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 § 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.
Claim(s) 7-8 and 10 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Kuno et al (JP2009-102623).
Kuno sets forth curable resin compositions comprising inorganic and organic fillers, resist films and printed wiring board containing the same—see title. Said compositions comprise a photocurable resin; a thermosetting resin; an inorganic filler, an organic filler, a photocurable monomer, a photoinitiator, and thermal initiator—see [0010].
Regarding claim 7: Kuno sets forth a compositions comprising 200 parts of acrylate-containing polycarboxylic acid photocurable resin (51% solids in dipropylene glycol monomethyl ether: Hildebrand less than 21. MPa1/2 (see disclosure page 146)); 15 parts of a bisphenol epoxy resin; 15 parts of a biphenyl containing epoxy resin; 500 parts of titanium dioxide (inorganic filler); 20 parts of barium sulfate (inorganic filler); 25 parts of an acrylic organic filler; 20 parts of dipentaerythritol hexaacrylate; 5 parts of ditrimethylolpropane tetraacrylate; 30 parts of carbitol acetate (solvent; Hildebrand parameter 17.4 MPa1/2); 12 parts of Bis(2,4,6-trimethylbenzoylphenylphosphine oxide); 1 part of a thermal initiator; 2 parts of melamine (thermal hardener); and 1 part of dimethylsiloxane. The composition comprises a plurality of solvents dipropylene glycol monomethyl ether (solvent from photosensitive resin see preparation/synthesis: example 1) and carbitol acetate different from the first solvent. Thus, claim 7 is anticipated.
The composition was screen-printed; placed in a hot-air circulation drying furnace to obtain a dried coating film (film thickness: 20 μ m) and then said coating film was irradiated with ultraviolet light (500mj / cm2). Thus, claims 8 and 10 are anticipated.
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.
Claim(s) 9 and 11 are is/are rejected under 35 U.S.C. 103 as being unpatentable Kuno (cited above).
Kuno is set forth as anticipating the claimed photocurable composition. Kuno does not expressly teach the cured product has the properties set forth in claim 9 under the claimed condition. However, in absence of evidence to the contrary and/or unexpected results, the courts have upheld products of identical chemical composition cannot have mutually exclusive properties. 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. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 11: Kuno does not expressly teach applying by inkjet printing method. However, it is deemed in absence of evidence to the contrary and/or unexpected results a skilled artisan could apply the composition in any known method, including inkjet printing with a reasonable expectation of obtaining a printed article such as a wiring board with accuracy/precision.
Allowable Subject Matter
Claims 1-6 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art, alone or in combination, set forth a plurality of solvents each represented by the claimed formula, wherein each solvent is required to have a Hildebrand solubility parameter of 21.0 MPa1/2 or less in compositions as instantly claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMC
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