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 Arguments
Applicant’s cancellation of claim 7 and addition of claim 20 is acknowledged.
Applicant’s arguments, see pages 12-13, filed 30 June 2025, with respect to the rejection(s) of claim(s) 1-5, 8-12, and 15-19 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2011/0124824 A1 (hereby referred to as Nagata).
Applicant has amended instant claim 1 to recite that the resin includes a constitutional unit represented by Formula (D5). Applicant has also amended the dependent claims and independent claim 17 to recite the inclusion of a constitutional unit represented by Formula (D5). Formula (D5) was previously presented in a broader manner as one of the constitutional units recited by instant claim 7, which has since been cancelled. Claim 7 of the instant application was previously rejected under 35 U.S.C. 103 as being unpatentable over WO ‘812 in view of JP ‘383. Applicant has further narrowed the scope of Formula (D5), adding the limitation that LD3 represents a group having a urethane bond or a urea bond. Applicant argues that the previously cited prior art (WO ‘812 and JP ‘383) fails to disclose a constitutional unit represented by Formula (D5) (as recited by instant claims 1 and 17). The Examiner notes that the macromonomer represented by Formula (A-1), as shown on page 93 of WO ‘812, is a methacrylate monomer having a structure that is similar to the constitutional unit represented by Formula (D5), differing only in the existence of an additional alkylenecarbonyloxy group. However, upon review of the cited art, the Applicant’s argument that WO ‘812 and JP ‘383 fails to teach or suggest a constitutional unit represented by Formula (D5) is found to be persuasive. Therefore, Applicant’s arguments are considered persuasive and the previous rejection is withdrawn. However, a new rejection is presented in view of US 2011/0124824 A1 (hereby referred to as Nagata), as explained below.
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.
Claim 20 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.
Claim 20 recites the limitations "the alkylenecarbonyloxy group" and “the group having the urethane bond” in lines 2 and 3 of the claim, respectively. There is insufficient antecedent basis for this limitation in the claim. Whilst claim 1, which claim 20 depends from, recites that LD3 represents a group having a urethane bond or a urea bond and YD1 represents an alkyleneoxy group or an alkylenecarbonyloxy group, the limitations of claim 20 are considered indefinite because the limitations "the alkylenecarbonyloxy group" and “the group having the urethane bond” each imply a singular chemical species, neither of which has been defined. In other words, the Examiner believes there is antecedent basis for “an alkylenecarbonyloxy group” and “a group having a urethane bond”, per the recitations of instant claim 1. However, absent of a specific chemical species being defined, it is the Examiner’s opinion that there is insufficient basis for "the alkylenecarbonyloxy group" and “the group having the urethane bond”, as these terms are not definite given the recitations of instant claim 1.
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) 1-5, 8-12, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/037812 A (hereby referred to as WO ‘812) in view of US 2011/0124824 A1 (hereby referred to as Nagata).
Regarding Claims 1-3 and 17-20, WO ‘812 discloses a curable composition, a cured film and method of producing the same, a color filter, a solid-state imaging element, a solid-state imaging device, and an infrared sensor. The curable composition comprises a resin containing a curable group, a colorant, a polymerization initiator, and a polymerization inhibitor (WO ‘812, paragraph 0012 of the English translation). The colorant may be a pigment (WO ‘812, paragraph 0116 of the English translation). As the resin, WO ‘812 discloses synthesis examples of resins PA-26, PA-27 to PA-38, PA-40, and PA-41 (WO ‘812, paragraphs 0305-0306 of the English translation). The method of synthesizing PA-26 will be described below, but the method applies to each of the above resins, wherein components differ as shown in Table 2-1 of WO ‘812 (see page 112 of the original WO ‘812 publication). To produce the resin, a macromonomer solution is prepared and combined with 2-methacryloyloxyethyl succinic acid (HO-MS) and mixed while being sparged with nitrogen (WO ‘812, paragraph 0305 of the English translation). Dodecyl mercaptan and V-601 were added to the reaction vessel, with additional V-601 being added after several hours of the reaction progressing (WO ‘812, paragraph 0305 of the English translation). Following the completion of the reaction, dimethyldodecylamine and TEMPO were added to the reaction vessel, followed by the addition of glycidyl acrylate (WO ‘812, paragraph 0305 of the English translation). The final product is then combined with PGMEA as a solvent to obtain a solution of the resin (WO ‘812, paragraph 0305 of the English translation). The above-described synthesis method is identical to the method of synthesizing resin PA-1 as described by the instant application (see paragraph 0223 on page 100 of the instant application’s specification), as the examples shown in Table 2-1 of WO ‘812 include the same monomers as those described by the instant application. The macromonomer solution is produced according to paragraph 0245 of the English translation of WO ‘812, which yields the structure (A-1) as seen on page 93 of the original publication of WO ‘812. Structure (A-1) of WO ‘812 is identical to macromonomer (B-3) of the instant application (see page 109 of the instant application’s specification, see also paragraph 0236 of the instant application’s specification). Whilst WO ‘812 does not provide a structural depiction of a resin according to Formula (A1) as recited by instant claims 2 and 17, it is apparent that WO ‘812 discloses the synthesis of this resin, as the disclosure of WO ‘812 describes an identical synthetic route as the instant application utilizes to produce resins having a constitutional unit represented by Formula (A1).
However, WO ‘812 is silent in regards to a constitutional unit represented by Formula (D5), as recited by instant claims 1 and 17. Nagata teaches a dispersion composition and a polymerizable composition (i.e. a curable composition). The dispersion composition taught by Nagata comprises a titanium black colorant, a graft copolymer, and a solvent (Nagata, paragraph 0061). Additional pigments may be included as well (Nagata, paragraph 0071). The graft copolymer, also referred to as a specific resin, includes at least one structural unit represented by Formula (1) to Formula (5) (Nagata, paragraph 0082). Each of the structural units represented by Formulas (1) to (5) is a (meth)acrylate main chain repeating unit having a graft chain, connected by a linking group (Y1 to Y5, depending on which of Formula (1) to (5) is being referred to). Refer to the structures on page 6 of Nagata. As the linking group, specific examples are taught as formulas (Y-1) to (Y-20) (Nagata, paragraph 0084; refer to page 7 of Nagata for the structures). In particular, (Y-2) and (Y-13) are preferred due to the simplicity of synthesis (Nagata, paragraph 0084). The structure of (Y-2) is reproduced below.
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In structure (Y-2), A and B represent bonding sites (Nagata, paragraph 0084). When the group (Y-2) is used in Formula (1) or Formula (2), a (meth)acrylate constitutional unit represented by Formula (D5) is obtained, wherein XD6 is an oxygen atom, LD3 is a group having a urethane bond, and YD1 is an alkylenecarbonyloxy group. When the group (Y-2) is used in Formula (3) or Formula (4), a (meth)acrylate constitutional unit represented by Formula (D5) is obtained, wherein XD6 is an oxygen atom, LD3 is a group having a urethane bond, and YD1 is an alkyleneoxy group. Furthermore, Nagata teaches specific resins (“Exemplary Compounds”) wherein such a combination is made. For instance, Exemplary Compound 1 (see page 11 of Nagata) is shown below.
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Exemplary Compound 1 is a graft copolymer wherein one of the constitutional units is represented by Formula (D5), as recited by instant claims 1 and 17. In particular, RD9 is a methyl group, XD6 is an oxygen atom, LD3 is a group having a urethane bond (NH-CO-O), YD1 is an alkylenecarbonyloxy group, and ZD1 is an aliphatic hydrocarbon group having 1 to 20 carbon atoms. Structurally similar constitutional units are also present in Exemplary Compounds 4, 13, 27-46, 52-63, 67-68, 71 and 64 (wherein 64 uses an alkyleneoxy group in place of the alkylenecarbonyloxy group). Refer to pages 11-28 of Nagata. Nagata further teaches that the polymerizable (i.e. curable) composition includes the dispersion composition, a polymerizable monomer, and a polymerization initiator (Nagata, paragraph 0139).
WO ‘812 and Nagata are analogous art because both references pertain to curable compositions and their uses. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to include a constitutional unit represented by Formula (D5), such as the above described (meth)acrylate constitutional units containing a graft chain taught by Nagata, as part of the resin in the curable composition disclosed by WO ‘812 because such a constitutional unit yields high dispersibility of the pigment and improves developability when used for a resist (Nagata, paragraph 0087). Furthermore, including a urethane group in a (meth)acrylate constitutional unit having a graft chain would be obvious to one having ordinary skill in the art because including a group having a urethane bond as a divalent linking group simplifies synthesis (Nagata, paragraph 0094). Lastly, one having ordinary skill in the art would find the inclusion of a constitutional unit represented by Formula (D5) in the resin to be obvious because resins containing such a constitutional unit (such as Specific Resin 1 of Nagata, as shown on page 62 of Nagata) demonstrate excellent storage stability, excellent coating characteristics, and little to no residues when used in a polymerizable composition (refer to Table 2 on Page 67 of Nagata).
Regarding Claim 4, WO ‘812 discloses that the resin comprises multiple structural units (A, B, and C), wherein the structural unit A preferably has a content of 30 to 90 mass% relative to the total mass of the resin, the structural unit B preferably has a content of 5 to 70 mass% relative to the total mass of the resin, and the structural unit C preferably has a content of 5 to 60 mass% relative to the total mass of the resin (WO ‘812, paragraph 0097 of the English translation). The resin may further contain a structural unit D, which preferably has a content of 10 to 60 mass% relative to the total mass of the resin (WO ‘812, paragraph 0097 of the English translation). Per the disclosure of the synthesis of PA-26 (see paragraph 0305 of the English translation of WO ‘812), the obtained resin contains the structural unit represented by Formula (A1) is within the range of 1 to 60 mass% relative to the total mass of the resin.
Regarding Claim 5, WO ‘812 discloses that the resin may comprise additional constitutional units, such as Structural Unit D, which is derived from radically polymerizable compounds selected from acrylonitriles and methacrylonitriles (WO ‘812, paragraph 0095 of the English translation). This constitutional unit would differ from the ones represented by Formula (A1) and Formula (D5).
Regarding Claim 8, WO ‘812 discloses that it is preferable that the photopolymerization initiator in the curable composition is an oxime ester-based photopolymerization initiator (WO ‘812, paragraph 0150 of the English translation).
Regarding Claim 9, WO ‘812 discloses that it is preferable that the curable composition contains a polymerizable compound (WO ‘812, paragraph 0172 of the English translation).
Regarding Claims 10-12, WO ‘812 discloses that the curable composition is used to form a curable composition layer, which is cured to form a cured film from the curable composition (WO ‘812, paragraph 0213 of the English translation). The curable composition is applied onto a substrate to for a curable composition layer, which is subsequently exposed to radiation and developed to produce a patterned cured film (WO ‘812, paragraph 0214-0216 of the English translation). The cured film is then used in a color filter (WO ‘812, paragraph 0233-0234 of the English translation).
Regarding Claims 15-16, WO ‘812 discloses that the cured film produced from the curable composition is used in a solid-state imaging device and a solid-state imaging element (WO ‘812, paragraph 0218 of the English translation). WO ‘812 further discloses a liquid crystal display device containing the aforementioned cured film (WO ‘812, paragraph 0235 of the English translation).
Claim(s) 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/037812 A (hereby referred to as WO ‘812) in view of US 2011/0124824 A1 (hereby referred to as Nagata) as applied to claim 5 above, and further in view of JP 2015/212383 A (JP ‘383).
Regarding Claim 6, the combination of WO ‘812 and Nagata, as discussed above, renders obvious a curable resin composition according to instant claim 5. Said curable resin composition comprises a structural unit represented by Formula (A1) and a structural unit represented by Formula (D5) (as taught by Nagata), and may comprise an additional structural unit that differs from the structural unit represented by Formula (A1) (WO ‘812, paragraph 0095 of the English translation).
However, the combination of WO ‘812 and Nagata is silent in regards to a composition in which a resin having constitutional unit according to formula (D1) is present. JP ‘383 teaches a polymerizable dispersion stabilizer. JP ‘383 teaches a polymeric material having a constitutional unit represented by Formula (I) (see page 8 of the original publication of JP ‘383), which is said to form a quaternary ammonium salt with a halogenated hydrocarbon (JP ‘383, paragraph 0013 of the English translation). JP ‘383 further teaches a graft copolymer is utilized (JP ‘383, paragraph 0018 of the English translation) and that the graft copolymer has at least one constitutional unit according to general formula (III) or (IV) (JP ‘383, paragraph 0020 of the English translation). In general formula (III), R22 and R26 both may be alkyls or substituted alkyls (JP ‘383, paragraph 0021 and 0066 of the English translation). It is taught that a (meth)acryloyl group may be included (JP ‘383, paragraph 0062 and 0067 of the English translation), thus yielding a constitutional unit according to the instant application’s formula (D1).
WO ‘812, Nagata, and JP ‘383 are analogous art because each reference pertains to photosensitive resin compositions. It would have been obvious to one having ordinary skill in the art at the time of the filing date of the instant application to include a constitutional unit according to instant application’s formula (D1), as taught by JP ‘383, in the composition obtained by combining the teachings of WO ‘812 and Nagata (as discussed above) because the inclusion of a constitutional unit represented by Formula (D1) allows for a greater degree of crosslinking and thus increases the mechanical strength of a cured film formed from the composition (JP ‘383, paragraph 0087-0088 of the English translation) and because the composition, when the constitutional unit represented by Formula (D1) is present, exhibits excellent dispersion stability (JP ‘383, paragraph 0066 of the English translation).
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.
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/JAYSON D COSGROVE/Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734