DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/10/2025:
• Claims 1-7, 9, and 12-22 are currently pending. Claims 8, 10, and 11 are canceled. Claims 14-20 are withdrawn for being directed to a non-elected invention(s). The objection to claim 11 is withdrawn in light of the amendments to the claims.
• New grounds of rejection are presented herein.
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 .
Claim Rejections - 35 USC § 112(a)
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 21-22 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.
In claims 21-22, the claims claim the “photocurable composition is free of pigments.” However, the specification provides no support for such a limitation. The specification is silent with regard to pigments. Consequently, a new matter issue arises.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7, 9, 12, 13, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama et al. (JP-2011021113-A), with reference to the included machine translation (hereinafter referred to as “Kodama”).
Regarding claim 1, Kodama teaches a photocurable composition (see Kodama at pg. 4, para. 5, teaching a curable composition; also see Kodama at pg. 13, last paragraph, teaching the composition may be cured with light, i.e., is photocurable) comprising:
• a polymerizable material and a photoinitiator (see Kodama at pg. 4, para. 5, teaching the curable composition as comprising a polymerizable monomer and a photopolymerization initiator), wherein the polymerizable material comprises:
• at least one multi-functional acrylate monomer in an amount of at least 75 wt% based on the total weight of the polymerizable material (at least 85 wt%, regarding claim 2) (see Kodama at pg. 4, second to last paragraph, teaching it is preferable to include a polyfunctional polymerizable unsaturated monomer having two ethylenically unsaturated bond-containing groups; also see Kodama at pg. 6, para. 8, teaching the monomer having two unsaturated bond-containing groups may range from 20 to 100% by mass of the total polymerizable unsaturated monomer; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• at least one mono-functional monomer in an amount of at least 5 wt% based on the total weight of the polymerizable material (see Kodama at pg. 4, para. 8, teaching the composition may contain a polymerizable unsaturated monomer having one ethylenically unsaturated bond-containing group; also see Kodama at pg. 6, para. 7, teaching the content of the monofunctional polymerizable unsaturated monomer may be 15% by mass with respect to the total amount of the polymerizable monomer, which falls within the claimed range),
• the at least one mono-functional monomer having a ring parameter of at least 0.5 (see Kodama at pg. 4, para. 9, teaching the polymerizable unsaturated monomer having one ethylenically unsaturated bond-containing group may be 1-naphthyl (meth)acrylate, which has a ring parameter of 0.61, as disclosed by Applicant’s specification at pg. 9);
• the multi-functional acrylate monomer is m-xylylene diacrylate (MXDA) (see Kodama at pg. 5, para. 2, teaching the polymerizable unsaturated monomer having two ethylenically unsaturated bond-containing groups may be xylylene diacrylate; also see untranslated Kodama at pg. 19, teaching example monomer R-4 as a suitable polyfunctional monomer, shown below:
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Monomer R-4 is m-xylylene diacrylate; thus, Kodama reasonably suggests via their example embodiments to select m-xylylene diacrylate as the polymerizable unsaturated monomer having two ethylenically unsaturated bond-containing groups);
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• the mono-functional acrylate monomer is selected from 2-propenoic acid,3,3-diphenylpropyl ester (DPHPA), m-phenoxvbenzvl acrylate (POBA), (2-benzylphenyl) 2-methylprop-2-enoate (2-BzPA), 1-naphthyl acrylate (1-NA) or any combination thereof (see Kodama at pg. 4, para. 9, teaching the polymerizable unsaturated monomer having one ethylenically unsaturated bond-containing group may be 1-naphthyl (meth)acrylate; also see untranslated Kodama at pg. 19, teaching example monomer R-3 as a suitable monofunctional monomer, shown below:
Monomer R-3 is 1-naphthyl acrylate; thus, Kodama reasonably suggests via their example embodiments to select 1-naphthyl acrylate as the polymerizable unsaturated monomer having one ethylenically unsaturated bond-containing group).
While Kodama teaches the composition outlined above, Kodama fails to explicitly teach a total carbon content of the photocurable composition after curing to be at least 69 %.
However, Kodama teaches the content of the polymerizable unsaturated monomer having one ethylenically unsaturated bond-containing group (e.g., 1-naphthyl acrylate) may be 15% by mass with respect to the total amount of the polymerizable monomer (see Kodama at pg. 6, para. 7). Moreover, Kodama teaches the content of the polymerizable unsaturated monomer having two ethylenically unsaturated bond-containing groups (e.g., m-xylylene diacrylate) may be 20-100% by mass with respect to the total amount of the polymerizable monomer (see Kodama at pg. 6, para. 8). Additionally, Kodama teaches examples where the polymerizable component only contains 1-naphthyl acrylate and m-xylylene diacrylate as the polymerizable component (see untranslated Kodama at pg. 19, teaching Example 24, which contains only polymerizable monomer R-3 and R-4, or 1-naphthyl acrylate and m-xylylene diacrylate).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use 1-naphthyl acrylate as the monofunctional monomer in an amount of 15% by mass in the polymerizable component, as Kodama teaches 1-naphthyl acrylate as a suitable monofunctional monomer and further teaches the content may be this amount (see Kodama at pg. 4, para. 9 and pg. 6, para. 7). Furthermore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use m-xylylene diacrylate in an amount of 85 mass% in the polymerizable component, as Kodama teaches m-xylylene diacrylate as a suitable polyfunctional monomer and further teaches the content may range from 20-100 mass% (85 mass% falls within this range) in the polymerizable component.
Following the above modification, the polymerizable component of Kodama contains 15 mass% of 1-naphthyl acrylate and 85 mass% of m-xylylene diacrylate. These mass% necessarily meet the claimed carbon content limitation, see examples S10-S12 of Applicant’s specification at para. 0058. Examples S10-S12 show that increasing the 1-NA monomer content relative to MXDA increases the carbon content; given that a content of 15 mass% of 1-naphthyl acrylate and 85 mass% of m-xylylene diacrylate falls between the values for examples S10 and S11 (85 mass% falls between the values of 90 and 80 mass% for MXDA and 15 mass% falls between the values of 10 and 20 mass% for 1-NA for examples S10 and S11, respectively), it necessarily follows that the carbon content limitation is met.
Regarding claim 2, see the modification in claim 1 above; the composition of modified Kodama contains 15 mass% of 1-naphthyl acrylate and 85 mass% of m-xylylene diacrylate; thus, the polymerizable material of modified Kodama contains “at least 85 wt%” of the multi-functional acrylate monomer.
Regarding claim 3, see Kodama at pg. 6, para. 6, teaching the content of the polymerizable monomer to range from preferably 90 to 96% by mass in the composition, which falls completely within the claimed range; also see untranslated Kodama at pg. 14, teaching Example 24, which contains 4.75 g of monomer R-3 (i.e., 1-NA), 4.75 g of monomer R-4 (i.e., MXDA), 0.2 g of photoinitiator P-1, and 0.3 g of surfactant W-2; thus, Kodama teaches an example where the total polymerizable component is 95 mass% of the entire composition ((4.75 + 4.75)/(4.75 + 4.75 + 0.2 + 0.3) • 100 = 95%); as such, Kodama reasonably suggests via their example embodiments a total polymerizable material content that falls within the claimed range (e.g., 95 mass%).
Regarding claim 4, with respect to the claimed limitation, the thermal shrinkage is notably a property of the resulting composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the Applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, since Kodama teaches the same composition as that claimed, including the same monomers in the same claimed amounts, burden of proof now shifts to Applicants to show the composition of Kodama as not meeting the thermal shrinkage property as claimed.
Regarding claim 7, see Kodama at pg. 5, para. 2, teaching the polymerizable unsaturated monomer having two ethylenically unsaturated bond-containing groups may be xylylene diacrylate, which is an aromatic difunctional acrylate monomer.
Regarding claim 9, see modified Kodama in claim 1 above, teaching a content of the mono-functional monomer (e.g., 1-naphthyl acrylate) to be 15 mass%, which falls within the claimed range.
Regarding claim 12, see modified Kodama in claim 1 above, teaching the polymerizable component as containing only m-xylylene diacrylate and 1-naphthyl acrylate; also see untranslated Kodama at pg. 19, teaching Example 24, which contains only monomer R-3 (e.g., 1-naphthyl acrylate) and monomer R-4 (e.g., m-xylylene diacrylate) as the polymerizable component; thus, Kodama reasonably teaches via their example embodiments a polymerizable component that contains only 1-naphthyl acrylate and m-xylylene diacrylate.
Regarding claim 13, see claim 1 rejection above.
Regarding claim 21, see Kodama at pg. 9, para. 7, teaching the composition “may” contain other components, such as pigments and dyes; thus, Kodama does not necessitate the presence of a colorant in their composition; also see the examples of Kodama at untranslated Kodama at pg. 19, which do not contain a colorant.
Regarding claim 22, see claim 1 and claim 22 rejections above, which are incorporated herein.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama, as applied to claim 1 above, and in the alternative, further in view of Kitagawa et al. (WO-2016104670-A1), with reference to the included machine translation (hereinafter referred to as “Kitagawa”).
Regarding claims 5-6, Kodama teaches the viscosity of their composition to range from 3 to 30 mPa-s (see Kodama at pg. 11, para. 4); while Kodama does not teach the temperature at which this viscosity is measured, viscosity measurements are typically at room temperature absent any teaching otherwise; accordingly, the Examiner is interpreting the viscosity of Kodama to overlap the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05.
In the alternative, Kitagawa teaches a photocurable composition for imprints containing a methacrylate (A) containing no fluorine atom and a photopolymerization initiator (see Kitagawa at pg. 3, para. 4). Kitagawa further teaches the composition may contain 1-naphthyl acrylate and m-xylylene diacrylate (see Kitagawa at pg. 4, last paragraph, and pg. 6, para. 2). Moreover, Kitagawa teaches the viscosity of the curable composition to range from 5 to 12 mPa-s at 23 °C, and that by setting it to such a range, the inkjet discharge precision and the filling property to the uneven corrugated pattern of a mold can be improved (see Kitagawa at pg. 12, para. 5).
Kodama teaches their viscosity to range from 3 to 30 mPa-s (see Kodama at pg. 11, para. 4). Kodama further teaches their composition to be used in an imprint method involving a mold (see Kodama at pg. 1, para. 1, pg. 11, para. 5, and Title). Moreover, Kodama teaches their composition may be applied via an inkjet method (see Kodama at pg. 12, para. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the viscosity of the composition of Kodama to range from 5 to 12 mPa-s at 23 °C. One of ordinary skill in the art would have been motivated to do so in order to improve the inkjet discharge precision and the filling property to an uneven corrugated pattern of a mold (see Kitagawa at pg. 12, para. 5).
Response to Arguments
Applicant’s arguments filed 11/19/2025 have been fully considered. The Examiner agrees with Applicant that the amended claims overcome the previous prior art grounds of rejection (see Applicant’s Remarks at pg. 7-8). However, a new grounds of rejection is presented, setting forth the claims as unpatentable, see rejections above.
Further, with respect to new claims 21-22, Applicants argue one of ordinary skill would recognize the present specification to teach the composition to be free of pigment particles, given that inkjet adaptive planarization processes do not desire particles (see Applicant’s Remarks at pg. 11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The specification provides no indication that particles are not desired. There is no support for a colorant or pigment to be present or absent in the composition. Further, similar compositions for inkjet planarization teach the composition as being “eseentially free” of particles, e.g., a pigment, thus suggesting small amounts of pigment may be present in such compositions (see US-20250368802-A1 at para. 0001 and 0080). Consequently, a new matter issue arises.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731