DETAILED ACTION
Claims 22-40 and 42 are pending. Claims 22 and 24 have been amended and claims 1-21 and 41 were previously canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 25 recites “R4 is…CONR10R11…or PO(OR3a)2”. However, claim 22 recites “R4 is (CO)-R3a, COOR4a, or S(O)m-R3a”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 22-25, 35, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchimura (JP2009221334). Translation previously provided.
Tsuchimura teaches the following photopolymerization initiator (61):
PNG
media_image1.png
151
318
media_image1.png
Greyscale
[0090] which is equivalent to formula (I) of instant claim 22, specifically formula (Ia) of instant claim 23, more specifically formula (Ib) of instant claims 24 and 25 when R1 is a C1 alkyl group which is unsubstituted, R2 is a C2 alkyl group, R3 is a C1 alkyl group, and R4 is (CO)-R3a where R3a is a C2 alkenyl group. Tsuchimura also teaches an example of synthesis of a specific oxime compound can be synthesized in the following synthesis scheme, for example. Specifically, the compound a of the following structure is dissolved in a solvent, and a base is added. Next, a specific oxime compound can be obtained by making it react with acyl chloride (AcCl) or carboxylic acid anhydride (Ac2O) [0093]:
PNG
media_image2.png
374
555
media_image2.png
Greyscale
[0094] in the compound a, B, p, Y, V, and Z are synonymous with B, p, Y, V, and Z in the aforementioned general formula (3), among the above-mentioned synthesis scheme [0095] i.e. the groups of compound (61) (claims 35 and 42).
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.
Claims 26-34, 36-38, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchimura (JP2009221334).
Tsuchimura teaches the polymerizable constituent of the present invention is a polymerizable constituent containing the photopolymerization initiator which contains the oxime system compound denoted by the (A) aforementioned general formula (1), and (B) radical polymerizable compound [0098] (claim 27). Tsuchimura also teaches In the polymerizable constituent of the present invention, it is the objects, such as improvement in the coat characteristic, and can use binder polymer if needed. It is preferable to use line organic polymer as a binder. As such "line organic polymer", a publicly known thing can be used arbitrarily. In order to enable water development or weak alkali water development preferably, line organic polymer which is fusibility or swelling nature is chosen as water or weak alkali water. According to a purpose as water, weak alkali water, or an organic solvent developer, selection use of the line organic polymer is carried out not only as a coat formation agent. For example, water development will be attained if water-soluble organic polymer is used. The radical polymer which has a carboxylic acid group in a side chain as such line organic polymer, for example, what is described in JP S 59-44615A, JP S 54-34327B, JP S 58-12577B, JP S 54-25957B, JP S 54-92723A, JP S 59-53836A, JP S 59-71048A, i.e., the monomer which has a carboxyl group, the resin which was independent or was made to copolymerize, Independent or the epoxy acrylate which made it copolymerize and denatured hydrolysis or the resin which carried out half-etherification or half amidation, and an epoxy resin with unsaturated monocarboxylic acid and an acid anhydride in the acid anhydride unit is mentioned in the monomer which has an acid anhydride. As a monomer which has a carboxyl group, acrylic acid, methacrylic acid, itaconic acid, crotonic acid, maleic acid, fumaric acid, 4-carboxyl styrene, etc. are raised, and a maleic anhydride etc. are mentioned as a monomer which has an acid anhydride. A side chain has similarly an acid cellulosic which has a carboxylic acid group. In addition, the thing etc. which made the cyclic anhydride add to the polymer which has a hydroxyl group are useful [0203] (claims 28 and 34). Tsuchimura further teaches in the range which does not impair the effect of the present invention, the polymerizable constituent of the present invention may use other polymerization initiator- a publicly known photopolymerization initiator together with a specific oxime compound [0101] (claim 29). Tsuchimura also teaches as for the contained amount of the photopolymerization initiator which contains a specific oxime compound, it is preferable that they are [as opposed to/in view of the improvement in sensitivity and developability / the total solids of the polymerizable constituent of the present invention] the 0.5 mass % - the 30 mass % [0100] (claim 32). Tsuchimura further teaches the polymerizable constituent for color filters of the present invention is specifically applied on a base material (substrate) via direct or other layers, form a photopolymerization constituent layer (coloring polymerizable constituent stratification process), and it exposes via a predetermined mask pattern, only the application membrane portion by which light irradiation was carried out is stiffened (exposure process), by developing negatives with a developing solution, a (developing process) and the pattern form coat which consists of the pixel of each color (3 colors or 4 colors) can be formed, and the color filter of the present invention can be manufactured [0223] and it is preferable to perform exposure by the exposure of a radioactive ray, especially as a radioactive ray which can be used when exposing, ultraviolet rays, such as g line and i line, are used preferably, and a high-pressure mercury-vapor lamp is liked more. 5mJ - 1500mJ are preferable, irradiation intensity has 10mJ - more preferable 1000mJ, and 10mJ - 800mJ are the most preferable [0229] (claims 36-38 and 40). Tsuchimura also teaches the polymerizable constituent of the present invention can contain (C) colorant [0114], if it is a case where the hardenability coloring composition of the present invention is used for color filter manufacture, both colorant of chromatic color systems, such as R, G, and B, etc. which form the color picture elements of a color filter, and the colorant of a black system generally used for black-matrix formation can be used [0115] and colorant suitable for a color filter purpose is explained in full detail for an example about the colorant which can be applied to the polymerizable constituent of the present invention. As paints of a chromatic color system, publicly known various inorganic pigments or organic colors can be used conventionally [0116] (claims 30 and 40). Tsuchimura also teaches polymer dispersing agent [0136] (claim 31). Tsuchimura further teaches the polymerizable constituent of the present invention is the object of improvement in the radical generating efficiency of a radical initiator, and long-wavelength-izing of sensitization wavelength, and may be containing the sensitizer [0143] for example, polynuclear aromatic series (for example, phenanthrene and anthracene) pyrene, perylene, triphenylene, 9,10-dialkoxy anthracene, xanthenes (for example, fluorescein, eosine, and erythrosine) rhodamine B, a rose bengal, and thioxanthone (isopropyl thioxanthone) diethylthio xanthone, chloro thioxanthone, cyanines (for example, thia carbocyanine and oxa carbocyanine), merocyanine (for example, merocyanine and carbo merocyanine), phthalocyanines, thiazine (for example, the thionine, methylene blue, a toluidine blue), acridines (for example, an acridine orange, a chloroflavin, acriflavine), anthraquinone (for example, anthraquinone), an acridine orange, coumarins (for example, a 7-diethylamino 4-methylcoumarin), a keto coumarin, phenothiazins, phenazines, styryl benzenes, an azo compound, diphenylmethane, triphenylmethane, distyryl benzenes, carbazoles, porphyrin, a spiro compound, quinacridone, indigo, styryl, a pyrylium compound, a pyrromethen compound, a pyrazolo triazole compound, heterocycle compounds, such as aromatic ketone compounds, such as a benzothiazole compound, barbiturates, a thiobarbituric acid derivative, an acetophenone, benzophenone, thioxanthone, and Michler's ketone, and N-aryl oxazolidinone, etc. are mentioned (claim 33). Tsuchimura also teaches although the present invention is described still more specifically according to an Example, the present invention is not limited to the following Examples, unless the main point is exceeded [0235] and the first object of the present invention is to excel in the stability with time using the wavelength of 365 nm, a photopolymerization initiator with high sensitivity to 405-nm light, and to provide the polymerizable constituent which can form the hardening layer which can inhibit film property deterioration according to heating temporality further. The second object of the present invention is excellent in stability with time, is hardened by high sensitivity, has good pattern formation nature, forms the coloring pattern excellent in adhesion with a base material, and there is in providing the polymerizable constituent for color filters which has the pattern shape outstanding also at the time of the after baking after development [0006].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Tsuchimura and arrive at the instant claims through routine experimentation of substituting equally suitable compounds for the sought invention in order to optimum properties for a color filter.
With regard to claim 26, Tsuchimura does not specify the configuration of the C=N double bonds.
However, Tsuchimura’s compound (61) is the same as instantly claimed compound and prepared in the same manner. Therefore, it is expected to have either configuration claimed, i.e. (i) more than 50% of the C=N double bonds present in oxime ester groups are in Z configuration or (ii) more than 50% of the C=N double bonds present in oxime ester groups are in E configuration, absent any evidence to the contrary.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchimura (JP2009221334) as applied to claim 38 above, and further in view of Nishmae et al. (U.S. 2013/0188270).
With regard to claim 39, Tsuchimura teaches the above composition and its use in color filters [abstract].
Tsuchimura does not teach a process for the photographic production of relief images comprising subjection the coated substrate to imagewise exposure and removing the unexposed portions with a developer.
However, Nishmae et al. teaches oxime ester photoinitiators can be used in a variety of applications such as color filters [claim 20] as well as a coated substrate which is coated on at least one surface with a composition as described above, and describes a process for the photographic production of relief images, in which a coated substrate is subjected to imagewise exposure and then the unexposed portions are removed with a developer [0368]. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Tsuchimura and Nishmae teach overlapping applications for compositions containing oxime ester photoinitiators.
Therefore, it would have been obvious to one of ordinary skill in the art to use the oxime ester photoinitiator of Tsuchimura in other applications such as that of Nishmae et al. and arrive at the instant claims through routine experimentation with a reasonable expectation of success.
Claims 22-38, 40, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchimura et al. (JP2009109921). Translation previously provided.
Tsuchimura et al. teaches a photopolymerizable composition for color filters comprises (A) a compound represented by general formula (I), (B) a polyfunctional photopolymerizable compound having one or more acidic functional groups and/or one or more alkyleneoxy chains, and (C) a colorant [abstract] (claim 27) wherein a compound of general formula (I) is preferably represented by the following general formula (II) [0068]:
PNG
media_image3.png
131
376
media_image3.png
Greyscale
[0069] wherein B can be a phenyl group [0057], R can be
PNG
media_image4.png
84
93
media_image4.png
Greyscale
[0056], n2 can be 1 [0072], and Z can be an acyloxy group such as an acetoxy group, a propionyloxy group, and a benzoyloxy group [0073] which is equivalent to formula (I) of instant claim 22, specifically formula (Ia) of instant claim 23, more specifically formula (Ib) of instant claims 24 and 25 when R1 is a C6 aryl group which is unsubstituted, R2 is a C2 alkyl group, R3 is a C1 alkyl group, and R4 is (CO)-R3a where R3a is a C1 alkyl group, a C3 alkyl group, or a C6 aryl group which is unsubstituted respectively. Tsuchimura et al. also teaches the substructures and specific compounds shown, while preferable, do not limit the invention [0074] and [0077] respectively. Tsuchimura et al. further teaches that even if the object of this invention is a case where colorant is contained at high concentration, there is in providing the photopolymerization constituent for color filters which hardens by high sensitivity, and has good pattern formation nature, and was excellent in the removal nature of a non-hard spot. The object of this invention has a good-shaped coloring pattern, and there is in providing the manufacturing method which can manufacture the color filter by which the residue in the agenesis region of the coloring pattern was inhibited, and the color filter for high productivity, and the solid state image pickup device provided with the color filter [0009].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Tsuchimura et al. and arrive at the instant claims through routine experimentation of substituting equally suitable substituents for the sought invention in order to achieve a good pattern shape and inhibit residue in a color filter.
Tsuchimura et al. also teaches a specific oxime compound can be synthesized by the method shown below, for example: Dissolve the example of synthesis-ethylcarbazole of a specific oxime compound in chlorobenzene, and add an aluminium chloride after cooling at 0°C. Then, o-*** chloride is dropped over 40 minutes, a temperature rise is carried out to a room temperature, and it stirs for 3 hours. Next, an aluminium chloride is added after cooling at 0°C 4-chlorobutyrylchloride is dropped over 40 minutes, a temperature rise is carried out to a room temperature, and it stirs for 3 hours. A 35wt% hydrochloric acid aqueous solution and the mixed solution of distilled water are cooled at 0°C, and a reaction solution is dropped. The depositing solid is washed with distilled water and methanol after suction filtration, and the compound A of the following structure is obtained after recrystallization by acetonitrile [0104-0105], next, compound A is dissolved in THF, 4-chlorobenzene thiol and sodium iodide are added, sodium hydroxide is continuously added to reaction mixture, and it flows back for 2 hours. SM-28 is dropped over 20 minutes after cooling at 0°C, a temperature rise is carried out to a room temperature, and it stirs for 2 hours. Next, isopentyl nitrite is dropped over 20 minutes after cooling at 0°C, a temperature rise is carried out to a room temperature, and it stirs for 3 hours. Reaction mixture is diluted to acetone and it is dropped at 0.1N hydrochloric acid aqueous solution cooled at 0°C. The depositing solid is washed with distilled water after suction filtration, and it recrystallizes by acetonitrile, and obtains the compound B of the following structure [0107] and the compound B is dissolved in N-methyl pyrrolidone and triethylamine is added. Next, over 20 minutes, after dropping, the temperature rise of the acetyl chloride is carried out to a room temperature, and it is stirred after cooling at 0°C for 2 hours. It is dropped at the distilled water which cooled reaction mixture at 0°C, the depositing solid is washed after suction filtration with the isopropyl alcohol cooled at 0°C, and a specific oxime compound (A) is obtained after drying [0109] (claims 35 and 42). Tsuchimura et al. does not specify the configuration of the C=N double bonds. However, Tsuchimura’s compound (I) as defined above is the same as instantly claimed and prepared in the same manner. Therefore, it is expected to have either configuration claimed, i.e. (i) more than 50% of the C=N double bonds present in oxime ester groups are in Z configuration or (ii) more than 50% of the C=N double bonds present in oxime ester groups are in E configuration, absent any evidence to the contrary (claim 26). Tsuchimura et al. further teaches in Example 3-17 a composition comprising C-1, oxime compound 1, sensitizer A1, and multifunctional monomer (A-2) [0406] wherein C-1 comprises Pigment dispersion liquid of 3-ethoxyethyl propionate [solvent] 17.9 parts by mass and, and colorant C.I.PigmentRed 254 (solid content: 15%) Pigment content in solid content: Pigment dispersion liquid of 60% 26.7 parts by mass and colorant C.I.PigmentYellow 139 (solid content: 15%) pigment content [in solid content]: --60% 17.8 parts by mass and a polyfunctional monomer (an illustration compound (A-2)) 2.0 parts by mass of 3.5 parts by mass of specific photopolymerization compound [mixture of 3:7 of pentaerythritol triacrylate and dipentaerythritol hexaacrylate] and compound 1 (specific oxime compound) 0.5 parts by mass and, benzyl methacrylate/methacrylate copolymers (Mole ratio=70/30) [0401] (binder polymer); and sensitizer A-1 is 4,4-bisdiethylaminobenzophenone [0381] (claims 27, 30-34, and 40). Tsuchimura et al. also teaches 1 type of specific oxime compounds may be used solely, and may use 2 or more type together [0113] and other polymerization initiator-photopolymerization constituents may use a publicly known photopolymerization initiator together with a specific oxime compound [0115] (claim 29). Tsuchimura et al. further teaches the photopolymerization constituent for color filters of the present invention is specifically applied on a base material (substrate) via direct or other layers, form a photopolymerization constituent layer (colored light polymerizable constituent stratification process), and it exposes via a predetermined mask pattern, only the application membrane portion by which light irradiation was carried out is stiffened
(exposure process), by developing negatives with a developing solution, a (developing
process) and the pattern form coat which consists of the pixel of each color (3 colors or 4 colors) can be formed, and the color filter of the present invention can be manufactured [0335] and it is preferable to perform exposure by the exposure of a radioactive ray, especially as a radioactive ray which can be used when exposing, ultraviolet rays, such as g line and i line, are used preferably, and a high-pressure mercury-vapor lamp is liked more. 5mJ - 1500mJ are preferable, irradiation intensity has 10mJ - more preferable 1000mJ, and 10mJ - 800mJ are the most preferable [0341] (claims 36-38 and 40). Tsuchimura et al. also teaches if it is a case where the photopolymerization constituent of the present invention is used for color filter manufacture, both colorant of chromatic color systems, such as R, G, and B, etc. which form the color picture elements of a color filter, and the colorant of a black system generally used for black-matrix formation can be used [0194] (claim 40). Tsuchimura et al. further teaches in a photopolymerization constituent, it is the objects, such as improvement in the coat characteristic, and can use binder polymer if needed. It is preferable to use line organic polymer as a binder. As such "line organic polymer", a publicly known thing can be used arbitrarily. In order to enable water development or weak alkali water development preferably, line organic polymer which is fusibility or swelling nature is chosen as water or weak alkali water. According to a purpose as water, weak alkali water, or an organic solvent developer, selection use of the line organic polymer is carried out not only as a coat formation agent. For example, water development will be attained if water-soluble organic polymer is used. As such line organic polymer, i.e., the monomer which has a carboxyl group, the resin which was independent or was made to copolymerize, Independent or the epoxy acrylate which made it copolymerize and denatured hydrolysis or the resin which carried out half-etherification or half amidation, and an epoxy resin with unsaturated monocarboxylic acid and an acid anhydride in the acid anhydride unit is mentioned in the monomer which has an acid anhydride (claim 28).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchimura et al. (JP2009109921) as applied to claim 38 above, and further in view of Nishmae et al. (U.S. 2013/0188270).
With regard to claim 39, Tsuchimura et al. teaches the above composition and its use in color filters [abstract].
Tsuchimura et al. does not teach a process for the photographic production of relief images comprising subjection the coated substrate to imagewise exposure and removing the unexposed portions with a developer.
However, Nishmae et al. teaches oxime ester photoinitiators can be used in a variety of applications such as color filters [claim 20] as well as a coated substrate which is coated on at least one surface with a composition as described above, and describes a process for the photographic production of relief images, in which a coated substrate is subjected to imagewise exposure and then the unexposed portions are removed with a developer [0368]. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Tsuchimura and Nishmae teach overlapping applications for compositions containing oxime ester photoinitiators.
Therefore, it would have been obvious to one of ordinary skill in the art to use the oxime ester photoinitiator of Tsuchimura et al. in other applications such as that of Nishmae et al. and arrive at the instant claims through routine experimentation with a reasonable expectation of success.
Response to Arguments
Due to the amendment filed February 6, 2026 of instant claim 22, the 102(a)(1) rejection over Kimura, the 103 rejections over Kimura, and further in view of Nishmae have been withdrawn. Applicant’s arguments with regard to these rejections have been considered but are moot due to the amendment of instant claim 22.
Applicant's arguments regarding the 103 rejections over Tsuchimura and further in view of Nishmae have been fully considered but they are not persuasive. Applicant argues none of the cited prior art address the problem of providing photoinitiators for a photopolymerizable composition for the preparation of color filters of high brightness. The compounds of claimed formula (I) differ from the exemplified compounds 1, 2, 5, and 6 of Tsuchimura regarding R4. The brightness data provided in the specification shows a considerable increase in brightness when R4 is (CO)-R3a, COOR4a or S(O)m-R3a. The data in the specification also demonstrates that the effect is fulfilled over the full scope of the subject matter of claim 22 and dependent claims thereof.
The Examiner respectfully disagrees. First, the prior art is not required to seek out the same benefits as Applicant for a prima facie case of obviousness. “A claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, appellant’s recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art”. In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991). Further, the strongest rationale [for combining references] is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95 (Fed. Cir. 1983). In the instant case, Tsuchimura teaches formula (I) in which substituent B can be chosen from a number of groups considered equally suitable for the sought invention [0073]. Tsuchimura also teaches a reason to make additional compounds/compositions than those exemplified [0074], [0077], and [0009]. It is also well known in the art to make simple substitutions of various components for compounds a general formula. Therefore, it would have been obvious to one of ordinary skill in the art to arrive at the instant claims based on the entire disclosure of Tsuchimura through routine experimentation with a reasonable expectation of success. Second, comparative compound CE2 is not an appropriate comparison since the carbonyl group (C=O) is missing between the ring and the nitrogen atom whereas all of Tsuchimura’s inventive compounds have the carbonyl group. Nevertheless, as pointed out in the remarks of the previous Office Action, the results provided would be expected based on the structural similarity of the claimed compounds and the comparative compounds. Further, claim 22 is directed to a compound while the specification provides data for compositions comprising additional components as previous noted. A photoinitiator can be used in various applications so the data provided is not commensurate in scope with claim 22. The data is also not commensurate in scope with claim 22 regarding formulae (II), (III), and/or (IV)). Specifically, 48 of the 53 remaining compounds that read on claim 22 are representative of formula (I) (i.e. compounds OE1 to OE27, OE30, OE32(E) and (Z), OE35, OE37-45, and OE47-OE53), 1 compound reads on formula (II) (i.e. compound OE29), 1 compound reads on formula (III) (i.e. compound OE31), and 3 compounds read on formula (IV) (i.e. compounds OE34, OE46, and OE54). Therefore, the data cannot provide enough evidence that additional compounds would in fact provide similar results.
Applicant also argues a person skilled in the art starting from Tsuchimura and looking for photoinitiators that yield color filters of high brightness, would not be motivated to replace the groups such as hydrogen, O-phenyl and O-methyl in the described and exemplified specific compounds of Tsuchimura and by doing so arrive at the compounds of formula (I) and form dimers of formula (II) or (III) or (IV). Although Tsuchimura indicates in the description that the Z group can be selected from a long list of substituents which include acetyloxy, propionyloxy or benzoyloxy [0073], Tsuchimura does not give a hint anywhere that the use of these Z groups lead to compounds that yield color filters of increased brightness. Tsuchimura also does not mention dimeric structures at all. Therefore, Tsuchimura does not render obvious the compounds of formula (I), (II), (III), and (IV) of claim 22.
The Examiner respectfully disagrees. The prior art is not required to provide explicit motivation to choose from each and every embodiment disclosed therein. DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 80 USPQ2d 1641 (Fed. Cir 2006) recites “The motivation need not be found in the references [sought to be combined], but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.” In the instant case, the motivation comes from the prior art as a whole. Specifically, the invention of Tsuchimura is directed to compounds of formula (I), specifically formula (II), in which all defined groups are considered equally part of the sought invention. The object of Tsuchimura’s invention is to provide photopolymerizable composition for color filers which, even with a high colorant concentration, is capable of curing with high sensitivity, has good pattern forming property and is excellent in removability of an uncured part, a color filter which has a colored pattern of a good shape and suppresses occurrence of residues in a region where the colored pattern is not formed, a production method by which the color filter can be produced with high productivity, and a solid state imaging device including the color filter [abstract]. Thus, one of ordinary skill in the art would consider the entire disclosure of Tsuchimura along with the instinctive desire to obtain additional compounds inclusive of their invention and arrive at the instant claims through routine experimentation of substituting equally suitable groups with a reasonable expectation of success. The Examiner would also like to note that the instant claims do not require four compounds, i.e. a compound of formula (I), a compound of formula (II), a compound of formula (III), and a compound of formula (IV). The previous and current rejections are only directed to compounds of formula (I) and has never indicated that Tsuchimura is obvious over compounds of formulae (II), (III), and/or (IV).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP2011074042 and WO02100903.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737