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 .
Response to Arguments
1. Applicant’s arguments, see page 7, line 19, filed 01 July 2026, with respect to the rejection of Claims 1, 3-4, 6-7, 9-12, and 16-20 under 35 U.S.C. 103 as being unpatentable over Han et al. (Korean Patent Publication No. KR 2022-140309 A), hereinafter Han; in view of Hamade et al. (United States Patent Publication No. US 2023/0144597 A1), hereinafter Hamade, have been fully considered but they are not persuasive. Applicant argues that purported advantages of the present application, i.e. high thickness with an absence of bubbles or wrinkles and low peeling-off percentages, are not obvious in view of the prior art. Firstly, these purported advantages are not limitations found within the claim. MPEP § 2145(VI) states: “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” Applicant claims that the present application represents unexpected results, but the present claims are not commensurate in scope with the claims which the evidence is offered to support. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02. Herein, there are no compositional limitations whatsoever for the photosensitive resin laminate of the present application, save for said photosensitive resin laminate has the gas chromatography limitations of Claim 1 of the present application. There is no indication that the purported unexpected results would be realized for every conceivable alkali-soluble polymer, ethylenically unsaturated compound, and photopolymerization initiator in any amount. Given that the composition is open-ended, i.e. using “comprising” language, even trace amounts of each being within the scope of the claim and an infinite number of unclaimed other components comprising the composition still being within the scope of the claim. As such, said argument is not persuasive.
2. Applicant further argues that the prior art of record fails to teach the specific GC properties claimed by the present application. MPEP § 2112.01(II) states: “’Products of identical chemical composition can not have mutually exclusive properties.’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.” Herein, the prior art of record, i.e. Han in view of Hamade, teaches all limitations of the structure, i.e. a photosensitive resin laminate comprising layers of resin comprising alkali-soluble polymer, ethylenically unsaturated compound, and photopolymerization initiator, and a second component. Given the chemical composition of the photosensitive resin laminate is obvious in view of the prior art, the claimed specific GC properties are necessarily present. Furthermore, in response to Applicant’s arguments focused on specific exemplary structures found in the prior art, Examiner points to MPEP § 2123(I) which states:
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Also, Examiner points to MPEP § 2123(II) which states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” As such, the specific GC properties claimed are necessarily obvious in view of the prior art and specific examples in the prior art does not teach away from that. Furthermore, with regards to what international patent offices have done, Examiner maintains their rejection and Applicant has not persuasively argued that any element of the prior rejection is in error. As such, the rejection of record has been maintained.
Claim Rejections - 35 USC § 103
3. 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:
4. 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.
5. Claims 1, 3-4, 6-7, 9, 11-12, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (Korean Patent Publication No. KR 2022-140309 A), hereinafter Han; in view of Hamade et al. (United States Patent Publication No. US 2023/0144597 A1), hereinafter Hamade.
6. Regarding Claims 1, 3-4, 6-7, 9, 11-12, and 17-20, Han teaches (Paragraphs [0012-0013]) a photosensitive resin layer. Han teaches (Paragraph [0124]) a second component, therein a solvent. Han teaches (Paragraph [0124]) the second component is selected from one or more of acetone or methyl ethyl ketone. Han teaches (Paragraphs [0132-0135]) the photosensitive resin layer having thickness of 50 µm to 300 µm. Herein, Han teaches the photosensitive resin layer having a thickness of 0.01 µm to 1 mm. MPEP §2144.05(I) states: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).” Herein, the claimed range lies entirely inside of the range taught by the prior art. Han teaches (Paragraphs [0132-0135]) photosensitive resin layers is a dry film. Han teaches (Paragraphs [0061-0117]) an alkali-soluble polymer. Han teaches (Paragraphs [0032-0059]) a component of ethylenically unsaturated compound(s). Han teaches (Paragraphs [0119-0126]) a photopolymerization initiator. Han teaches (Paragraphs [0139 and 0141]) the low solvent content is such that, based on the total weight of the photosensitive resin layer, the amount of solvent ranges from 0.1 wt% to 7 wt%. Han teaches (Paragraphs [0045-0047]) the component of ethylenically unsaturated compound(s) comprises one or more bifunctional acrylate-based compounds. Han teaches (Paragraphs [0047]) based on the weight of the component of ethylenically unsaturated compound(s), the amount of the bifunctional acrylate-based compounds is 60 wt% to 99 wt%. Herein, Han teaches the amount of the bifunctional acrylate-based compounds based on the weight of the component of ethylenically unsaturated compound(s) is 50 wt% to 99%. MPEP §2144.05(I) states: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).” Herein, the claimed range overwhelmingly overlaps with the range taught by the prior art. Han teaches (Paragraphs [0135-0139]) a non-photosensitive resin film on at least one surface of the photosensitive resin layer. Han teaches (Paragraphs [0135-0139]) the non-photosensitive resin film is selected from the group consisting of a polyethylene terephthalate film and a polyolefin film.
7. However, Han fails to explicitly teach a photosensitive resin laminate, which consists of two or more photosensitive resin layers. Furthermore, Han fails to explicitly teach when the photosensitive resin laminate is characterized by gas chromatography with added toluene as an internal standard, an elution peak of the second component is at a retention time ranging from 0.55 min to 1.30 min, an elution peak of the added toluene is at a retention time ranging from 1.32 min to 1.65 min, and the formula of Claim 1 of the present application is satisfied. Furthermore, Han fails to explicitly teach wherein the gas chromatography is performed by dissolving the photosensitive resin laminate in propylene glycol methyl ether with added toluene as an internal standard to form a solution, and testing the solution under the following conditions: a stainless steel column with a column length of 3 meters, an outer diameter of 1/8 inches and a column wall thickness of 0.02 inches is used; a porous polymer stationary phase is used as a filler; helium with a flow rate of 20 mL/min and a supply pressure of 5 kgf/cm2 serves as a carrier gas; a stepwise heating condition is applied, which sequentially includes maintaining at 80°C for 0.1 min, heating from 80°C to 96°C at a heating rate of 4°C/min, heating from 96°C to 135°C at a heating rate of 10°C/min, and maintaining at 135°C for 2 min; a temperature at an injection port is 180°C; an injection volume of the solution is 3 µL; and a thermal conductivity detector at 200°C is used. Furthermore, Han fails to explicitly teach the photosensitive resin laminate has a total thickness of 100 µm to 600 µm. Furthermore, Han fails to explicitly teach the photosensitive resin laminate consists of two to four photosensitive resin layers.
8. Hamade teaches (Paragraphs [0004-0024]) a photosensitive resin laminate, which consists of two or more photosensitive resin layers. Hamade teaches (Paragraphs [0004-0024]) the photosensitive resin laminate consists of two photosensitive resin layers. Hamade teaches (Paragraphs [0004-0024]) the photosensitive resin laminate suppresses interaction of initiators near layer interfaces in a laminate structure and the formation of a desired shape.
9. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Han to incorporate the teachings of Hamade to comprise a photosensitive resin laminate, which consists of two or more photosensitive resin layers; and the photosensitive resin laminate consists of two photosensitive resin layers. Doing so would result in the suppression of interaction of initiators near layer interfaces in a laminate structure and the formation of a desired shape, as recognized by Hamade.
10. Furthermore, while Hamade is silent as to the total thickness of the laminate structure, Han in view of Hamade teaches the photosensitive resin laminate has a total thickness of 100 µm to 600 µm. Herein, Han teaches a photosensitive resin having a thickness of 0.01 µm to 1 mm (above), while Hamade teaches a laminate of two photosensitive resin layers (above). MPEP §2144.05(I) states: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).” Herein, the claimed range lies entirely inside of the range taught by Han in view of Hamade. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Han to incorporate the teachings of Hamade to comprise the photosensitive resin laminate has a total thickness of 100 µm to 600 µm.
11. Furthermore, the gas chromatography limitations of: the photosensitive resin laminate is characterized by gas chromatography with added toluene as an internal standard, an elution peak of the second component is at a retention time ranging from 0.55 min to 1.30 min, an elution peak of the added toluene is at a retention time ranging from 1.32 min to 1.65 min, and the formula of Claim 1 of the present application is satisfied; AND wherein the gas chromatography is performed by dissolving the photosensitive resin laminate in propylene glycol methyl ether with added toluene as an internal standard to form a solution, and testing the solution under the following conditions: a stainless steel column with a column length of 3 meters, an outer diameter of 1/8 inches and a column wall thickness of 0.02 inches is used; a porous polymer stationary phase is used as a filler; helium with a flow rate of 20 mL/min and a supply pressure of 5 kgf/cm2 serves as a carrier gas; a stepwise heating condition is applied, which sequentially includes maintaining at 80°C for 0.1 min, heating from 80°C to 96°C at a heating rate of 4°C/min, heating from 96°C to 135°C at a heating rate of 10°C/min, and maintaining at 135°C for 2 min; a temperature at an injection port is 180°C; an injection volume of the solution is 3 µL; and a thermal conductivity detector at 200°C is used. A means of detecting the type and amount of analytes present in a sample, herein the photosensitive resin laminate. The prior art teaches photosensitive resin layers utilized by the present application in its experimental examples. Table 2 of the present application teaches the use of a combination of photopolymerization initiators of HABI;BCIM and EABF. Han teaches (Table 1) the use of the same photopolymerization initiators, therein BCIM and EAB, respectively. Paragraphs [0102-0104] of the present application teaches the use of the second component of methyl ethyl ketone. Han teaches (Table 1) the use of the same second component. Table 2 of the present application teaches the use of the resins comprising methyl methacrylic acid; meth(acrylate) and butyl acrylate; and (Paragraph [0041]) styrene. Han teaches (Paragraph [0093-0096] the use of the resins comprising the same repeating units of methyl meth(acrylate) and butyl acrylate, therein repeating units of Chemical Formula 3; Chemical Formula 4; and Chemical Formula 5, respectively. MPEP § 2112.01 (I) states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)." MPEP § 2112.01 (II) goes on further to state: “A chemical composition and its properties are inseparable.” Given the same repeating units taught in the Han as used in the present application, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Han wherein the photosensitive resin laminate is characterized by gas chromatography with added toluene as an internal standard, an elution peak of the second component is at a retention time ranging from 0.55 min to 1.30 min, an elution peak of the added toluene is at a retention time ranging from 1.32 min to 1.65 min, and the formula of Claim 1 of the present application is satisfied; AND wherein the gas chromatography is performed by dissolving the photosensitive resin laminate in propylene glycol methyl ether with added toluene as an internal standard to form a solution, and testing the solution under the following conditions: a stainless steel column with a column length of 3 meters, an outer diameter of 1/8 inches and a column wall thickness of 0.02 inches is used; a porous polymer stationary phase is used as a filler; helium with a flow rate of 20 mL/min and a supply pressure of 5 kgf/cm2 serves as a carrier gas; a stepwise heating condition is applied, which sequentially includes maintaining at 80°C for 0.1 min, heating from 80°C to 96°C at a heating rate of 4°C/min, heating from 96°C to 135°C at a heating rate of 10°C/min, and maintaining at 135°C for 2 min; a temperature at an injection port is 180°C; an injection volume of the solution is 3 µL; and a thermal conductivity detector at 200°C is used.
Conclusion
12. 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).
13. 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 extension fee 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 date of this final action.
14. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
15. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (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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17. 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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
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