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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/13/2024 is considered by the examiner.
Election/Restrictions
Applicant’s election of Group II in the reply filed on 09/25/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-9 and 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/25/2025.
As claim 10 requires the cured product of claim 1, features of claim 1 that are required by claim 10 will be examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 1 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 10 and 1, the limitation reciting “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface” in claim 1 is not enabled by the specification for the following reasons.
(A) The breadth of the claims: The claims themselves recite broad classes of components for the claimed photosensitive resin film, including “a compound (A) having an ethylenically unsaturated group”, “a thermosetting resin (B)”, “a photopolymerization initiator (C), “an inorganic filler (D) and “a fluorine-containing resin (E)”. In looking to the specification for guidance, many different compounds and/or resins are listed for each component, such that it is not clear if a specific combination of components is required to achieve the claimed property of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface” as required by claim 1. The compound (A) having an ethylenically unsaturated group is described by pg-pub [0069-0133], with many different examples of compounds with an ethylenically unsaturated group. The thermosetting resins described by the specification in pg-pub [0145-0155]are again, broad classes of resins including epoxy resin, isocyanate resin, maleimide resin, providing numerous examples of each type of resin. Various examples of photopolymerization initiators are disclosed by [0169-0172] of the pg-pub and various inorganic fillers are disclosed by [0176-0187] of the pg-pub.
With respect to the fluorine-containing resin, pg-pub discloses some examples in [0201-0207], wherein fluorine containing olefin resins are disclosed and some specific examples are provided, wherein polytetrafluoroethylene is said to be preferred but is not specifically recited in the claims.
The specification does not aid in narrowing the breadth of the claims regarding the combination of components that would result in achieving the property of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”
(B) The nature of the invention: the nature of the invention of claim 10 is to a printed wiring board comprising a cured product of the photosensitive resin of claim 1, wherein the property of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface” is required, however, it is unclear how this property is achieved and what is required to achieve it, as the claims are very broad. It is not clear what causes the difference in fluorine atom concentration with the photosensitive resin film, and thus the nature of the invention and requirements to obtain this feature remain unclear.
Furthermore, in discussing the method of measuring the fluorine atom concentration, pg-pub [0309-0313], the photosensitive resin is said to be irradiated with ultraviolet light at a light intensity of 2 J/cm2 and heated at 170˚C for an hour to obtain a cured product of the photosensitive resin film, and was polished, followed by elemental analysis to determine the average fluorine concentration at both surfaces. Claim 1 does not require that the film is cured, however, from the instant specification, it appears that the fluorine concentration at either surface is measured after irradiation, curing and polishing of the film, resulting in what the disclosure refers to as “a cured product of the photosensitive resin film”.
(E) The level of predictability in the art: As demonstrated by the examples of photosensitive resin film shown in Table 2, Comparative Examples 2 and 3 have similar components as Examples 1-6, however, Comparative Examples 2 and 3 result in a fluorine atom concentration at the first surface and the second surface that are equal, rather than a fluorine atom concentration at the first surface being lower than the fluorine atom concentration at the second surface. It is not clear what is required to achieve this feature.
(F) The amount of direction provided by the inventor, (G) The existence of working examples: Table 2 summarizes Examples 1 through 6 and Comparative Examples 1, 2 and 3. Examples 1 through 6 all meet the requirement wherein “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”, as shown by the values for fluorine atom concentration (mass%) in first surface and for fluorine atom concentration (mass%) in second surface. It is noted that all examples, including comparative examples, when a fluorine-containing resin is present, it is polytetrafluoroethylene particles, wherein this specific fluorine containing resin is not required by claim 1.
Comparative Example 1 does not contain any fluorine-containing resin, polytetrafluoroethylene particles, and thus does not meet the claim requirements of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”, as both would be 0 mass% due to the absence of a fluorine-containing resin within the composition.
Comparative Examples 2 and 3 both contain fluorine-containing resin in the form of polytetrafluoroethylene particles, at an amount of 163 parts by mass, which falls between the amount in Example 1 of 130 parts by mass and Examples 5 of 170 parts by mass. Both Comparative Examples 2 and 3 do not meet the claimed limitation requiring “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”, as for both comparative examples, the concentration of fluorine atoms at both surfaces is 20 mass%. It is not clear why or how this occurred, and if a certain combination of components of claim 1 are required to teach this feature. The mere presence of a fluorine containing resin does not appear to result in the difference in concentration of fluorine atoms at either surface, as demonstrated by Comparative Examples 2 and 3. The amount of fluorine containing resin within the composition does not appear to affect this property given the wide range of amounts as demonstrated by Examples 1, 2, 3, 4, 5 and Comparative Examples 2 and 3.
It is noted that for Component A, three different compounds are listed, and Comparative Examples 2 and 3 do not contain dipentaerythritol hexaacrylate, however, Component A of Examples 1 through 6 does contain dipentaerythritol hexaacrylate. For Component D, Comparative Examples 2 and 3 only contain Silica 2, while the rest of the Examples either contain only Silica 1 (Examples 2, 3, 5) or a combination of Silica 2 and Silica 1 (Examples 1, 4, 6). It is not clear or apparent from the claims or specification what combination of components is required to achieve the claimed difference in fluorine atom concentration at the first and second surfaces of the resin, and the Examples do not aid in clarifying what is required. It appears that there is an additional factor, treatment, component that results in the fluorine atom concentration, however, clarification by the Applicant is requested.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: As demonstrated by the analysis above, the instant specification provide numerous examples for each component of the photosensitive resin film (see pg-pub [0069-0133, 0145-0155, 0169-0172, 0176-0187], and the working examples do not aid in narrowing down which components are required in what combination to achieve the feature of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”.
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.
Claim 10 is 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.
Regarding claim 10, the claim is directed to a printed wiring board comprising “an interlayer insulating layer which is a cured product of the photosensitive resin film according to claim 1”, however, it is unclear whether all the components listed in claim 1 of the uncured photosensitive resin would remain once cured to form the “cured product of the photosensitive resin film” recited in claim 10.
Regarding claims 10 and 1, the limitation in claim 1 reciting “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface” is indefinite as it is unclear what is meant by this structural feature and how it is obtained. It is not readily apparent whether this is an inherent feature when a fluorine containing resin is present within a composition and as demonstrated by the enablement rejection above, it appears that there is an unclaimed factor that results in this property.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2002-311580A, Machine Translation via EPO provided).
Regarding claim 10, Morita et al. teaches a photosensitive resin composition and a photosensitive film using the same composition, wherein the photosensitive resin film is used as an interlayer resin insulating layer in a multilayered printed wiring board ([0009,0034]). The photosensitive resin composition and photosensitive film is comprised of a compound having an ethylenically unsaturated group (A) that aids in adhesion and plating solution resistance, a photopolymerization initiator (C), a thermosetting resin (B), a filler that includes inorganic fillers (D) and powdered polytetrafluoroethylene particles (E) ([0013-0017, 0018-0020, 0021-0022, 0023]).
The compound having an ethylenically unsaturated group (A) preferably includes an acryloyl group or a methacryloyl group ([0015]), compounds also disclosed by [0073] of the pg-pub of the instant application.
The thermosetting resin (B) can be any known thermosetting resin including epoxy resin, phenol resin, alkyd resin, melamine resin, isocyanate resin, bismaleimide compound ([0021]), all of which are disclosed by the instant invention in [0145-0156] of the pg-pub of the instant application.
The photopolymerization initiator (C) can be any number of photoinitiators, including benzoin ethers, benzophenones, benzyl ketals, acridinyls, and various others ([0018-0020]), wherein similar photopolymerization initiators are disclosed by [0169-0172]) of the pg-pub of the instant application.
The inorganic filler (D) can be inorganic fine particles such as silica, fused silica, talc, alumina, hydrated alumina, barium sulfate, aluminum hydroxide, magnesium hydroxide, calcium hydroxide, and calcium carbonate ([0023]), which overlaps with the materials disclosed by [0187] of the pg-pub of the instant application.
Morita et al. further teaches that the filler can include organic fine particles such as powdered polytetrafluoroethylene particles, wherein the amount of filler, including both inorganic and organic fillers, is preferably 2-20% by weight of the total solid content of the resin ([0023]).
Morita et al. teaches that the filler is preferably blended to reduce costs, therefore, it would have bene obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to blend the inorganic filler and the organic filler of powdered polytetrafluoroethylene particles to reduce costs.
Regarding the limitation recited by claim 1 of “a fluorine atom concentration in a portion at a depth of 1mm from the first surface is lower than a fluorine atom concentration in a portion at a depth of 1mm from the second surface”, this limitation is indefinite and not enabled for the reasons presented above. While Morita et al. does not expressly teach this feature, the reference does teach the same materials used for the various components of the photosensitive resin film, and therefore, the feature would have been inherently present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA POWERS whose telephone number is (571)270-5624. The examiner can normally be reached Monday-Thursday, 10:00AM-3:00PM.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785