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 .
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, 4-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Takahiro et al. (WO2018159665)
Regarding claims 1, Takahiro teaches forming a composition for the removal of foreign matter (see technical field section) comprising a solvent (see solvent section) and a polymer reading upon the claimed polymer (phenol novolac) as a dissolution rate accelerant and phenol novolac is also used as a “compound having at least two epoxy groups” that may be added additionally. It is noted that that amount of phenol novolac for the dissolution rate acceleration is at 20% by mass of the total solid content wherein phenol novolac as the “compound having at least two epoxy groups” is added at a ratio of 7/10 compared to the polyamide acid of Takahiro. Combined these amounts approximately read upon the claimed range but only slightly touch the range claimed. However, those of ordinary skill in the art would readily recognize that the amount of Phenol novolac added as a dissolution rate accelerant would directly affect the rate of dissolution using a developer. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phenol novolac present in order to control the dissolution rate of the coating when using the developer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claims 4-5, any component listed in in the disclosure of Takahiro may be considered an additive.
Regarding claims 6, Takahiro teaches forming a composition for the removal of foreign matter (see technical field section) comprising a solvent (see solvent section) and a polymer reading upon the claimed polymer (phenol novolac) as a dissolution rate accelerant and phenol novolac is also used as a “compound having at least two epoxy groups” that may be added additionally. It is noted that that amount of phenol novolac for the dissolution rate acceleration is at 20% by mass of the total solid content wherein phenol novolac as the “compound having at least two epoxy groups” is added at a ratio of 7/10 compared to the polyamide acid of Takahiro. Combined these amounts approximately read upon the claimed range but only slightly touch the range claimed. However, those of ordinary skill in the art would readily recognize that the amount of Phenol novolac added as a dissolution rate accelerant would directly affect the rate of dissolution using a developer. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phenol novolac present in order to control the dissolution rate of the coating when using the developer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further Takahiro teaches baking the film to form an baked film (see paragraphs immediately before the “foreign matter removal method” section).
Regarding claims 7, Takahiro teaches forming a composition for the removal of foreign matter (see technical field section) comprising a solvent (see solvent section) and a polymer reading upon the claimed polymer (phenol novolac) as a dissolution rate accelerant and phenol novolac is also used as a “compound having at least two epoxy groups” that may be added additionally. It is noted that that amount of phenol novolac for the dissolution rate acceleration is at 20% by mass of the total solid content wherein phenol novolac as the “compound having at least two epoxy groups” is added at a ratio of 7/10 compared to the polyamide acid of Takahiro. Combined these amounts approximately read upon the claimed range but only slightly touch the range claimed. However, those of ordinary skill in the art would readily recognize that the amount of Phenol novolac added as a dissolution rate accelerant would directly affect the rate of dissolution using a developer. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phenol novolac present in order to control the dissolution rate of the coating when using the developer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further Takahiro teaches baking the film to form an baked film (see paragraphs immediately before the “foreign matter removal method” section) and removing the baked film with a developer (abstract).
Regarding claims 8-9, Takahiro further teaches peeling the film (see paragraphs immediately before the “foreign matter removal method” section).
Regarding claims 10-11, Takahiro teaches additionally attaching a second substrate to the first via the adhesive layer for the purpose of removing the film comprising the foreign matter wherein a developer is employed (see claim section).
Regarding claims 12 and 15, Takahiro teaches forming a composition for the removal of foreign matter (see technical field section) comprising a solvent (see solvent section) and a polymer reading upon the claimed polymer (phenol novolac) as a dissolution rate accelerant and phenol novolac is also used as a “compound having at least two epoxy groups” that may be added additionally. It is noted that that amount of phenol novolac for the dissolution rate acceleration is at 20% by mass of the total solid content wherein phenol novolac as the “compound having at least two epoxy groups” is added at a ratio of 7/10 compared to the polyamide acid of Takahiro. Combined these amounts approximately read upon the claimed range but only slightly touch the range claimed. However, those of ordinary skill in the art would readily recognize that the amount of Phenol novolac added as a dissolution rate accelerant would directly affect the rate of dissolution using a developer. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of phenol novolac present in order to control the dissolution rate of the coating when using the developer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further Takahiro teaches baking the film to form an baked film (see paragraphs immediately before the “foreign matter removal method” section) and removing the baked film with a developer (abstract).
Regarding claim 13, any component listed in in the disclosure of Takahiro may be considered an additive.
Response to Arguments
The applicant argues primarily that the newly provided claim limitations provided such that the polymer “consists of a polymer selected from…” limits the use of other polymers in the claim composition. However, this is incorrect. By writing the claim as currently provided, the applicant has effectively defined “the polymer” as consisting of a limited group. However, “the composition … comprises a polymer and a solvent” whereby accordingly the composition itself may further comprise additional components that are not ‘a polymer’ or ‘a solvent’ including but not limited to other polymers. In no way does the language provided by the applicant limit the use of other polymers in the composition.
Secondarily the applicant argued that there is no motivation within Takahiro to modify the amounts of components outside the range stated within Takahiro. The examiner generally agrees that Takahiro does not explicitly provide motivation to modify outside the range stated. However, it is not required that Takahiro provide the motivation to modify his own art. It is permissible that the examiner provide motivation based on the knowledge of those of ordinary skill in the art wherein said motivation is supported by scientific logic and reasoning. In this case, the examiner reasonably provided motivation to modify the composition based up logical scientific reasoning and knowledge available to those of ordinary skill in art. Further the applicant did not refute the assertions of the examiner. Even further MPEP 2144.05 states “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In re Wells, 56 F.2d 674, 675 (CCPA 1932) (“Changes in proportions of agents used in combinations . . . in order to be patentable, must be critical as compared with the proportions of the prior processes.”). Therefore reasonably for the applicant to patent their composition in view of Takahiro based upon the concept that a particular range of components being varied, it is the burden of the applicant to show that the range of components provided is critical, such that a new and unexpected result arises from the use of the claimed range. The applicant has not shown the criticality of the claimed range versus the prior art range herein.
Conclusion
THIS ACTION IS MADE FINAL. 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 J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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