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 .
Response to Amendment
Amendments to the claims, filed on 10/7/25, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 7-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Seri et al (US 2014/0087619 A1) in view of Saito et al (JP 2019062048 A).
Regarding claims 7, 13, 16, 17, and 19, Seri teaches a substrate laminate comprising a first substrate (5), a second substrate (5), and a cured product layer that bonds the first substrate and the second substrate, wherein the cured product layer includes a first layer formed of a cured product of a photosensitive composition (20) and a second layer formed of a cured product of an adhesive (40), in this order from the first substrate side, and the first layer is patterned; wherein the substrate laminate is formed as a hollow structure having a hollow portion between the first substrate and the second substrate (para 118-123 ; fig 2e).
Seri fails to suggest the photosensitive composition contains a curable compound having a cationically polymerizable group and a photocationic polymerization initiator, and has alkali solubility.
Saito suggests hollow substrate laminates for sensors (i.e., electronics) comprising a first substrate, a second substrate, and a cured product layer that bonds the first substrate and the second substrate, wherein the cured product layer includes a first layer formed of a cured product of a photosensitive, in this order from the first substrate side, and the first layer is patterned (page 1-2).
Saito further teaches the photosensitive composition contains a curable compound having a cationically polymerizable group and a photocationic polymerization initiator (e.g., photoacid generator such as iodonium salt), and has alkali solubility; wherein the cationically polymerizable group is one or more selected from the group consisting of a glycidyl group and an alicyclic epoxy group; wherein the curable compound is a polysiloxane compound; wherein the polysiloxane compound further contains one or more alkali-soluble groups selected from the group consisting of a monovalent organic group of the following chemical formula X1, a divalent organic group of the following chemical formula X2, a phenolic hydroxyl group, and a carboxy group (e.g., carboxyl) (page 2-5, 10 of translation; page 2 of original).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the photosensitive composition of Saito for the photosensitive composition of Seri; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding claim 8 and 15, Saito suggests the use of epoxy-based adhesives in or with substrate laminates (page 11 of translation); so it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the epoxy-based adhesives of Saito for the adhesive layer of Seri; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Saito teaches epoxy-based adhesives in or with substrate laminates (page 11 of translation) which would be cured (page 10-11 of translation). This matches the composition and process of that of the instant embodiments (para 192-194 of the instant specification); so a wall surface of the second layer would be a curved surface. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claim 9, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of adhesive in the second layer used to bond the first layer, first substrate, and second substrate, including that of overcoating the first layer to optimize the contact area and adhesive strength of the second layer; therein resulting in an embodiment wherein the cured product layer further includes a covering layer covering at least a part of a wall surface of the first layer, and the covering layer and the second layer are integrated.
Regarding claims 10 and 11, Seri teaches suggests the species wherein one of the first substrate and the second substrate is a transparent substrate, and the other is a semiconductor element substrate (para 117).
Regarding claim 14, Seri teaches the substrates are glass (para 112).
Regarding claim 18, Seri suggests the photosensitive resin composition layer preferably has a thickness (i.e., height) of 10 µm to 100 µm (para 28) which overlaps the range of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Seri, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claim 20, Saito suggests image sensors comprising substrate laminates with similar structures and/or compositions of the instant claims (i.e., the substrate laminate of claim 1) (title, page 1-2).
Response to Arguments
Applicant's arguments filed 10/7/25 have been fully considered but they are not persuasive.
Applicant contends that Seri does not disclose a photosensitive composition that contains a curable compound having a cationically polymerizable group and a photocationic polymerization initiator, and has alkali solubility, but rather relies on a mercapto group-containing compound (mercapto group-containing hydrogen donor) which is used in the invention can donate a hydrogen without forming a color, and thus patterning properties can be improved; and therein Seri relies on photoradical polymerization.
This is not persuasive since it does not fully consider the prior art of Saito.
Saito suggests hollow substrate laminates for sensors (i.e., electronics) comprising a first substrate, a second substrate, and a cured product layer that bonds the first substrate and the second substrate, wherein the cured product layer includes a first layer formed of a cured product of a photosensitive, in this order from the first substrate side, and the first layer is patterned (page 1-2).
Saito further teaches the photosensitive composition contains a curable compound having a cationically polymerizable group and a photocationic polymerization initiator (e.g., photoacid generator such as iodonium salt), and has alkali solubility; wherein the cationically polymerizable group is one or more selected from the group consisting of a glycidyl group and an alicyclic epoxy group; wherein the curable compound is a polysiloxane compound; wherein the polysiloxane compound further contains one or more alkali-soluble groups selected from the group consisting of a monovalent organic group of the following chemical formula X1, a divalent organic group of the following chemical formula X2, a phenolic hydroxyl group, and a carboxy group (e.g., carboxyl) (page 2-5, 10 of translation; page 2 of original).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the photosensitive composition of Saito for the photosensitive composition of Seri; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
This would have been simple substitution of one known element for another to obtain predictable results. Substituting the photosensitive composition of Saito for the photosensitive composition of Seri resulting in a substrate laminate comprising a photosensitive composition that contains a curable compound having a cationically polymerizable group and a photocationic polymerization initiator, and has alkali solubility. In addition, Saito teaches optimizing the color of the composition (page 5, 7, 11) and therein directly address the concerns of Seri.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783