DETAILED CORRESPONDENCE
This Office action is in response to the application received January 22, 2024.
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, and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over NAGOSHI et al (2014/0154628) in view of MUROTA et al (2003/0194648).
The claimed invention recites the following:
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NAGOSHI et al report a photosensitive resin composition comprising an acid-modified epoxy resin, a photopolymerizable monomer having an ethylenically unsaturated group, a photopolymerization initiator, an epoxy resin and an inorganic filler, see page 2, para. [0028], below:
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Each of the recites components in NAGOSHI et al meet the claimed ingredients in claim 1, lacking only the combination of a photopolymerizable compound having four or more ethylenically unsaturated groups and a photopolymerizable compound having three or less ethylenically unsaturated groups.
MUROTA et al disclose a photosensitive composition wherein the desire is to strengthen the printing durability, which is in essence strengthening the photosensitive layer after exposure and development.
Applicants are directed to page 11, para. [0157] and [0158] wherein the ethylenically unsaturated compounds are listed which include dipentaerythritol penta-acrylate, tetraacrylate triacrylate diacrylate and hexaacrylate, as seen highlighted below:
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The preferred embodiment recites an ethylenically unsaturated group having at least three methacryloyl group and an at most a two functional group-containing (meth)acrylate compound having at most two methacryloyl group. This disclosure directs the skilled artisan to use a combination of ethylenically unsaturated compounds, one having at least three methacryloyl groups and one the at least two methacryloyl group. This teaching meets recited claim 1 for component (B).
Claim 3 is met by the trimethylolpropane triacrylate in para. [0060] of NAGOSHI et al
Claim 4 is met by NAGOSHI et al para. [0087] to [0096].
Claim 5 is met by the thermosetting epoxy resin in para. [0081] to [0086] of NAGOSHI et al.
Claim 6 for the pigment is disclosed in para. [0104] of NAGOSHI et al.
Claims 7 and 8 are disclosed in para. [0132] and [0136] for the printed wiring board.
The method claims of 9 and 10 are disclosed in para. [0165] to [0169] wherein a copper substrate is laminated with the photosensitive composition , exposed, and developed to form a pattern on the substrate as disclosed in NAGOSHI et al .
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to formulate composition comprising any of the listed ethylenically unsaturated compounds such as pentaerythritol hexaacrylate, penta-acrylate, tetraacrylate or triacrylate with a compound having two methacryloyl group such as dipentaerythritol diacrylate as taught in MUROTA et al in a formulation of NAGOSHI et al with the reasonable expectation of improved durability in the composition.
Claim 2 is 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.
None of the prior art references disclose the use of an ethylenically unsaturated monomer having three of fewer ethylenically unsaturated groups with a dicyclopentadiene skeleton.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
ETORI et al (2021/0124267) disclose photosensitive film for permanent mask resists comprising an acid-modified epoxy resin, a photoinitiator, a compound having anywhere from 1 to 6 methacryloyl groups, see [0048].
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 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 telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
July 25, 2026
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