DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 11-20 are pending. Claims 1-10 have been canceled.
The foreign priority application No.2020-216910 filed on December 25, 2020 in Japan has been received and it is acknowledged.
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.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Misumi et al. (WO 2017/140409 A1).
With regard to claim 11, Misumi et al. teach a negative type photosensitive composition comprising:
-a polysiloxane;
- alkali-soluble resins A and A’;
-acrylic monomers A, B, and C; and
-radical generator A (Example 10 in Table 4 in par.0122).
The alkali-soluble resin A comprises repeating units of methacrylic acid (MAA), g-methacryloxypropyl trimethoxysilane (KBM503), g-methacryloxypropyl methyldimethoxysilane (KBM502), 2-hydroxyethyl methacrylate (HEMA), 2-hydroxyethylacrylate (HEA), methyl methacrylate (MMA), butyl acrylate (BA), and styrene (Sty) (seeTable 1 in par.0118).
The alkali-soluble resin A’ comprises repeating units of methacrylic acid (MAA), g-methacryloxypropy ltrimethoxysilane (KBM503), 2-hydroxyethylacrylate (HEA), methyl methacrylate (MMA), and butyl acrylate (BA) (seeTable 1 in par.0118).
Therefore, the alkali-soluble resins A and A’ meet the limitations for an “acrylic polymer (II)” in claim 11.
The acrylic monomers A, B, and C are represented by the formulas:
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236
254
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134
250
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126
224
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80
238
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, and they meet the limitations for “a compound (III) containing two or more acryloyloxy groups, wherein the component (III) is a combination of two or more kinds”.
The acrylic monomers A, B, and C are included in an amount of 21 mass% based on the total mass of polysiloxane and alkali-soluble resins A and A’ (see Example 10 in Table 4 in par.0122). This amount is not within the claimed range.
However, Misumi et al. teach that the (meth)acryloyloxy-containing compound may be in an amount of 3-50 parts by weight based on 100 parts by weight of the polysiloxane and the alkali-soluble resin in consideration of the compatibility with the resin (par.0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to vary the amount of the acrylic monomers A, B, and C within the range of 3-50 parts by weight based on 100 parts of polysiloxane and alkali-soluble resins A and A’ in the composition of Example 10 of Misumi et al.
This range includes the range in claim 11.
The radical generator A is a polymerization initiator (par.0007).
The composition of Example 10 also comprises propylene glycol monomethyl ether acetate (PGMEA) (par.0120), which is the “solvent” in claim 11.
Therefore, the negative type photosensitive composition in claim 11 of the instant application is obvious over the negative type photosensitive of Misumi et al.
With regard to claims 12 and 13, the synthesis of the polysiloxane is in par.0117.The synthesis produces a polysiloxane comprising the repeating units:
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128
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, as evidenced in par.00175 and par.0182 of Yoshida et al. (KR 10-2020-0103772A, with citations from the English equivalent US 2021/0055657).
The first and second repeating units are repeating units of formula (Ia) in claim 12, wherein R1a is a linear unsubstituted C1 aliphatic hydrocarbon or an unsubstituted aromatic hydrocarbon.
The third repeating unit is a repeating unit of formula (Ic) in claim 13.
With regard to claim 14, the polysiloxane represents 30 mass% based on the total mass of polysiloxane and alkali-soluble resins A and A’ (see Example 10 in Table 4 in par.0122). This amount is within the claimed range.
With regard to claim 15, the acrylic monomers B, and C are ester compounds obtained by reacting a polyol with two hydroxyl groups with two acrylic acid molecules.
The acrylic monomer A is an ester compound obtained by reacting a polyol with three hydroxyl groups with three acrylic acid molecules.
With regard to claim 16, the acrylic monomers A, B, and C meet the limitation for “the component (III) is a combination of three kinds”.
With regard to claims 17, 18, and 20, Misumi et al. teach a process comprising the steps of:
-coating the composition to a silicon wafer and prebaking to form a film;
-exposing the resist film;
-developing the exposed resist film; and
-baking the developed film to obtain a cured film (par.0121).
Misumi et al. further teach devices comprising the cured film (par.0001).
With regard to claim 19, the components of the negative type photosensitive in Example 10 of Misumi et al. are similar to the components (I)-(V) in the par. 0020, par.0035-0039, par.0043-0046, par.0054-0055 of the specification of the instant application.
The process of obtaining a cured film of Misumi et al. has the steps taught in par.0070-0073, par.0076-0077 of the specification of the instant application.
The specification of the instant application teaches that the cured film has a taper angle of 15 to 80o (par.0078).
Absent a record to the contrary, it would be expected that the cured film in Example 10 of Misumi et al. has a taper angle of 15 to 80o.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112. I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY).
Response to Arguments
Applicant's arguments filed on May 11, 2026 have been fully considered but they are not persuasive.
The examiner would like to note that:
-the objection to claim 15 is withdrawn after the applicant’s amendment to the claim; and
- the rejection of claims 11-20 under 35 U.S.C. 102(a)(1) as being anticipated by Misumi et al. (WO 2017/140409 A1) is withdrawn after the applicant’s amendment to claim 11.
However, new grounds of rejection for claims 11-20 are shown in paragraphs 4-5 above.
On page 4 of the Remarks the applicant argues that the examples of Misumi et al. (WO 2017/140409 A1) do not show the component (III) in an amount of 10-18 mass% based on the total mass of the components (I) and (II).
The examiner disagrees, and would like to point out that Misumi et al. teach that the (meth)acryloyloxy-containing compound is preferable in an amount of 3-50 parts by weight based on 100 parts by weight of the polysiloxane and the alkali-soluble resin in consideration of the compatibility with the resin (par.0032).
Therefore, one of ordinary skill would have been motivated to change the amount of acrylic monomers A, B, and C in Example 10 of Misumi et al. within the range of 3-50 parts by weight based on 100 parts of polysiloxane and alkali-soluble resins.
The range of 3-50 parts by weight based on 100 parts of polysiloxane and alkali-soluble resins includes the claimed range of 10-18 parts by weight.
The examiner would also like to note that the Examples and the Comparative Examples in Table 1 of the specification do not prove the criticality of the claimed range. The Comparative Examples 4-6 use compounds having 2 (meth)acryloyloxy groups in an amount of 18 parts by weight based on the polysiloxane and the acrylic polymer, and have unsatisfactory results when compared to the Examples 1 and 4, which also use compounds having 2 (meth)acryloyloxy groups in an amount of 18 parts by weight based on the polysiloxane and the acrylic polymer.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). (MPEP 716.02 (d) II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE)
Conclusion
Applicant's amendment necessitated the new grounds 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.
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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