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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 requires an epoxy monomer (B2), contains a compound represented by the formula (B-5) (oxetanyl compound). Since the compound of formula (B-5) is not typically considered an epoxy compound, it is unclear if the claims are intended to require both an epoxy compound and an oxetanyl compound, or just the oxetanyl compound of formula (B-5). For purpose of examination, the Examiner is interpreting the claim to only require at least the compound of formula (B-5).
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.
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.
Claim(s) 1-7, 9, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Irisawa et al. (US Serial No. 2020/0012190), in view of Mizutani et al (US Serial No. 2016/0240816).
Regarding claims 1-3; Irisawa et al. teaches a composition comprising an alkali soluble resin (A-3, instant A), which is a copolymer resin obtained by copolymerizing methyl methacrylate, n-butyl acrylate (instant Formula A-4, wherein R3 is an alkyl group having 4 carbon atoms), and methacrylic acid in a weight ratio of 64/15/21 (weight average molecular weight of 20,000), pentaerythritol triacrylate (monomer C2-2; instant B1), 2-(2’-chlorophenyl)-4,5-diphenyl imidazole dimer (B-1, photoinitiator; instant D), and methyl ethyl ketone/ isopropyl alcohol solvent (instant E) [Table 1, Ex 11]. Irisawa et al. teaches the composition further comprises an antioxidant [0069] and a surfactant [0037].
Irisawa et al. teaches it obvious to employ monofunctional epoxy compounds, such as glycidyl (meth)acrylate, however fails to teach the oxetanyl acrylate as required by the instant claim. Mizutani et al. teaches a photosensitive resist composition comprising an alkali-soluble resin [0407-0408], and monomers such as glycidyl methacrylate and (3-ethyloxetan-3-yl)methyl acrylate [0386]. Therefore, Mizutani et al. teaches that glycidyl methacrylate and (3-ethyloxetan-3-yl)methyl acrylate are functional equivalents for the purpose of functioning as monomers in photosensitive resist compositions for use in semiconductors. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Regarding claims 4-5; Although Irisawa et al. teaches pentaerythritol triacrylate [Table 1, Ex 11] in the preferred embodiment, the prior art teaches trimethylolpropane triacrylate [Table 1, Ex 3] also a preferred monomer (instant Formula B-1, wherein Z1 is a alkylene group having 1 carbon atom, Y1 is CR4, wherein R4 is an alkyl group having 2 carbon atoms, and p is 3; and instant Formula B-3, wherein R4 is an alkyl group having 2 carbon atoms, subscripts q1-q3 are 0).
Regarding claim 7; Irisawa et al. teaches the antioxidant may be employed in an amount of 0.01 to 20 mass% of the resin composition [0069].
Regarding claim 9; although Irisawa et al. teaches employing 2-(2’-chlorophenyl)-4,5-diphenyl imidazole dimer (B-1, photoinitiator; instant D) in the preferred embodiment [Table 1, Ex 11], other photoinitiators are contemplated, for example, acylphosphine oxides such as 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide and bis(2,4,6-trimethylbenzoyl)-phenyl phosphine oxide [0051].
Regarding claim 12; Irisawa et al. teaches the composition comprises 40 to 80 mass% of the alkali-soluble resin (instant A) [0056], 0.5 to 1.5 mass% of the photoinitiator (instant D) [0057], 20 to 60 mass% of the ethylenically unsaturated monomer (instant B) [0058], and about 50 mass% of the solvent (instant E) [Table 1, Exs]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Regarding claims 13-14; Irisawa et al. teaches the photosensitive resin layer was applied to a PET film at a thickness of 15 microns [0076] and cured [0108].
Regarding claims 15-16; Irisawa et al. does not explicitly teach the cured product having a transmittance at a wavelength of 400 nm to 1100 nm being greater than or equal to 95%, nor the photosensitive properties as required by claim 16. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. transmittance and photosensitive properties, would necessarily be a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Irisawa et al. (US Serial No. 2020/0012190), in view of Mizutani et al (US Serial No. 2016/0240816),as applied to claim 1 and 7 above, and further in view of Ohashi et al. (JP 5050693), wherein the machine English translation is used for citation.
Irisawa et al. and Mizutani et al. render obvious the basic claimed photosensitive resin composition, as set forth above, with respect to claims 1 and 7.
Regarding claim 8; Irisawa et al. teaches the composition may further comprise an antioxidant, however fails to teach the antioxidant of instant Formula C-1. Ohashi et al. teaches a photosensitive resin composition comprising an antioxidant, such as IRGANOX® 1010 (hindered phenol type antioxidant) [0137]. Irisawa et al. and Ohashi et al. are analogous art because they are both concerned with the same field of endeavor, namely photosensitive resin compositions suitable for use in manufacturing printed circuit boards. At the time of filing, a person of ordinary skill in the art would have found it obvious to add IRGANOX® 1010, as taught by Ohashi et al., to the composition of Irisawa et al., and would have been motivated to do so since Ohashi et al. teaches IRGANOX® 1010 is suitable for use in photosensitive resin compositions for achieving increased stability (i.e. protects against thermos-oxidative degradation).
Regarding claim 10; Irisawa et al. teaches a solvent to be employed in the present invention is methyl ethyl ketone [Table 1, Ex11], however fails to teach propylene glycol monomethyl ether. Ohashi et al. teaches solvents for use in the photosensitive resin composition include, for example methyl ethyl ketone and propylene glycol monomethyl ether [0115]. Therefore, Ohashi et al. teaches that methyl ethyl ketone and propylene glycol monomethyl ether are functional equivalents for the purpose of functioning as a suitable solvent for photosensitive resin compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Irisawa et al. (US Serial No. 2020/0012190) in view of Mizutani et al (US Serial No. 2016/0240816), as applied to claim 1 above, and further in view of Youn et al. (KR 20110038252), wherein the machine English translation is used for citation.
Irisawa et al. renders obvious the basic claimed photosensitive resin composition, as set forth above, with respect to claim 1.
Regarding claim 11; Irisawa et al. teaches the composition further comprises a surfactant, however fails to teach a fluorine-based surfactant. Youn et al. teaches the photosensitive resin composition may include additives such as fluorine-based surfactants [014]. Irisawa et al. and Youn et al. are analogous because they are both concerned with the same field of endeavor, namely photosensitive resin compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to add a fluorine-based surfactant, as taught by Youn et al., to the composition of Irisawa et al., and would have been motivated to do so since Youn et al. teaches fluorine-based surfactants are suitable for use in photosensitive resin compositions comprising alkali soluble resin.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 and 7-16 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
Prosecution Insights