DETAILED ACTION
Claims 24-40, 42, and 43 are pending. Claims 24-27, 35, and 40 have been amended, claims 1-23 and 41 have been canceled, and claim 43 has been added.
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 Objections
Claims 24, 25, and 43 are objected to because of the following informalities: The Examiner reminds the Applicant: All claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. The changes in any amended claim must be shown by strike-through (for deleted matter) or underlining (for added matter) with 2 exceptions: (1) for deletion of five or fewer consecutive characters, double brackets may be used (e.g., [[eroor]]); (2) if strike-through cannot be easily perceived (e.g., deletion of number "4" or certain punctuation marks), double brackets must be used (e.g., [[4]]). As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as). See MPEP 714.
Claims 24 and 25 have been amended to omit certain definitions but has failed to strike-though the appropriate deleted matter. Claim 24 recites “R3a is C1-C20alkyl substituted by one or more COOR4a, or by one or more C6-C20aryl” which should instead recite --R3a is C1-C20alkyl substituted by one or more COOR4a, or by one or more C6-C20aryl--. Claim 24 also recites “COOR4a,;” in which the comma should be omitted. Claim 24 further recites “R4’ is –(CO)- -;” in which the extra dash and space should be omitted. Claim 24 also recites “M’’ is C6-C20arylene” in which the numbers should be subscript. Claim 25 recites “R3a is C1-C20alkyl substituted by one or more COOR4a, or by one or more C6-C20aryl” which should instead recite --R3a is C1-C20alkyl substituted by one or more COOR4a, or by one or more C6-C20aryl--. Claim 25 also recites “R3a is C6-C20aryll” which has an extra l. Claim 43 recites each of the R groups without the appropriate superscript, e.g. “R1” should be --R1--. Claim 43 also recites the number of carbon atoms in each group without the appropriate subscript, e.g. “C1-C20alkyl” should be --C1-C20alkyl--. Appropriate correction is required.
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 42 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 42 depends from canceled claim 22 and recites to “formula I, II, III, or IV” but should instead depend from claim 24 and recite --formula Ib, IIb, IIIb, or IVb--. 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.
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 24-38, 40, 42, and 43 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]:
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[0069] wherein B can be a phenyl group [0057], R can be
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[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 (Ib) of instant claims 24, 25, and 43 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.Pigment Red 254 (solid content: 15%) Pigment content in solid content: Pigment dispersion liquid of 60% 26.7 parts by mass and colorant C.I.Pigment Yellow 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] but 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 June 10, 2026, the 102(a)(1) rejection over Tsuchimura ‘334 and 103 rejections over Tsuchimura ‘334 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 cancelation of claims 22 and 23 and amendment to claim 24.
Applicant's arguments regarding the 103 rejection over Tsuchimura ‘921, and further in view of Nishmae, have been fully considered but they are not persuasive. Applicant argues none of the specific compounds described in Tsuchimura ‘921 carries a group corresponding to a group Z in general formula (II) which is an OR4 group in present invention. Thus, the compound (Ib) of claim 24 differs from the specific compound described in Tsuchimura ‘921 [0078-0101]. Tsuchimura ‘921 teaches that the presence of the Z group has no particular importance, and a person skilled in the art is not motivated to in particular choose one Z group instead of no Z group. And even if a person skilled in the art chooses one Z group, Tsuchimura ‘921 does not motivate that person skilled in the art to place this one Z group in the para-position as Tsuchimura ‘921 is silent on the position of the Z group. In addition, the table provided shows that compounds carrying an OR4 group where R4 is (CO)-R3a where R3a is not as defined in claim 24 in the para-position, yield color filters having a brightness of less than 1.47 (should be 10.47). Thus, the present invention is not obvious with regard to Tsuchimura ‘921.
The Examiner respectfully disagrees. First, the prior art is not required to disclose a specific example for each embodiment disclosed therein. “Analysis [of whether the subject matter of claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 82 USPQ2d 1385 (2007) (quoting In re Kahn, 78 USPQ2d 1329 (Fed. Cir. 2006)). In re Hoeschelle, 160 USPQ 809 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 82 USPQ2d at 1396. In the instant case, the motivation comes from routine experimentation based on the substitution of equally suitable groups, i.e. group Z, to obtain additional embodiments than those specifically exemplified in order to achieve the optimal properties sought therein. Tsuchimura ‘921 teaches both the inclusion and exclusion of Z as part of their invention and the positioning can be anywhere but primarily shown in both the ortho- and para-positions. Thus, Tsuchimura ’921 provides adequate representation for one of ordinary skill in the art to make additional selections similar in nature, i.e. substituting an acyloxy group in the para-position for the phenyl group in the para-position on specific compound disclosed in [0083], and arrive at the instant claims. Furthermore, the prior art is not required to seek out the same benefits as Applicant for a prima facie case of obviousness. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). “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). The fact that Tsuchimura ‘921 does not teach the effect the photoinitiator has on brightness does not discredit it from being used as prior art, especially for compound claims. While Tsuchimura ‘921 is directed to compositions used for color filters, claims 24 is merely directed to a compound which can be used for numerous applications, see e.g. pages 48-49 of the instant specification. Secondly, 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 ‘921 teaches formula (I) in which substituent Z can be chosen from a number of groups considered equally suitable for the sought invention [0073]. Tsuchimura ‘921 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 ‘921 through routine experimentation with a reasonable expectation of success. Additionally, as pointed out in the remarks of the previous two Office Actions, the results provided in the specification would be expected based on the structural similarity of the claimed compounds and the comparative compounds (and original inventive compounds which are now “comparative”). That is, the values provided for brightness are very close that one of ordinary skill in the art would consider them to be well within the standard deviation for structurally similar compounds. The specification also fails to make any summation statements regarding the brightness values for the claimed compounds over the comparative compounds but simply that a “larger Y value indicates higher brightness”. This does not provide enough evidence that all of Applicant’s claimed compounds are in fact superior to other compounds in the prior art or whether a value of higher than 10.47, as pointed out by Applicant in their remarks, is significant. Further, claim 24 is directed to a compound while the specification provides data for photopolymerizable compositions comprising additional components as previously noted. A photoinitiator can be used in various applications so the data provided is not commensurate in scope with claim 24, see e.g. pages 48-49 of the instant specification. The data is also not commensurate in scope with claim 24 regarding formulae (IIb), (IIIb), and/or (IVb)). Specifically, 44 of the 49 remaining compounds that read on claim 24 are representative of formula (Ib) (i.e. compounds OE1 to OE11, OE14-OE27, OE30, OE32(E) and (Z), OE35, OE38-OE45, OE47-OE49, and OE51-OE53), 1 compound reads on formula (IIb) (i.e. compound OE29), 1 compound reads on formula (IIIb) (i.e. compound OE31), and 3 compounds read on formula (IVb) (i.e. compounds OE34, OE46, and OE54). The data cannot provide enough evidence that all compounds meeting the claimed limitations would in fact provide similar results. Thus, the results provided do not provide enough evidence of “superior” results over the teachings of Tsuchimura ‘921 and therefore the rejection is maintained.
Due to the amendment of instant claim 25, the 112(d) rejection has been withdrawn.
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 ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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