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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/08/2025 has been entered.
Response to Amendment
Applicant’s Amendment submitted 10/08/2025 has been accepted and is entered. Claim 1 has been amended. Claim 3 has been canceled. No new matter appears to be added with these amendments. Claims 1, 2, 4, 7, and 8 are pending.
Response to Arguments
Applicant’s Amendment and arguments based thereon have placed the scope of the claims outside the bounds of the art used in the prior rejections proffered in the prior Final Rejection. All rejections are withdrawn.
After further search and consideration however, a new grounds of rejection is made, as set forth in the body of the action below.
Claim Objections
Claim 1 and 2 are objected to for the following minor informalities:
Claim 1 – Line 16, when describing the substituent n1 in formula (1), the claim recites “n1 is0 or 1”, instead of “n1 is 0 or 1”
Claim 2 recites, in line 2, “…(B2) does not comprise comprises a compound…” – this appears to be a drafting error as the “does not comprise” portion of the claim at issue was struck-through in the prior Claim listing of 04/21/2025 (the amendment made to the claim therein replaced the struck-through fragment with “comprises”), and applicant’s filed Amendment/Remarks with their RCE does not recite an amendment made to claim 2 that would un-strike this section. As such, for the purposes of examination the Examiner is electing to treat this as a mere drafting issue that does not change the limitations of the claim at issue.
Appropriate correction is required.
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.
Claim(s) 1, 2, 4, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao et al (US 9063422 B2) and Tadokoro et al (US 20170160636 A1).
Regarding Claim 1, 2, 7, and 8, Liao teaches a photosensitive resin composition comprising an alkali-soluble resin (A), a polysiloxane (B), an ethylenically unsaturated compound (C), a photoinitiator (D), a black pigment (E) and a solvent (F) (Abstract).
Applicant’s composition in claim 1 is described using “comprising” language and as such unrecited components are not excluded.
Liao describes the alkali soluble resin (A) from Column 3 Line 12 to Column 9 Line 27, where the resin is preferably a fluorene or other aromatic resin having epoxy compounds substituted thereon.
The polysiloxane (B) is described from Column 9 Line 28 to Column 12 Line 53, where the siloxane is generated from subjecting a siloxane monomer (or mixture of monomers) and/or a siloxane prepolymer (or mixture thereof) to a condensation reaction, where the monomer may be represented by formula (V):
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34
314
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subscript m is 0-3
R21 is H, or a substituted or unsubstituted C1-C10 alkyl group or C2-C10 alkenyl group, or C6-C15 aryl group. When multiple R21 are present they may each be the same or different
Specific but not limiting examples of the alkenyl group recited by the reference include vinyl, 3-acryloyloxypropyl, and 3-methacryloyloxypropyl groups
Specific but not limiting groups of the alkyl group include 3-mercaptopropyl, 3-propylglutaric anhydride, and 2-ethylsuccinic anhydride
Acid anhydrides are soluble in alkali
Specific but not limiting groups of the aryl group include tolyl, p-hydroxyphenyl, 2-(p-hydroxyphenyl)ethyl (phenol and 2-ethyl phenol)
Phenolic hydroxides are soluble in alkali (See Applicant’s Specification at [0022]
R22 is a hydrogen, or a substituted or unsubstituted C1-C10 alkyl group or C1-C6 acyl group, or C6-C15 aryl group. When multiple R22 are present they may each be the same or different
A person of ordinary skill in the art would find it obvious from the language of the reference that a combination of siloxane monomers that collectively have at least one of a vinyl group, 3-acryloyloxypropyl, or other alkenyl group present therein and a phenolic-substituted moeity or acid-anhydride moeity (or, as an alternative, a single monomer that combines an alkenyl group moeity and a phenolic-substituted moeity or acid-anhydride moeity) would arrive at a polysiloxane (silicone) resin having an unsaturated double bond and a functional group improving alkali solubility.
The unsaturated compound (C) is discussed from Column 12 Line 54 to Column 13 Line 54, where the unsaturated compound may generally bear one or two (or more) unsaturated groups. As the composition requires a photoinitiator, these compounds are photopolymerizable.
The photoinitiator (D) is discussed from Column 13 Line 55 to Column 15 Line 55, where the photoinitiator may be a single embodiment or a mixture of initiators, such initiators being oximes and phosphine oxides. Exemplary oximes include oximes esters such as l-[9-ethyl-6-(2-chloro-4-benzylsulfonyl benzoyl)9H-carbazole-3-yl]-l-(O-acetyl oxime) among others, and exemplary phosphine oxides include 2,4,6-trimethylbenzoyl dimethyl phosphine oxide.
the reference Nasu as evidenced by the above-referenced disclosures, discloses the limitations of the claims as required regarding the composition of claim 1.
The compositions of Liao further comprise a black pigment, solvent, and additives such as uv-absorbers, polymerization inhibitors, and other components described from Column 14 Line 55 to Column 15 Line 67.
The compositions of Liao are used to prepare a black matrix by applying the compositions onto the surface of a substrate, baling, exposing, developing, and post-baking to prepare a black matrix film (shaped cured product – claims 7 and 8 - Applicant’s claim uses ‘comprising’ language regarding the method claim 8 and as such unrecited steps are not excluded.), as described in Column 17 Lines 1-54.
Liao fails to disclose a specific oxime ester species that meets the limitations of claim 1 and does not explicitly teach the absorption coefficient of the disclosed oxime ester as required by claim 2.
This limitation is met by Tadokoro.
Tadokoro discloses a photosensitive composition and compound, wherein the composition is used to form various cured films upon exposure and development, and the composition comprises a photosensitive compound – an oxime ester conforming to formula (1) (Abstract).
The photosensitive compound of Tadokoro is generally disclosed from [0012]-[0033] and [0051]-[0123], wherein the photosensitive compound is an oxime ester or combination with other oxime ester species.
A specific instance of oxime ester taught by the reference is provided below as reproduced from [0123]:
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Wherein the compound mees the limitations of the claim 3 for where:
Rb1 is a hydrogen atom, n1 is 1
Rb2 and Rb3 are each propyl groups (C3 chain alkyl group)
Rb4 is a phenyl group that is substituted with a methyl group
Rb5 is a methyl group (C1 alkyl group)
Tadokoro is silent about the absorption coefficient(s) at various wavelengths and absorption peaks. However, Applicant’s own Specification discusses this compound at [0334], wherein the above compound is referenced as OE1, and concerning the absorption properties of OE1 and related compound OE2 Applicant’s specification states: “The compound OE1 and the compound OE2 have a peak in a wavelength range of 320nm or longer and 400nm or shorter in the absorption spectrum and show a gram absorption coefficient of 10 or more at one or more wavelengths in the wavelength range of 400nm or longer.” – the properties recited are a verbatim recitation of the limitations of claim 2.
Individual compounds cannot have differing properties from one instance to another – applicant’s own specification specifically ascribes this set of absorption properties to the compound OE1 and the compound OE1 has been found in prior art – the prior art compound corresponding to OE1 must necessarily display this set of properties.
Tadokoro ascribes excellent sensitivity to the compositions having the inventive oxime esters such as the compound above. A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention by adding the oxime ester of Tadokoro to the composition of Liao (or additionally and alternatively, making the simple substitution of an oxime ester from Liao for the oxime ester of Tadokoro) to improve the sensitivity of the resultant composition.
Regarding Claim 4, Liao and Tadokoro generally disclose the limitations of the claim as discussed above regarding claim 1.
Liao and Tadokoro do not disclose a specific weight ratio of oxime to phosphine oxide in the general disclosure, but Liao does disclose in the experimental examples that mixtures of photoinitiators D-1 and D-2 (D-1 being an oxime compound) are present in 37-45 parts by weight in total, and the oxime is present in 25-30 parts by weight of that total. As such, the reference generally teaches a range of oxime wt% in 62.5 to 81 wt% based on the total amount of all photoinitiators present. The photoinitiators of Liao may be used singly or in admixture and are thus art-recognized alternatives to one another.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention in view of the disclosures of Liao and Tadokoro. Such a person having ordinary skill in the art would recognize that the substitution of the other photoinitiator compound D-2 as laid out in the experimental examples of Table 1 for a phosphine oxide compound also taught by the reference would not materially affect the performance of the initiators and as such would consider such substitution to be a simple substitution made in view of art-recognized alternatives.
Conclusion
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/A.P.T./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734