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 arguments filed 9 December 2025 have been fully considered but they are not persuasive.
Applicant has amended instant claim 1 to recite that the colorant composition has a higher transmittance across the wavelength range of 380 nm to 780 nm compared to a colorant composition comprising 40 parts by weight of Chemical Formula A and 60 parts by weight of Chemical Formula E. This colorant composition represents the composition of Example 3 as shown in Table 2 of the instant application’s specification. Applicant argues that instant claim 1 and its dependent claims would not have been obvious over JP ‘226 in view of KR ‘895, as a prima facie case of obviousness has not been established. In particular, the Applicant argues that 1) neither JP ‘226 nor KR ‘895 disclose the xanthene dyes realize both red and blue colors; 2) JP ‘226 and KR ‘895 fail to disclose the claimed weight ratio of both dyes; 3) the weight ratio of the first and second color materials has not been recognized as a result effective variable; and 4) the limitation added to claim 1 by the most recent amendment is not suggested or taught by the cited art. The Examiner will address each of these points separately below to explain why the Applicant’s arguments are not considered persuasive.
Regarding Applicant’s first argument that neither JP ‘226 nor KR ‘895 disclose the xanthene dyes realize both red and blue colors, MPEP 2145 II. states that prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. In the case of the instant application, the cited prior art teaches three compounds (the structure at the bottom of page 60 of JP ‘226; and the structures represented by Formulas 3 and 5 of KR ‘895) that are equivalent to Compounds A, C, and D of the instant application, respectively. Per Table 1 of the instant application (refer to pages 19-20 of the instant application’s specification), compositions utilizing Compounds A, C, and D are all deemed “Applicable”, which means “that the compound composition can act as red and blue color filters” (per the paragraph underneath Table 1 of the instant application’s specification). Whilst the disclosures of JP ‘226 and KR ‘895 do not state that the compounds are capable of realizing both red and blue, the compounds taught by JP ‘226 and KR ‘895 are structurally identical to compounds A, C, and D of the instant application, respectively. By the Applicant’s own admission (per Table 1 of the instant application’s specification), compounds A, C, and D are capable of realizing both red and blue. Thus, a person having ordinary skill in the art would expect that the aforementioned compounds taught by JP ‘226 and KR ‘895 also are capable of realizing both red and blue, due to the compounds taught by JP ‘226 and KR ‘895 being structurally identical to compounds A, C, and D of the instant application, respectively. As MPEP 2145 II. states, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. Therefore, the Applicant’s arguments in this regard are not considered persuasive.
Regarding the Applicant’s second argument that the cited prior art fails to teach the claimed weight ratio, the Examiner does not contend that the cited prior art does not explicitly teach the claimed weight ratio. JP ‘226 indicates that the xanthene dye can be used in combination with other xanthene dyes (JP ‘226, paragraph 0019 of the English translation). Furthermore, KR ‘895 teaches that the xanthene dye compound can be applied to display materials (KR ‘895, paragraph 0045 of the English translation). JP ‘226 teaches that the xanthene dye (A-1) represents 0.1 to 50 mass%, more preferably 1 to 40 mass%, of the colorant (JP ‘226, paragraph 0153 of the English translation). As the xanthene dye represented by (A-1) taught by JP ‘226 is structurally identical to the compound represented by Chemical Formula A of the instant application, JP ‘226 suggests that Chemical Formula A should make up 50 mass% or less of the colorant content. When the compounds taught by KR ‘895 are used in combination with the xanthene dye represented by (A-1), the additional dye should thus represent at least 50 mass% of the colorant content. Thus whilst the exact range recited by instant claim 1 is not taught by the prior art, it is suggested by JP ‘226. MPEP 2144.05 I. states that overlapping, approaching, and similar ranges, amounts, and proportions establish a prima facie case of obviousness. Thus, the prior art at the very least suggests the claimed content ratio of the two coloring materials.
Regarding the Applicant’s third argument that the weight ratio of the first and second color materials has not been recognized as a result effective variable by the prior art, the Examiner does not necessarily agree with this analysis. One having ordinary skill in the art would recognize that combining two different coloring materials in different amounts produces different optical properties of the composition. For instance, one having ordinary skill in the art would recognize that combining a yellow colorant and a blue colorant would yield different shades of green depending on the content ratio of the yellow and blue colorants utilized. JP ‘226 further states that the colorant content can be adjusted to provide desired spectral and color properties (JP ‘226, paragraph 0155 of the English translation). In the case of the instant application, the Applicant has stated that the colorant composition can form a single coating that forms a color filter layer capable of realizing red and blue colors when the weight ratio of the first color material to the second color material is 1:9 to 9:1 (see pages 4-5 of the instant application’s specification). Whilst the cited prior art does not disclose this exact property, the broader disclosure of JP ‘226 suggests a composition comprising two or more coloring materials, such as xanthene dyes, wherein the first coloring material is present in the colorant mixture in an amount of up to 50 mass% and the second coloring material is present in the colorant mixture in an amount of at least 50 mass% (see JP ‘226, paragraph 0153 of the English translation). Combined with the teaching from JP ‘226 that the spectral and color properties are dependent on the colorant content (see JP ‘226, paragraph 0155 of the English translation), there is sufficient teaching and motivation from JP ‘226 for one having ordinary skill in the art to adjust the content of the two coloring materials to obtain a desired optical and coloring property. Refer to MPEP 2144.05 II. Therefore, this argument is not considered persuasive.
Regarding the Applicant’s fourth argument that the limitation added to claim 1 by the most recent amendment is not suggested or taught by the cited art, the combination of JP ‘226 and KR ‘895 presented in the previous office action produces a coloring composition comprising a xanthene dye equivalent to Chemical Formula A of the instant application and a xanthene dye equivalent to one of Chemical Formula C or Chemical Formula D of the instant application. As noted above, one having ordinary skill in the art would be motivated by the teachings of JP ‘226 to optimize the amounts of each coloring material to obtain desired spectral or coloring properties. Referring to Table 3 of the instant application’s specification, Examples 1 and 2 feature coloring compositions wherein Compound A is combined with Compound C and Compound D, respectively. In both of the Examples 1 and 2, the transmittance is greater than that of Example 3, wherein Example 3 represents the amended limitation added to instant claim 1. One having ordinary skill in the art, when presented with the disclosures of JP ‘226 and KR ‘895, would then find it obvious to obtain a coloring composition comprising Compound A and one of Compound C and Compound D. Furthermore, one having ordinary skill in the art would find it obvious to then routinely optimize the contents of the coloring materials, per the guidance of JP ‘226, resulting in a composition such as those shown in Examples 1 and 2 of the instant application’s specification. Therefore, this argument is not considered persuasive.
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) 1-6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017111226 A (hereby referred to as JP ‘226) in view of KR 20150055895 A (hereby referred to as KR ‘895).
Regarding Claim 1, JP ‘226 discloses a colored curable resin composition, a color filter, and a liquid crystal display device including the same. The colored curable resin composition comprises a colorant (A), a resin (B), a polymerizable compound (C), a polymerization initiator (D), and a fluorescence inhibitor (E), wherein the colorant comprises a xanthene dye (A-1) (JP ‘226, paragraph 0007 of the English translation). The colorant (A) contains one or more xanthene dyes (A-1) and the colorant (A) may consist of only the xanthene dye (A-1), though embodiments in which additional dyes other than a xanthene dye may be included are disclosed by JP ‘226 as well (JP ‘226, paragraph 0019 of the English translation). It is preferable that the xanthene dye (A-1) contains at least one compound represented by a formula selected from the group of formulas (Ia), (Ib), (Ic), (Id), and (Ie) (JP ‘226, paragraph 0020 of the English translation). Of note are Formulas (Ic) and (Ie), whose structures are reproduced below.
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In Formula (Ic), X1 and X2 each independently represent an alkyl group having 1 to 8 carbon atoms and Ar1 and Ar2 each independently represent a group represented by formula (i), which is reproduced below (JP ‘226, paragraph 0102 of the English translation).
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In Formula (i), R represents a hydrogen atom or an alkyl group having 1 to 3 carbon atoms, and m represents an integer of 1 to 5 (JP ‘226, paragraph 0071 of the English translation). It is apparent that when X1 and X2 are chosen to be propyl groups and Ar1 and Ar2 are chosen to be a phenyl ring wherein methyl groups are bonded in both ortho positions to the bonding site of the phenyl ring (see, for instance, formula (C-2) on page 18 of the original JP ‘226 publication), the xanthene dye represented by Compound A of the instant application’s specification (see page 9 of the pre-grant publication of the instant application) is obtained. Such a structure is utilized in the Examples disclosed by JP ‘226 (JP ‘226, paragraph 0295-0296 of the English translation, see also page 60 of the original JP ‘226 publication). This compound is equivalent to the first color material as recited by instant claim 1. In Formula (Ie), R1e to R4e each independently represent a hydrogen atom, an aromatic hydrocarbon group having 6 to 10 carbon atoms, or the group R6e (JP ‘226, paragraph 0141 of the English translation), wherein R6e is a saturated hydrocarbon group having 1 to 10 carbon atoms (JP ‘226, paragraph 0142 of the English translation). R5e may represent an ester group (amongst other suitable options), X represents a halogen atom, and m is an integer of 0 to 5 (JP ‘226, paragraph 0141 of the English translation). This material is analogous to the second color material. As stated above, JP ‘226 enables the combination of two or more xanthene dyes (JP ‘226, paragraph 0019 of the English translation). JP ‘226 teaches that the xanthene dye (A-1) represents 0.1 to 50 mass%, more preferably 1 to 40 mass%, of the colorant (JP ‘226, paragraph 0153 of the English translation).
However, JP ‘226 does not disclose that the dye analogous to the second color material is capable of realizing both blue and red. KR ‘895 teaches xanthene dye compounds. The xanthene dye compounds are useful for display materials (KR ‘895, paragraph 0045 of the English translation). Notably, JP ‘226 also uses xanthene dyes to produce display devices (JP ‘226, paragraph 0001 of the English translation), as does the instant application (instant application’s specification, “Technical Field” section on page 1). Further, the xanthene dyes are incorporated into photosensitive coloring compositions (KR ‘895, paragraph 0164-0171 of the English translation, also refer to Table 2 of the original KR ‘895 publication). KR ‘895 teaches xanthene dyes represented by Formulas 3 and 5 (KR ‘895, paragraph 0066-0077 of the English translation, see also pages 4-5 of the original KR ‘895 publication), whose structures are reproduced below.
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It is apparent that the xanthene dye represented by Formula 3 is equivalent to the instant application’s Compound C, and Formula 5 is equivalent to the instant application’s Compound D (see page 10 of the pre-grant publication of the instant application). As these compounds are structurally identical to Compounds C and D, respectively, of the instant application, it is expected that these compounds, along with the compound disclosed by JP ‘226 that is equivalent to Compound A of the instant application, are both capable of realizing red and blue. Per Table 1 of the instant application (see Table 1 on pages 10-11 of the pre-grant publication of the instant application), the compound disclosed by JP ‘226 and the compounds taught by KR ‘895 satisfy the transmission properties recited by instant claim 1, due to the transmission properties being inherent to the materials.
JP ‘226 and KR ‘895 are analogous art because both references pertain to xanthene dyes and their use in photosensitive resin compositions. It would have been obvious to one having ordinary skill in the art before the filing date of the instant application to combine a xanthene dye of Formula (Ic) (such as the one equivalent to the instant application’s Compound A, as shown above) disclosed by JP ‘226 with either of the xanthene dyes represented by Formulas 3 and 5, as taught by KR ‘895 to form a colorant composition comprising a first and a second color material because the structures represented by Formulas 3 and 5 offer excellent solubility in organic solvents, high heat resistance, and are desirable for use in ink compositions and display materials (see paragraph 0047 of the English translation of KR ‘895, see also Table 3 on page 18 of KR ‘895). Whilst the claimed ratio of the first and second color material is not disclosed by JP ‘226, JP ‘226 teaches that the xanthene dye equivalent to the instant application’s Chemical Formula A represents 0.1 to 50 mass%, more preferably 1 to 40 mass%, of the colorant (JP ‘226, paragraph 0153 of the English translation). Thus, it would have been obvious to one having ordinary skill in the art to arrive at the weight ratio of the first and second color materials recited by instant claim 1 through routine optimization of colored curable resin composition to obtain desired optical properties, such as spectral distribution of the composition and the color density of the composition (see JP ‘226, paragraph 0154-0155 of the English translation). See MPEP 2144.05 II. Furthermore, JP ‘226 and KR ‘895 are silent in regards to the transmittance relative to a colorant composition comprising 40 mass% Chemical Formula A and 60 mass% Chemical Formula E. However, one having ordinary skill in the art, when presented with the disclosures of JP ‘226 and KR ‘895, would find it obvious to obtain a coloring composition comprising a coloring compound equivalent to the instant application’s Compound A and a coloring compound equivalent to one of the instant application’s Compound C and Compound D. Furthermore, one having ordinary skill in the art would find it obvious to then routinely optimize the contents of the coloring materials, per the guidance of JP ‘226, resulting in a composition such as those shown in Examples 1 and 2 of the instant application’s specification, which satisfy the aforementioned claim limitation (refer to Table 3 of the instant application’s specification).
Regarding Claim 2, the combination of JP ‘226 and KR ‘895 renders obvious the colorant composition according to instant claim 1. The composition disclosed by JP ’226 comprises xanthene dyes as the colorant (JP ‘226, paragraph 0019 of the English translation). The composition obtained by combining JP ‘226 and KR ‘895 comprises a colorant that consists of two xanthene dyes, which are equivalent to the instant application’s Compound A and Compounds C or D. Therefore, it would have been obvious to make the first and second color materials dyes in the composition obtained by combining JP ‘226 and KR’ 895.
Regarding Claims 3-4, the combination of JP ‘226 and KR ‘895 renders obvious the colorant composition according to instant claim 1. The first color material in the colored curable composition is the structure disclosed by JP ‘226 and reproduced above, which is equivalent to Compound A of the instant application. Compound A of the instant application is deemed suitable to have the claimed transmission properties recited by instant claims 3 and 4, per Table 1 of the instant application’s specification (see Table 1 on page 10-11 of the instant application’s pre-grant publication). Therefore, it would have been obvious to have a first color material having the transmission properties recited by instant claims 3 and 4 in the composition obtained by combining JP ‘226 and KR ‘895.
Regarding Claims 5-6, the combination of JP ‘226 and KR ‘895 renders obvious the colorant composition according to instant claim 1. The second color material in the colored curable composition is one of the structures represented by Formulas 3 and 5 taught by KR ‘895 and reproduced above, which are equivalent to Compounds C and D, respectively, of the instant application. Compounds C and D of the instant application is deemed suitable to have the claimed transmission properties recited by instant claims 3 and 4, per Table 1 of the instant application’s specification (see Table 1 on page 10-11 of the instant application’s pre-grant publication). Therefore, it would have been obvious to have a second color material having the transmission properties recited by instant claims 5 and 6 in the composition obtained by combining JP ‘226 and KR ‘895.
Regarding Claims 9-10, the combination of JP ‘226 and KR ‘895 renders obvious the colorant composition according to instant claim 1. JP ‘226 further discloses that the curable composition comprises a resin (i.e. a binder resin), a polymerizable compound, a polymerization initiator, and a fluorescence suppressor (JP ‘226, paragraph 0018 of the English translation). The curable composition may contain a solvent (JP ’226, paragraph 0258 of the English translation) and a leveling agent (JP ’226, paragraph 0268-0269 of the English translation) as well. Therefore, it would have been obvious to utilize the colorant composition obtained by combining JP ‘226 and KR ‘895 in a curable composition comprising at least a binder resin, an initiator, a solvent, and/or a leveling agent.
Regarding Claims 11-13, the combination of JP ‘226 and KR ‘895 renders obvious the colorant composition according to instant claim 1. JP ‘226 further discloses that the colored curable resin is applied to a substrate, dried to form a colored composition layer, and then exposed to light through a photomask to pattern the colored composition layer (JP ‘226, paragraph 0285 of the English translation). Thus, JP ‘226 discloses the use of the photosensitive resin composition to form a patterned photoresist. The colored coating film, which is the cured product of the colored composition layer is used in a color filter (JP ’226, paragraph 0285 and 0293 of the English translation). The produced color filter can be used in a liquid crystal display device (JP ’226, paragraph 0293 of the English translation). Therefore, it would have been obvious to use the composition obtained by combining JP ‘226 and KR ‘895 to produce a patterned photoresist, a color filter, and a liquid crystal display device.
Conclusion
THIS ACTION IS MADE FINAL. 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