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 § 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 1-7, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwon et al. (US 2018/0299775).
Considering Claims 1 and 3-7: Kwon et al. teaches a resin composition comprising 8 parts of binder resin, 4 parts of a light scattering agent in a dispersion of 20 weight percent solids titanium dioxide particles, 70 parts of a solvent, 0.2 parts of a fluorine based surfactant/leveling agent, quantum dots, a photopolymerizable compound and a photopolymerizable initiator (Table 2). Therefore the binder resin is 26 parts of the solids (8/30) and the light scattering agent is 2.6 parts of the solids (0.8/30). Kwon et al. teaches an example comprising propylene glycol monomethyl ether acetate as the sole solvent, and an example comprising a 50:50 mixture of propylene glycol monomethyl ether acetate and cyclohexane (Table 2).
The examples of Kwon et al. include 3.2 parts of water in addition to the solvent discussed above. The original specification defines the solvent as not particularly limited as long as it dissolves the resin (¶0050) and does not include water in the list of suitable solvents. As such, water, which would not dissolve the acrylic resin of Kwon et al. would not be considered as solvent for the purposes of calculating the amount of solvent. Alternatively, Kwon et al. teaches that the solvent can be 50 to 90% of the composition (¶0108), which overlaps the claimed range with sufficient specificity for anticipation.
Considering Claim 2: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the viscosity and the ratio of the viscosity to the surface tension would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Kwon et al. teaches forming a film from the composition (¶0142).
Considering Claim 10: Kwon et al. teaches a display comprising the film (¶0002).
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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (US 2018/0299775) as applied to claim 1 above.
Considering Claim 8: Kwon et al. teaches the composition of claim 1 as shown above.
Kwon et al. teaches the viscosity as being controlled by the choice of binder and amount of solvent (¶0060; 0108). The viscosity would control the coating properties of the composition (¶0108) and would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have found the appropriate viscosity through routine experimentation, and the motivation to do so would have been, as Kwon et al. suggests, to provide excellent coating property when applied to a large area (¶0108).
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Kwon et al. does not teach the claimed amount of solvent, or the solvent comprising 50% by mass or more of propylene glycol monomethyl ether acetate is not persuasive. Kwon et al. teaches a resin composition comprising 8 parts of binder resin, 4 parts of a light scattering agent in a dispersion of 20 weight percent solids titanium dioxide particles, 70 parts of a solvent, 0.2 parts of a fluorine based surfactant/leveling agent, quantum dots, a photopolymerizable compound and a photopolymerizable initiator (Table 2). Kwon et al. teaches an example comprising propylene glycol monomethyl ether acetate as the sole solvent, and an example comprising a 50:50 mixture of propylene glycol monomethyl ether acetate and cyclohexane (Table 2).
The examples of Kwon et al. include 3.2 parts of water in addition to the solvent discussed above. The original specification defines the solvent as not particularly limited as long as it dissolves the resin (¶0050) and does not include water in the list of suitable solvents. As such, water, which would not dissolve the acrylic resin of Kwon et al. would not be considered as solvent for the purposes of calculating the amount of solvent. Alternatively, Kwon et al. teaches that the solvent can be 50 to 90% of the composition (¶0108), which overlaps the claimed range with sufficient specificity for anticipation.
B) The applicant’s argument of unexpected results is not persuasive. A showing of unexpected results, must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e). The examples are not analogous to the teaching of Kwon et al. and thus cannot establish unexpected results.
Further, claims 1-7, 9, and 10 are rejected under anticipation. Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP § 2131.04.
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 LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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 Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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