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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on August 19, 2026 is acknowledged.
Claims 1-28 are pending, with claims 15-24 and 26-28 withdrawn from consideration as being directed to non-elected inventions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that forms 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.
Claims 1, 2, 4, 5, 9, 10, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moszner et al. (US 2008/0076847).
With regard to claim 1, Moszner et al. teach a composition comprising a polymerizable binder and a polymerization initiator including an acylgermane of formula (I):
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437
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(abstract).
The polymerizable binder may be a polysiloxane prepared from methacrylic silanes, a polyurethane, or an epoxy resin (par.0115), which meet the limitations for “at least one resin” in claim 1.
The limitation “dielectric film forming composition” shows only an intended use and adds no patentable weight to the claim. Therefore, the composition of Moszner et al. anticipates the composition in claim 1 of the instant application.
With regard to claim 2, Moszner et al. teach hat the acylgermane may be represented by one of the formulas:
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(par.0092).
The compounds above are acyl germanium compounds of structure (I) wherein R1 is an unsubstituted C6 aryl, and R2-R4 are unsubstituted C3 or C1 alkyl groups.
With regard to claim 4, Moszner et al. teach that the acylgermane may be included in the composition in an amount of 0.001 to 5wt% (par.0131-0132). This range overlaps the claimed range.
With regard to claim 5, Moszner et al. teach that the composition may further comprise other known photoinitiators (par.0124). The photoinitiator may be 2,2’-azoisobutyronitrile (AIBN)(par.0125), which is a radical initiator (see par.0038 of Jung et al. (US 2001/0049429)).
With regard to claim 9, Moszner et al. teach that the polymerizable binder may be a polysiloxane prepared from methacrylic silanes (par.0115), which meets the limitations for “an acrylic compound”.
With regard to claim 10, Moszner et al. teach that the polymerizable binder may be included in the composition in an amount of 5 to 99.9 wt% (par.0131, par.0133). This range overlaps the claimed range.
With regard to claim 14, Moszner et al. teach that the composition may further comprise fillers (par.0126) and adhesion promoters (par.0129).
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 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Moszner et al. (US 2008/0076847).
With regard to claim 3, Moszner et al. teach the composition of claim 1 (see paragraph 4 above), wherein the acylgermane may be (2,4,6-trimethylbenzoyl) trimethyl germanium, (2,6-dimethoxybenzoyl)trimethyl germanium (par.0094), bisbenzoyldimethyl germanium, or tribenzoylmethyl germanium (par.0096).
These compounds do not meet the limitations of claim 3.
However, a methyl group and an ethyl group are homologs (differ only by a -CH2- group), and it would be expected that a compound comprising methyl group(s) has similar properties with a compound comprising ethyl group(s).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use (2,4,6-trimethylbenzoyl) triethyl germanium, (2,6-dimethoxybenzoyl)triethyl germanium, bisbenzoyldiethyl germanium or tribenzoylethyl germanium as polymerization initiators in the composition of Moszner et al.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.).(MPEP 2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers))
With regard to claim 11, Moszner et al. teach the composition of claim 1 (see paragraph 4 above), wherein the polymerizable binder may be a polysiloxane prepared from methacrylic silanes, a polyurethane or an epoxy resin (par.0115).
Moszner et al. teach that the polymerizable binder may include multifunctional (meth)acrylates (par.0110-0111).
Moszner et al. do not specifically teach a composition comprising a combination of a resin selected from a polysiloxane prepared from methacrylic silanes, a polyurethane and an epoxy resin and a multifunctional (meth)acrylate.
However, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use such combination as the polymerizable binder of Moszner et al., because all the components are taught for the same purpose.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron (MPEP 2144.06.I. COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE)
Claims 6-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Moszner et al. (US 2008/0076847) in view of Hall-Goulle et al. (US 2008/0095950).
With regard to claim 6, Moszner et al. teach the composition of claim 5 (see paragraph 4 above). Moszner et al. further teach that the additional photoinitiator may be an acetophenone (par.0124) but fail to teach an oxime ester.
Hall-Goulle et al. teach a composition comprising a polymerizable vinyl compound and a photoinitiator (par.0047, par.0050-0051). The photoinitiator may be an acetophenone or an oxime ester (par.0057).
It would have been obvious to one of ordinary skill in the art before of the filing date of the claimed invention to use an oxime ester as the additional photoinitiator in the composition of Moszner et al., because Hall-Goulle et al. teach that an oxime ester and an acetophenone are functionally equivalent as polymerization initiators.
With regard to claim 7, Hall-Goulle et al. teach that the oxime ester photoinitiator may be represented by the formula:
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(par.0073), which is an oxime ester of structure (II) wherein R11 and R12 are unsubstituted C1 alkyl groups and R12 is a substituted C12 heteroaryl group.
A substituted C12 heteroaryl group is an UV absorbing functional group, as defined on page 8, lines 8-10 of the specification of the instant application.
With regard to claim 8, Moszner et al. teach the composition of claim 5 (see paragraph 4 above). Moszner et al. further teach that the additional photoinitiator may be an acetophenone (par.0124) but fail to teach a compound of structure (III).
Hall-Goulle et al. teach a composition comprising a polymerizable vinyl compound and a photoinitiator (par.0047, par.0050-0051). The photoinitiator may be an acetophenone (par.0057) or a titanocene (par.0066).
It would have been obvious to one of ordinary skill in the art before of the filing date of the claimed invention to use a titanocene as the additional photoinitiator in the composition of Moszner et al., because Hall-Goulle et al. teach a titanocene and an acetophenone are functionally equivalent as polymerization initiators.
Hall-Goulle et al. teach that the titanocene may be bis(eta5,2,4-cyclopentadien-1-yl)bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl-titanium (par.0067), which is a compound of structure (III) wherein M is titanium, R14 and R15 are substituted C6 aryl groups.
With regard to claim 12, Moszner et al. teach the composition of claim 1 (see paragraph 4 above). Moszner et al. teach that the composition may further comprise other known photoinitiators, such as acetophenone (par.0124), but fail to teach the claimed compounds.
Hall-Goulle et al. teach a composition comprising a polymerizable vinyl compound and a photoinitiator (par.0047, par.0050-0051). The photoinitiator may be an acetophenone or a benzophenone (par.0057).
It would have been obvious to one of ordinary skill in the art before of the filing date of the claimed invention to use a benzophenone as the additional photoinitiator in the composition of Moszner et al., because Hall-Goulle et al. teach a benzophenone and an acetophenone are functionally equivalent as polymerization initiators.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Moszner et al. (US 2008/0076847) in view of Fukuda et al. (US 2006/0056030).
With regard to claim 13, Moszner et al. teach the composition of claim 1 (see paragraph 4 above). Moszner et al. further teach that the additional photoinitiator may be an acetophenone (par.0124) but fail to teach that the composition comprises a photoacid and/or photobase generator.
Fukuda et al. teach a composition for a hard coat layer, wherein the composition comprises a radical polymerization initiator (par.0172). The polymerization initiator generating a radical may be an acetophenone, a sulfonium or an iodonium salt (par.0200).
It would have been obvious to one of ordinary skill in the art before of the filing date of the claimed invention to use a sulfonium or an iodonium salt as the additional photoinitiator in the composition of Moszner et al., because Fukuda et al. teach a sulfonium or an iodonium salt and an acetophenone are functionally equivalent as polymerization initiators.
A sulfonium salt and an iodonium salt are photoacid generators (see par.0200 of Fukuda et al.).
Claims 1, 2, 4, 9-11, 14, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Malik et al. (US 10,563,014) in view of Moszner et al. (US 2008/0076847).
With regard to claims 1 and 9, Malik et al. teach a dielectric film-forming composition comprising a fully imidized polyimide polymer and a catalyst (abstract, column 2, lines 41-48).
The fully imidized polyimide polymer is the “at least one resin” in claim 1, and meets the limitations of claim 9.
Malik et al. further teach that the catalyst is capable of inducing polymerization reaction by radiation with UV light (column 2, lines 47-48 and column 8, lines 18-21), but fail to teach an acyl germanium compound.
Moszner et al. teach a composition comprising a polymerizable binder and a polymerization initiator including an acyl germane (abstract), wherein the acyl germane may initiate polymerization by irradiation with radiation in the wavelength of 200 to 750 nm (par.0107). This range overlaps the UV range (100-400nm).
Moszner et al. further teach that an acyl germane is effective in low concentration (par.0010).
Therefore, it would have been obvious to one of ordinary skill in the art to use acyl germane as polymerization initiator(catalyst) in the dielectric film-forming composition of Malik et al. in order to take advance of it being effective in low concentration.
With regard to claim 2, Moszner et al. teach hat the acyl germane may be represented by one of the formulas:
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(par.0092).
The compounds above are acyl germanium compound of structure (I) wherein R1 is an unsubstituted C6 aryl, and R2-R4 are unsubstituted C3 or C1 alkyl groups.
With regard to claim 4, Mailk et al. teach that the dielectric film-forming composition comprises the polymerization initiator(catalyst) in an amount of 0.25-4wt% (column 9, lines 40-44). This range overlaps the claimed range.
With regard to claim 10, Mailk et al. teach that the dielectric film-forming composition comprises the polyimide in an amount of 3-40wt% (column 5, lines 23-26). This range overlaps the claimed range.
With regard to claim 11, Mailk et al. teach that the dielectric film-forming composition further comprises a metal-containing (meth)acrylate compound (column 2, lines 41-48).
With regard to claim 14, Mailk et al. teach that the dielectric film-forming composition may further comprise an adhesion promoters, fillers, and dyes (column 11, lines 34-37).
With regard to claim 25, Malik et al. teach a dry film comprising a carrier substrate and a dielectric film comprising the dielectric film-forming composition (column 15, lines 5-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Moszner et al. (US 2009/0239967) teach a composition comprising a polymerizable binder and a polymerization initiator (abstract), wherein the polymerization initiator may comprise acyl germanium compounds (see par.0133).
Kwinsek et al. (WO 2017/059222 A1) teach a UV/VIS curable resin composition which may comprise as free-radical photoinitiator a germanium-based compound represented by
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(abstract, par.057).
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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