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 .
DETAILED ACTION
SPECIFICATION OBJECTION
Some characters of formulae in para. [0019] of specification are illegible (see para. [0019] of published US 2024/0376253 A1). Submission of clearer formulae is required.
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.
Claims 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.
The recited “the anion” of claims 7-8 lacks an antecedent basis in claim 1 and it should be “an anion”.
The recited “the content” of claim 9 lacks an antecedent basis in claim 1 and it should be “a content”.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 1-6, 9 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW I483066 B (May 1, 2015) with Machine translation.
Machine translated TW teaches a photosensitive epoxy resin composition for MEMS (Microelectromechanical System) and a cured product thereof. Machine translated TW teaches that the composition comprises a photocationic polymerization initiator having formula (1) (A-1) and an epoxy resin having an average of two or more epoxy groups per molecule at top of page 5. TW teaches formula (1) at page 1 meeting the General formula (1) having a cation portion having a molecular weight of 500 or more recited in claim 1.
Thus, claim 1 lacks novelty.
Regarding claim 2, Machine translated TW teaches heating a film comprising the photocationic polymerization initiator (A-1) and an epoxy at 95oC for drying in middle of page 10.
Regarding claim 3, Machine translated TW teaches a hard baking at 150oC at bottom of page 10.
Regarding claim 4, TW teaches an epoxy resin having an average of three or more epoxy groups per molecule at top of page 10.
Regarding claim 5, Machine translated TW teaches an epoxy resin having an average of two or more epoxy groups per molecule at top of page 5.
Regarding claim 6, at least formula (6) taught at bottom of page 10 meets the recited epoxy resin having cresol novolak skeleton.
Regarding claim 9, Machine translated TW teaches 0.1 to 15% by mass of polymerization initiator (A) per 100% by mass of an epoxy resin a second paragraph from bottom of page 6.
Regarding claims 15 and 16, Machine translated TW teaches propylene glycol methyl ether acetate as a solvent in a second paragraph of page 7.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 100372833C (March 5, 2008) with Machine translation.
Machine translated CN teaches a polymerizable composition comprising an epoxy resin monomer and an aryl sulfonium salt comprising an anion such as SbF6-, PF6-. AsF6-, BF4- or B(C6F5)4- at top of page 3. CN teaches a sulfonium salt having a cation portion having a molecular weight of 500 or more recited in claim 1 at page 2.
Machine translated CN teaches a polyepoxide typical of o-cresol epoxy resin in an upper portion in a first full paragraph of page 3. Machine translated CN teaches heating/curing at 150oC for 30 minutes in a lower portion of page 3.
Thus, claim 1 lacks novelty.
Regarding claims 2 and 3, Machine translated CN teaches heating/curing at 150oC for 30 minutes in a lower portion of page 3.
Regarding claim 4, o-cresol epoxy resin taught by Machine translated CN would have an average of three or more epoxy groups per molecule inherently since the resin would have a high molecular weight due to it’s many repeating units.
Regarding claim 6, o-cresol epoxy resin taught by Machine translated CN meets the recited epoxy resin having a cresol novolak skeleton.
Regarding claims 7 and 8, a sulfonium salt comprising an anion such as SbF6-, PF6-. AsF6-, BF4- or B(C6F5)4- taught at top of page 3 of Machine translated CN meets claims 7 and 8.
Regarding claim 9, Machine translated CN teaches utilization of 0.1% to 10% of the aryl sulfonium salt in a composition in middle of page 3.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over TW I483066 B (May 1, 2015) with Machine translation as applied to claims 1-6, 9 and 15-16 above, and further in view of JP H115830 A (Jan. 12, 1999) with Machine translation.
Regarding claims 10-12, Machine translated JP teaches a curable composition comprising an epoxy resin, a curing agent comprising at least one phenolic hydroxyl group and a tri-substituted sulfonium tetra-substituted borate in [0006].
Regarding claim 13, the phenolic compound having at least two hydroxyl groups at top of page 2 of JP would be expected to the recited boiling point of 200oC or higher inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of JP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize art well known a curing agent comprising at least one phenolic hydroxyl group for epoxy composition taught by JP in TW to improve curing absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141
Claims 1-3, 5-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-105177 A (Apr. 10, 2002) with Machine translation in view of TW I483066 B (May 1, 2015) with Machine translation and Product brochure of Dow Tone 301 Polyol by Songhan Plastic Technology Co., Ltd. (Undated), Downloaded on October 6, 2026.
Machine translated JP teaches a composition comprising alicyclic epoxy resins, bisphenol A type epoxy resins, polyol (Tone 301), aromatic sulfonium salt-based polymerization initiator and silane coupling agent and heat curing at 150oC in example 4 at bottom of page 9 (see example 4 at page 7 of JP).
The instant claim 1 further recites General formula (1) having a cation portion having a molecular weight of 500 or more over JP.
TW teaches formula (1) at page 1 meeting the General formula (1) having a cation portion having a molecular weight of 500 or more recited in claim 1.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known aromatic sulfonium salt-based polymerization initiator taught by TW in JP since JP teaches aromatic sulfonium salt-based polymerization initiator absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claims 2 and 3, Machine translated JP teaches curing at 150oC in example 4.
Regarding claims 5 and 6, Machine translated JP teaches bis(3,4-epoxycyclohexylmethylene)adipate comprising two epoxy groups in example 4.
Regarding claim 9, example 4 of Machine translated JP teaches the instant amount.
Regarding claims 10-12, Machine translated JP teaches polyol (Tone 301) in example 4 and the attached product brochure shows that it has a molecular weight of 300 g/mol.
Regarding claim 13, Tone 301 polyol of JP would be expected to the recited boiling point of 200oC or higher inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of JP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Regarding claim 14, Machine translated JP teaches silane coupling agent in example 4.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-105177 A (April, 10, 2002) with Machine translation in view of TW I483066 B (May 1, 2015) with Machine translation and Product brochure of Dow Tone 301 Polyol by Songhan Plastic Technology Co., Ltd. (Undated), Downloaded on October 6, 2026 as applied to claims 1-3, 5-6 and 9-14 above, and further in view of CN 100372833C (March 5, 2008) with Machine translation.
Regarding claim 7-8, Machine translated CN teaches a polymerizable composition comprising an epoxy resin monomer and an aryl sulfonium salt comprising an anion such as SbF6-, PF6-. AsF6-, BF4- or B(C6F5)4- at top of page 3. CN teaches a sulfonium salt having a cation portion having a molecular weight of 500 or more recited in claim 1 at page 2.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known aromatic sulfonium salt-based polymerization initiator taught by CN in JP since JP teaches aromatic sulfonium salt-based polymerization initiator absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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