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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (JP 2019-133154), wherein the machine English translation is used for citation.
Regarding claims 1-5 and 16; Hirano et al. teaches a photosensitive composition comprising a pigment (A), a dye derivative (B), a resin-type dispersant (C), a polymerizable compound (D), a photoinitiator (E), a resin binder (F), and a solvent (G) [0011]. Hirano et al. teaches the dye derivative (B) has the following structure [0038].
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R115 to R117 may each independently have a hydrogen atom, a hydroxyl group, an alkyl group that may have a substituent, an alkoxy group that may have a substituent, or a substituent having a phthalimidoalkyl group, optionally substituted acyl group, amino group, sulfo group, carboxyl group, phosphate group, halogen group, or a structure represented by general formula (150) to (155), (158) or (159).
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Wherein X1 represents a direct bond, -SO2-, -CO-, -CH2-, -CH2NHCOCH2-, -CONHC6H4CO-, or -CONHC6H4-; o is an integer of 0-20; R150 and R151 are each independently an alkyl group that may have a substituent, an alkenyl group that may have a substituent, a phenyl group that may have a substituent.
In the instance at least one of R115 and R116 are alkoxy groups and R117 is the structure of formula (150), wherein X1 represents -CONHC6H4CO-, R150 and R151 are alkyl groups, the compound of Hirani at al. renders obvious the basic claimed compound (b1).
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In the above formula, the linking group (L1) is -CONH-, which reads on the required -L1A-L1B-L1C- wherein L1A is -CO-, L1B is a single bond, and L1C is -N(RL1)- (instant claim 16). Hirano et al. taches a resin-type dispersant “C2-44” in the color dispersion (DR-30) [Table4-2] corresponds to the instant dispersant C1 [Table1-5]. Hirano et al. teaches the total amount of pigment and dye derivative contained in the solid content of the photosensitive composition is greater than 50% by mass [Exs]. It is the Examiner’s position that Hirano et al. teaches the claimed pigment derivative B1 and dispersant C1, thus would necessarily possess the claimed molar absorption coefficient and unsaturated bond group value.
Hirano et al. teaches the coloring material may further comprise a pigment, such as an anthraquinone red (DR-1, DR-30) [p34, para5]. The instant specification discloses suitable examples for the pigment derivative B2 include anthraquinone skeleton containing pigments, thus the Examiner is taking the position that the anthraquinone red pigment of Hirano et al. would necessarily possess a maximum value of a molar absorption coefficient in a wavelength range of 400 to 700 nm is more than 3000 L·mol-1·cm-1.
Hirano et al. fails to explicitly teach the pigment derivative B2 is 10 to 100 parts by mass with respect to 100 parts by mass of the pigment derivative B1. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of pigment in order to achieve a desired color of the composition. Furthermore, one of ordinary skill in the art would understand that choosing a “color” (e.g. adding a specific pigment), is an aesthetic design choice, and adding a colorant in order to achieve a desired color is well within the knowledge of ordinary skill in the art. See MEPE 2144.04 (I); Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Hirano et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Hirano et al. does not specifically disclose an embodiment containing a pigment (A), a dye derivative (B), a resin-type dispersant (C), a polymerizable compound (D), a photoinitiator (E). However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a photosensitive composition containing a pigment (A), a dye derivative (B), a resin-type dispersant (C), a polymerizable compound (D), a photoinitiator (E), based on the invention of Hirano et al., and would have been motivated to do so since Hirano et al. suggests that the photosensitive composition can contain a pigment (A), a dye derivative (B), a resin-type dispersant (C), a polymerizable compound (D), a photoinitiator (E) [0011].
Regarding claims 6 and 8; Hirano et al. teaches the dispersant C is employed in an amount of about 10 to 100% by mass relative to the total amount of colorant [p8; para5].
Regarding claim 7; Hirano et al. teaches the pigment derivative (B) is preferably 1 to 30% by mass of the total (A) and (B) [p6, para6].
Regarding claim 9; Hirano et al teaches other colorants, such as dyes [p3, para8].
Regarding claim 11; Hirano et al. teaches the use of magenta [p3, para6] and making pixels [p2, para1].
Regarding claims 12-15; Hirano et al. teaches a producing films for color filters in the production of solid-state imaging devices and/or EL display devices [p30, para3-4].
Response to Arguments
Applicant's arguments filed 27 June 2025 have been fully considered but they are not persuasive.
Applicants argue Hirano does not teach the claimed formula (Z1). The Examiner respectfully disagrees as laid out in the rejection above.
As such, Hirano is still relied upon for rendering obvious the basic claimed photosensitive composition.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767