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 .
Examiner’s Comments
Applicants’ response filed on 3/12/2026 has been fully considered. Claims 5, 8-10 and 13 are cancelled and claims 1-4, 6-7, 11-12 and 14-20 are pending.
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.
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 1-4, 6-7, 11-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanamura et al (JP 2005-015584 A).
Regarding claim 1, Hanamura discloses a photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising: 5% to 88% by weight of at least one olefinic monomer having a functional group (component B comprising a polymer including isobornyl methacrylate and benzyl methacrylate where compounds are used in combination and 5 to 95 parts by weight with respect to 100 parts by weight of the total of components A and B; paragraphs [0027] and [0073]-[0074]), 35% to 70% by weight of metal oxide particles (component A comprising inorganic oxide particles including oxide particles of Ce, Ti, Zr, Hf and Zn and component B comprising a polymer including isobornyl methacrylate and benzyl methacrylate and 5 to 95 parts by weight with respect to 100 parts by weight of the total of components A and B; paragraphs [0021] and [0074]), 0.1% to 10% by weight of an amine compound having an amine group and a photocurable functional group (component C of a radiation sensitive radical generator comprising 4,4’-bis(diethylamino)benzophenone and 5 to 30 parts by weight of radiation sensitive radical generator based on 100 parts by weight of the total of components A and B; paragraphs [0114] and [0118]), and 0.1% to 10% by weight of a photopolymerization initiator (radiation sensitive radical generator comprising benzophenone and 5 to 30 parts by weight of radiation sensitive radical generator based on 100 parts by weight of the total of components A and B; paragraphs [0114] and [0118]-[0119]), wherein the metal oxide particles comprise a metal element selected from the group consisting of Zn, Zr, Ti, Hf and Ce (component A comprising inorganic oxide particles including oxide particles of Ce, Ti, Zr, Hf and Zn; paragraph [0021]), and wherein the amine compound is selected from bis(diethylamino)benzophenone (component C of a radiation sensitive radical generator comprising 4,4’-bis(diethylamino)benzophenone; paragraph [0114]).
Hanamura discloses the radiation sensitive refractive index changing composition comprising 0.01-10 parts by weight of catalyst (paragraph [0060]), component B being 5 to 95 parts by weight with respect to 100 parts by weight of the total of components A and B (paragraph [0074]), radiation sensitive radical generator being 1 to 50 parts by weight based on 100 parts by weight of components A and B (paragraph [0118]) and component D comprising 1 to 99 parts by weight based on 100 parts by weight of components A and B (paragraph [0143]). The total parts by weight of these components ranges from 102.01 parts by weight to 259 parts by weight.
Component B would be 1.93% (5 parts by weight component A/259 total parts by weight) to 93.13% (95 parts by weight component A/102.01 total parts by weight) by weight based on the total weight of the radiation sensitive refractive index changing composition.
This range overlaps the claimed range for the amount of at least one olefinic monomer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired high crosslinking density due to an acid, base or radical generated from the radiation sensitive decomposing agent (paragraph [0027] of Hanamura) while not using excess material as a means for reducing cost as too little of component B would not provide the desired high crosslinking density and too much of component B would result in a radiation sensitive refractive index changing composition that is expensive to manufacture. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Paragraph [0027] of Hanamura discloses the polymerizable compound of component B providing high crosslinking density due to an acid, a base or a radical generated from the radiation sensitive decomposing agent.
Component A would be 1.93% (5 parts by weight component A/259 total parts by weight) to 93.13% (95 parts by weight component A/102.01 total parts by weight) by weight based on the total weight of the radiation sensitive refractive index changing composition.
This range overlaps the claimed range for the amount of at metal oxide particles.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired stability for an acid, base or radical generated from the radiation sensitive decomposing agent (paragraph [0021] of Hanamura) while not using excess material as a means for reducing cost as too little of component B would not provide the desired high crosslinking density and too much of component B would result in a radiation sensitive refractive index changing composition that is expensive to manufacture. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Paragraph [0021] of Hanamura discloses the inorganic oxide particles of component A providing stability for an acid, a base or a radical generated from the radiation sensitive decomposing agent.
The amount of radiation sensitive radical generator where the radiation sensitive radical generator is used in a combination of two or more (paragraphs [0118]-[0119]) overlaps the claimed range for the amount of amine compound having an amine group and a photocurable functional group.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to prevent the sensitivity to irradiation light from decreasing (paragraph [0118] of Hanamura). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The amount of radiation sensitive radical generator where the radiation sensitive radical generator is used in a combination of two or more (paragraphs [0118]-[0119]) overlaps the claimed range for the amount of photopolymerization initiator.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to prevent the sensitivity to irradiation light from decreasing (paragraph [0118] of Hanamura). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Hanamura does not disclose the photopolymerizable composition comprising the at least one olefinic monomer contains 20 to 80 parts by weight of the first olefinic monomer having an absolute viscosity, measured at 25 °C, of 1 cP or more and 5 cP or less and 20 to 80 parts by weight of the second olefinic monomer having an absolute viscosity, measured at 25 °C, of 9 cP or more and 30 cP or less with respect to 100 parts by weight of the entire olefinic monomer.
However, it would have been obvious to one of ordinary skill in the art to provide benzyl methacrylate and isobornyl methacrylate in an equal 1:1 ratio.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
In regard to the absolute viscosity of the photopolymerizable composition, which is measured at 25 °C, being 5 cP to 30 cP, since the structure of the radiation sensitive refractive index changing composition is the same as the structure of the photopolymerizable composition of claim 1, the radiation sensitive refractive index changing composition would inherently have an absolute viscosity of the photopolymerizable composition, which is measured at 25 °C, being 5 cP to 30 cP.
Regarding claim 2, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising the photocurable functional group of the at least one olefinic monomer or the amine compound comprises a (meth)acrylate group (component B comprising a polymer including isobornyl methacrylate and benzyl methacrylate; paragraph [0027]).
Regarding claim 3, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising the at least one olefinic monomer selected from an aliphatic mono(meth)acrylate having 6 to 20 carbon atoms (component B comprising a polymer including isobornyl methacrylate and benzyl methacrylate; paragraph [0027]).
Regarding claim 4, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising the at least one olefinic monomer comprises a monomer having an absolute viscosity, which is measured at 25 °C, of 1 cP to 30 cP (component B comprising a polymer including isobornyl methacrylate and benzyl methacrylate; paragraph [0027]).
Regarding claim 6, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising the first olefinic monomer selected from benzyl(meth)acrylate (component B comprising a polymer including benzyl methacrylate; paragraph [0027]).
Regarding claim 7, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising the second olefinic monomer selected from isobornyl (meth)acrylate (component B comprising a polymer including isobornyl methacrylate; paragraph [0027]).
Regarding claim 11, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) being selected from benzophenone-based (radiation sensitive radical generator comprising benzophenone; paragraph [0114]).
Regarding claim 12, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising at least one dispersant selected from an epoxy-based dispersant (component D of a fugitive compound functioning as a dispersing agent and having a hydrogen atom substituted with an epoxy group; paragraphs [0129]-[0130]) and in an amount from 0.1% to 30% by weight (component D from 1 part to 99 parts by weight based on 100 parts of components A and B; paragraph [0143])
The total parts by weight of all components in the radiation sensitive refractive index changing composition ranges from 102.01 parts by weight to 259 parts by weight. Component D is 0.39% (1 part by weight/259 total parts by weight) to 97.05% (99 parts by weight/102.01 total parts by weight).
This range overlaps the claimed range for the amount of at least one dispersant.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to prevent the refractive index difference from being small and to prevent the refractive index changing material from being brittle (paragraph [0143]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, Hanamura discloses the photopolymerizable composition of claim 1 as noted above and Hanamura discloses the photopolymerizable composition (radiation sensitive refractive index changing composition; paragraph [0015]) comprising an average particle size (D50) of the metal oxide particles selected to be 25 to 45 nm when measured as secondary particles dispersed in the photopolymerizable composition (particle diameter of oxide particles being 0.1 µm or less; paragraph [0023]),
The particle diameter of the inorganic oxide particles overlaps the claimed range for the metal oxide particles.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to prevent the transparency of the radiation sensitive refractive index changing composition from being lowered (paragraph [0023]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15, Hanamura discloses an optical member (refractive index pattern; paragraph [0155]) comprising: a substrate (paragraph [0015]) and a cured film containing a cured product of the photopolymerizable composition formed in an air atmosphere (coating film of radiation sensitive refractive index changing composition subjected to irradiation treatment; paragraph [0157]) and wherein the photopolymerizable composition of claim 1 is disclosed by Hanamura as noted above.
Regarding claim 16, Hanamura discloses the optical member of claim 15 as noted above and Hanamura discloses the optical member (refractive index pattern; paragraph [0155]) comprising the cured product comprises a polymer that contains a unit in which the photocurable functional groups of the at least one olefinic monomer and the amine compound are crosslinked, and a dispersant dispersed on the polymer and a metal oxide (coating film of radiation sensitive refractive index changing composition subjected to irradiation treatment; paragraph [0157]).
The curing of the radiation sensitive refractive index changing composition of Hanamura would result in the components B and C being crosslinked together with the fugitive compound disposed on the inorganic oxide particles.
Regarding claim 17, Hanamura discloses the optical member of claim 15 as noted above.
In regard to the cured film having a refractive index equal to or greater than 1.6 and a haze equal to or less than 3%, since the structure of the coating film formed from the radiation sensitive refractive index changing composition is the same as the structure of the cured film of claim 15, the coating film formed from the radiation sensitive refractive index changing composition would inherently have a refractive index equal to or greater than 1.6 and a haze equal to or less than 3%.
Regarding claim 18, Hanamura discloses the optical member of claim 15 as noted above and Hanamura discloses the optical member (refractive index pattern; paragraph [0155]) used as an optical film (optical material having a refractive index pattern; paragraph [0018]).
Regarding claim 19, Hanamura discloses the optical member of claim 15 as noted above and Hanumura discloses the optical member comprising the cured film patterned in a form of polyhedron (coating film of radiation sensitive refractive index changing composition subjected to irradiation treatment; paragraph [0157]).
The coating film is in the form of a layer having a length, width and height resulting in a rectangular prism having flat polygonal faces and is considered to be a polyhedron.
Regarding claim 20, Hanamura discloses a display device (display; paragraph [0001]) comprising the optical member (optical material; paragraph [0001]) and wherein Hanamura discloses the optical member of claim 15 as noted above.
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Applicants argue that Hanamura does not teach or suggest at least one olefinic monomer contains 20 to 80 parts by weight of the first olefinic monomer having an absolute viscosity, measured at 25 °C, of 1 cP or more and 5 cP or less and 20 to 80 parts by weight of the second olefinic monomer having an absolute viscosity, measured at 25 °C, of 9 cP or more and 30 cP or less with respect to 100 parts by weight of the entire olefinic monomer and an absolute viscosity of the photopolymerizable composition, which is measured at 25 °C, being 5 cP to 30 cP and that Hanamura does not teach or suggest a photopolymerizable composition having controlled absolute viscosity ranges using first and second olefinic monomers in specific amounts and viscosity ranges.
This argument is not persuasive as it would have been obvious to one of ordinary skill in the art to provide benzyl methacrylate and isobornyl methacrylate in an equal 1:1 ratio.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Also, in regard to the absolute viscosity of the photopolymerizable composition, which is measured at 25 °C, being 5 cP to 30 cP, since the structure of the radiation sensitive refractive index changing composition is the same as the structure of the photopolymerizable composition of claim 1, the radiation sensitive refractive index changing composition would inherently have an absolute viscosity of the photopolymerizable composition, which is measured at 25 °C, being 5 cP to 30 cP.
Furthermore, the specific amounts and viscosity ranges in the claims are commensurate in scope with the data in Applicant’s Specification.
Applicants argue that Hanamura primarily focuses on synthesis of the polymerizable compound and does not contemplate viscosity design or inkjet processability.
This argument is not persuasive as it is not required for Hanamura to solve the same problem as the present invention in order to render the claims obvious.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Applicants argue that the technical concepts of the two inventions are different and that Hanamura does not address viscosity design or improvement of inkjet processability.
This argument is not persuasive as it is not required for Hanamura and the present invention to have the same technical concepts in order for Hanamura to render the claims obvious.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Applicants argue that Hanamura provides no disclosure regarding viscosity criteria or control of the viscosity of the entire composition.
This argument is not persuasive as viscosity is a property of the composition. Since the structure of the composition of Hanamura is the same as the structure of the claimed composition of claim 1, the claimed absolute viscosity would be inherently met.
Applicants argue that Hanamura does not disclose or suggest selecting and mixing two types of olefin-based monomers having different viscosities to achieve a total viscosity of 5-30 cP under the condition of high content of metal oxide particles.
This argument is not persuasive as Hanamura suggests the claimed olefinic monomers. Since the structure of the composition of Hanamura is the same as the structure of the claimed composition of claim 1, the claimed absolute viscosity would be inherently met.
Applicants argue that there is no motivation to select a combination of monomers based on viscosity.
This argument is not persuasive as Hanamura suggests the claimed olefinic monomers of isobornyl methacrylate and benzyl methacrylate. Since the structure of the composition of Hanamura is the same as the structure of the claimed composition of claim 1, the claimed absolute viscosity would be inherently met.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
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