof [0023] which is equivalent to the alkali-soluble resin having a phenolic hydroxy group of instant claim 1. Iwayama et al. further teaches examples of the photocationic polymerization initiator include diphenyliodonium tetrafluoroborate, triphenylsulfonium hexafluoroantimonate, 2,4,6-triphenylthiopyrylium hexafluoro phosphate [0025] which is equivalent to the photoacid generator of instant claim 1. Iwayama et al. also teaches a tack-free coating film can be formed by adjusting the viscosity of the positive photosensitive resin composition of the present invention to a viscosity suitable for a coating method with, for example, the organic solvent, coating the composition on a substrate by a method such as a dip coating method, a flow coating method, a roll coating method, a bar coater method, a screen printing method, or a curtain coating method, and volatilizing and drying (temporarily drying) the organic solvent contained in the composition at a temperature of about 60 to 100 °C. Thereafter, the coating film is selectively exposed to an active energy ray through a photomask having a pattern formed thereon by a contact method (or a non-contact method), or directly pattern-exposed by a laser direct exposure machine, and the exposed portion is developed with an aqueous alkaline solution (for example, a 0.3 to 3% aqueous sodium carbonate solution) or an organic solvent to form a resin insulating layer pattern [0032] and after the exposure, the carrier film was peeled off, followed by heating at 90 °C for 15 minutes [0044] as seen in the examples. Iwayama et al. further teaches the positive photosensitive resin composition of the present invention can be used in the form of a dry film having a positive photosensitive resin composition layer formed by applying and drying the photosensitive resin composition on a film such as polyethylene terephthalate (thermoplastic film) in advance [0037] (claims 3-5). It should be noted that it is known to one of ordinary skill in the art that a composition can form a positive or negative resist film based on the type of developer used. Since Iwayama et al. teaches both an alkaline solution or an organic solvent the resist of Iwayama et al. can form either a positive or negative resist film. Iwayama et al. also teaches in the positive photosensitive resin composition of the present invention, a binder polymer may be used for the purpose of improving the set-to-touch property and the handling property. Examples of the binder polymer that can be used include a polyester-based polymer [0029].
Iwayama et al. does not explicitly teach a plasticizer containing a polyester, specifically a polyfunctional carboxylic acid polyester having 2 to 6 carboxy groups.
However, Hirano et al. teaches a laminate comprising a thermoplastic film and a positive resist film is provided, the positive resist film comprising (A) a novolak resin-naphthoquinone diazide (NQD) base resin composition, (B) a polyester, and (C) 3-30 wt % of an organic solvent [abstract] wherein the polyester as component (B) is the condensate of a polyfunctional carboxylic acid with a polyhydric alcohol or the condensate of a polyfunctional caxboxylic anhydride with a polyhydric alcohol. The polyfunctional carboxylic acids are preferably those having 2 to 6 carboxyl groups [0057-0058] for example Polycizer W-230-H [0095] used in the examples which is equivalent to a plasticizer containing a polyester, specifically a polyfunctional carboxylic acid polyester having 2 to 6 carboxy groups of instant claims 1 and 2. Hirano et al. also teaches an object of the invention is to provide a positive resist film laminate which ensures that a positive resist film is transferred to a stepped support without forming voids [0007]. It also should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, a polyester resin such as Polycizer W-230-H is known in resist compositions.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the specific teachings of Iwayama et al. to include a specific polyester resin such as those taught by Hirano et al. and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention in order to avoid forming voids.
Claim 1 recites “negative resist film” which has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2018/0239255 and U.S. 2018/0143535.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
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/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737