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 .
Election/Restrictions
Applicant’s election without traverse of Group I (electron-transport composition comprising a metal oxide and a photoacid generator, a light-emitting element comprising an electron transport region comprising a metal oxide and an acid and a conjugate base of the acid which are generated by decomposition of a photoacid generator) and Species A (a photoacid generator represented by Formula 1) in the reply filed on 01/14/2026 is acknowledged.
The elected invention and species is encompassed by claims 1-6 and 17-20.
Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01/14/2026.
Response to Amendment
The applicant's amendment of 07/08/2026 is entered.
Claims 1, 2, 6, 17, and 20 amended due to the applicant's amendment.
Claims 1-20 are pending and claims 7-16 are withdrawn from consideration.
The objection to claims 2 and 20 as set forth in the previous Office action is overcome due to the applicant's amendment.
The rejection of claims 1, 3 and 17-19 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Mei et al. WO-2021238515-A1 as set forth in the previous Office action is overcome due to the applicant's amendment.
The rejection of claims 1, 3, and 5 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fujimori et al. WO-20140653520-A1 and the rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Fujimori et al. WO-20140653520-A1 as applied to claim 1 as set forth in the previous Office action are each overcome due to the applicant's amendment. The rejections are withdrawn.
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Fujimori et al. WO-20140653520-A1 as applied to claim 1 as set forth in the previous Office action is withdrawn.
The rejection of claims 1-3, 5, and 17-20 under 35 U.S.C. 103 as being unpatentable over Steiger et al. WO-2018219757-A1, see English language equivalent US-20220376180-A1 cited herein as "Steiger", in view of Shimoyama et al. KR-2013020631-A as set forth in the previous Office action is overcome due to the applicant's amendment.
However, as outlined below, new grounds of rejection have been made over further teachings of Fujimori et al. WO-20140653520-A1 and further teachings of Steiger et al. WO-2018219757-A1.
Response to Arguments
The applicant’s arguments on page 10 of the reply dated 07/08/2026 with respect to the rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Fujimori et al. WO-20140653520-A1 as applied to claim 1 as set forth in the previous Office action have been fully considered and are persuasive with respect to the argument that the pKa range of Fujimori's acid proliferating agent does not overlap with the claimed pKa range of the claimed weak acid. The rejection has been withdrawn.
Insofar as the arguments apply to the new grounds of rejection outlined below, the applicant's arguments on pages 10-11 of the reply dated 07/08/2026 with respect to the rejection under 35 U.S.C. 103 as being unpatentable over Fujimori et al. WO-20140653520-A1 have been fully considered, but they are not persuasive.
Applicant's argument – The applicant argues that Fujimori's acid proliferating agent does not meet the claimed weak acid having a pKa of about 4.75 or higher, which is now incorporated into independent claim 1.
Examiner's response -- The limitation of "a weak acid having a pKa of about 4.75 or higher" is met in the new grounds of rejection below over further teachings of Fujimori et al. WO-20140653520-A1. More specifically, (Component K) a basic compound taught by Fujimori meets the claimed weak acid, as discussed in further detail below.
Insofar as the arguments apply to the new grounds of rejection outlined below, the applicant's arguments on pages 11-15 of the reply dated 07/08/2026 with respect to the rejection under 35 U.S.C. 103 as being unpatentable over Steiger et al. WO-2018219757-A1, see English language equivalent US-20220376180-A1 cited herein as "Steiger", in view of Shimoyama et al. KR-2013020631-A have been fully considered, but they are not persuasive.
Applicant's argument – The applicant argues on pages 11-15 that the rejections set forth in the previous Office Action are overcome due to the applicant's amendment.
Examiner's response -- The claims did not previously require the amended limitations of "wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide" and the amended limitation is met in the new grounds of rejection below.
Applicant's argument – The applicant argues on pages 12-15 that Steiger does not appear to contain any disclosure that acid generated from decomposition of the photoacid generator becomes bonded to the surface of the metal oxide after formation of the charge transport layer.
Examiner's response – It is first noted that while there does appear to be support for hydrogen ions being adsorbed onto oxygen atoms of the metal oxide, there does not appear to be support for the recited limitation of "wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide." Further, as discussed in the new grounds of rejection below, Steiger teaches after the coating composition has been applied to the surface to be coated, acid molecules are released in the course of a subsequent exposure to radiation and react with the metal oxide precursors contained in the applied coating and teaches that the acid molecules react with the metal oxide precursor and cause a difference in the solubility (¶ [0069]), implicitly disclosing that at least a portion of the acid generated by decomposition of the photoacid generator is bonded (reacts) to the metal oxide where available, which would be the surface.
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 17-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 17, the claim recites "wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide" on the last two lines. However, there is no recitation in the specification that "wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide". The instant specification paragraph [00188] recites "the acid generated from the photoacid generator PG may cause the surface modification of the metal oxide MO" and instant specification paragraph [00196] recites:
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However, there does not appear to be any description of a bond being formed, or the acid itself being present on the surface. Rather, there appears to be only support for hydrogen ions being adsorbed onto oxygen atoms of the metal oxide. Consequently, it is unclear that Applicant had possession at the time of filing the claimed invention wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide.
Claims 18-20 are dependent on claim 17 and therefore, for the reasons outlined above with respect to claim 17, these claims also contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 17-20 are 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 17, the claim recites "wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide" on the last two lines. The claim is indefinite because it is unclear what is encompassed by "a portion." Would this include hydrogen ions releasing from the acid and bonding with the surface of the metal oxide as they are "a portion" of the acid?
For purposes of examination, the claim will be interpreted such that any portion of the acid bonding to the surface of the metal oxide, including released hydrogen ions, would meet the claim limitations.
Claims 18-20 are rejected as being dependent on indefinite claim 17.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimori et al. WO-2014065352-A1, see machine translation referred to herein as "Fujimori-MT".
Regarding claims 1, 3, and 5, Fujimori teaches a photosensitive resin composition comprising (Component A) a polymer containing a structural unit having a group in which an acid group is protected by an acid-decomposable group, (Component B) a compound having no aromatic ether bond and phenol group and having an epoxy group and / or oxetanyl group, (Component C) metal oxide particles, (Component D) a photoacid generator, (Component E) a solvent (Fujimori-MT, page 2 of 72, lines 28-33), (Component I) a sensitizer which has effects such as electron transfer (Fujimori-MT, page 46 of 72, lines 31-35), which makes the composition an electron transport composition, and (Component K) basic compound (Fujimori-MT, page 46 of 72 lines 25-27). Fujimori teaches the photosensitive resin composition obtains a cured product with a high refractive index, little yellowing, and excellent chemical resistance (Fujimori-MT, page 1 of 72, lines 9-10 and page 3 of 72, lines 35-38).
Fujimori teaches wherein (Component D) the photoacid generator may be a trichloromethyl-s-triazine (Fujimori-MT, page 25 of 77, line 5), which is a halogenated triazine-based compound. Fujimori teaches wherein (Component C) the metal oxide is preferably titanium oxide, zinc oxide, zirconium oxide, among others (Fujimori-MT, page 23 of 72, lines 24-28). Fujimori teaches wherein (Component K) the basic compound may be an aliphatic amine including trimethylamine, diethylamine, and triethylamine (Fujimori-MT, page 48, lines 6-7 and 10-12).
While Fujimori does not exemplify a composition wherein the (Component D) photoacid generator is specifically trichloromethyl-s-triazine, the (Component C) metal oxide is specifically titanium oxide, zinc oxide, or zirconium oxide, and the (Component K) basic compound is specifically trimethylamine, diethylamine, or triethylamine, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select each component as such, because it would have been choosing from the list of specifically exemplified photoacid generators, metal oxides, and basic compounds, which would have been a choice from a finite number of identified, predictable solutions of a compound useful in the photosensitive resin composition of Fujimori and possessing the beneficial properties of obtaining a cured product with a high refractive index, little yellowing, and excellent chemical resistance taught by Fujimori. One of ordinary skill in the art would have been motivated to produce additional compositions comprising photoacid generators, metal oxides, and basic compounds having the beneficial properties taught by Fujimori in order to pursue the known options within their technical grasp with a reasonable expectation of success. See MPEP § 2143.I.(E).
Fujimori appears silent with respect to the property of wherein the (Component K) basic compound of trimethylamine, diethylamine, or triethylamine is a weak acid having a pKa of about 4.75 or higher.
The instant specification recites that the weak acid WA may include a secondary amine such as diethylamine, a tertiary amine such as trimethylamine or triethylamine. Since Fujimori teaches wherein the (Component K) basic compound is trimethylamine, diethylamine, or triethylamine, the same structure as disclosed by the applicant, the property of being a weak acid having a pKa of about 4.75 or higher is considered to be inherent and would be expected to fall within the range in the claim, absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims. See MPEP § 2112.
Regarding claim 4, Fujimori teaches the composition as described above with respect to claim 1.
Fujimori teaches (Component D) the photoacid generator is preferably used in an amount of 0.1 to 10 parts by mass with respect to 100 parts by mass of (Component A) in the photosensitive resin composition and it is more preferable to use 5 to 10 parts by mass (Fujimori-MT, page 29 of 72, lines 33-36) and teaches (Component C) the metal oxide is 5 to 80% by mass, more preferably 10 to 70% by mass, based on the total solid content of the composition (Fujimori-MT, page 24 of 72, lines 4-7). Further, Fujimori teaches specific examples of the composition comprising 187.5 parts metal oxide, which is titanium oxide (Fujimori-MT, page 61 of 72, lines 20-21) and 6 parts photo acid generator, which is compound B-1 (Fujimori-MT, page 63 of 72, lines 1-4).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to form the composition of 187.5 parts metal oxide and 6 parts photo acid generator (which falls within the claimed range of 0.0001:1 and about 0:05:1), because this would have been combining prior art elements according to known methods to yield predictable results. See MPEP § 2143.I.(A).
Regarding claim 6, Fujimori teaches the composition as described above with respect to claim 1.
Fujimori teaches (Component D) the photoacid generator is preferably used in an amount of 0.1 to 10 parts by mass with respect to 100 parts by mass of (Component A) in the photosensitive resin composition and it is more preferable to use 5 to 10 parts by mass (Fujimori-MT, page 29 of 72, lines 33-36) and teaches the content of the (Component K) basic compound in the photosensitive composition is preferably 0.001 to 3 parts by mass with respect to 100 parts by mass of the total solid content in the photosensitive resin composition and more preferred is 1 part by mass (Fujimori-MT, page 48 of 72, lines 33-34). Further, Fujimori teaches specific examples of the composition comprising 6 parts photo acid generator, which is compound B-1 (Fujimori-MT, page 63 of 72, lines 1-4).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to form the composition of 6 parts photoacid generator and select the amount of (Component K) the basic compound as 1 part by mass (which falls within the claimed range of about 0.01:1 to about 100:1), because this would have been combining prior art elements according to known methods to yield predictable results. See MPEP § 2143.I.(A).
Claims 1-3, 5, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Steiger et al. WO-2018219757-A1, see English language equivalent US-20220376180-A1 cited herein as "Steiger", in view of Shimoyama et al. KR-2013020631-A (hereinafter "Shimoyama-KR"), see machine translation referred to herein as "Shimoyama-MT". Supporting evidence provided by Ballinger P, Long FA (1960). "Acid Ionization Constants of Alcohols. II. Acidities of Some Substituted Methanols and Related Compounds1,2". Journal of the American Chemical Society. 82 (4): 795–798 (hereinafter "Ballinger").
It is noted that Steiger et al.WO-2018219757-A1 and US-20220376180-A1, are in the same family as KR-2020014823-A, cited on the IDS of 03/17/2022.
It is noted that Shimoyama et al. KR-2013020631-A is cited on the IDS of 12/09/2024.
Regarding claims 1-3, 5, and 17-20, Steiger teaches preparing a device preparing a device by forming a charge transport layer, over a first electrode, the layer comprising a metal oxide formed from a liquid phase composition for producing metal oxide-containing layers, wherein the composition is containing at least one metal oxide precursor, preferably comprising at least one metal atom from the group consisting of In, Zn, Ga, Y, Sn, Ge, Sc, Ti, Zr, Al, W, Mo, Ni, Cr, Fe, Hf, Ta, Nb and Cu (¶ [0049]), at least one photo acid generator, preferably an photo acid generator which upon exposure to electromagnetic radiation releases at least one acid molecule (¶ [0050]), and at least one solvent (¶ [0051]), which may be ethanol (¶ [0070]), which has a pKa of 15.9 as evidence by Ballinger.
Steiger teaches the device comprising the first electrode, the charge transport formed by the deposition of a metal oxide precursor composition that can be directly patterned by means of exposure to electromagnetic radiation to form the patterned metal oxide layer, a layer comprising quantum dots, a hole transport material layer and a second electrode (¶ [0105] and Fig. 4). Steiger teaches wherein the device is a light-emitting device and the layer comprising quantum dots is an emissive layer (¶ [0019]).
Steiger does not specifically exemplify a device formed as described above wherein the photo acid generator is a halogenated triazine-based compound.
Shimoyama teaches photoacid generators that produce acid in response to light (Shimoyama-MT, page 19 of 67, lines 10-11), for use in forming films in light emitting displays (Shimoyama-MT, page 1 of 67, lines 17-18). Shimoyama teaches examples of the photoacid generator include trichloromethyl-s-triazines (Shimoyama-MT, page 19 of 67, line 18), including more specifically 2-(3-chlorophenyl)-bis(4,6-trichloromethyl)-s-triazine, 2-(4-methoxyphenyl)-bis(4,6-trichloromethyl)-s-triazine, and 2-(4-methylthiophenyl)-bis(4,6-trichloromethyl)-s-triazine (Shimoyama-MT, page 19 of 67, lines 24-26).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to have modified the device of Steiger by forming the photo acid generator out of the trichloromethyl-s-triazines taught by Shimoyama. One would have been motivated to do so because Steiger teaches preparing a device by forming a charge transport layer using a composition comprising at least one photo acid generator, which upon exposure to electromagnetic radiation releases at least one acid molecule and Shimoyama teaches photoacid generators that produce acid in response to light suitable for use in forming films in light emitting displays. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the pertinent art. See MPEP § 2144.07.
The cited trichloromethyl-s-triazines of Shimoyama meet the claimed Formula 1 wherein R1 and R2 are each CX3 wherein X is halogen (Cl) and R3 is a substituted aryl group having 6 ring-forming carbon atoms.
As noted above, the photo acid generator, upon exposure to electromagnetic radiation, releases at least one acid molecule (see ¶ [0050]), implicitly disclosing that also the conjugate base of the acid is present, which in the case of the above modified device would be the halogen.
Further, Steiger teaches after the coating composition has been applied to the surface to be coated, acid molecules are released in the course of a subsequent exposure to radiation and react with the metal oxide precursors contained in the applied coating and the acid molecules react with the metal oxide precursor and cause a difference in the solubility (¶ [0069]), implicitly disclosing that at least a portion of the acid generated by decomposition of the photoacid generator is bonded (reacts) to the metal oxide where available, which would be the surface. Since Steiger teaches the same structure as disclosed by the applicant, the property of wherein at least a portion of the acid generated by decomposition of the photoacid generator is bonded to a surface of the metal oxide is considered to be inherent, absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims. See MPEP § 2112.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Mei et al. US-20220320454-A1 teaches a method for forming an electron transport layer including a step of mixing a metal salt solution for forming a thin film of metal oxide material with a photoacid generator (¶ [0026]-[0027]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth M. Dahlburg whose telephone number is 571-272-6424. The examiner can normally be reached Monday through Thursday, 9 a.m. to 4 p.m. ET, and alternate Fridays.
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/ELIZABETH M. DAHLBURG/Primary Examiner, Art Unit 1786
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