DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 4/12/23, claims 1-14 are currently pending in the application.
Applicant’s election of Group I invention (claims 1-11) in the reply filed on 11/20/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the following Chemical formula 1-1:
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wherein, u1 and u2 are independently 0 or 1.
Claim 4 is indefinite because when u1 and/or u2 = 0, the structure appears incomplete. It is not clear what specific compounds are encompassed the claimed formula.
For the purpose of examination, in view of the examples disclosed in the specification (pages 12-14), Examiner interprets the thiol compound in claim 4 as having formula 1a, 1b, 1c, 1d or 1e.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2013/0034814 A1).
Regarding claims 1-4, Cho teaches a photosensitive resin composition comprising a binder resin [0037], a photoactive compound (reads on photopolymerization initiator) [0056]-[0057], a colorant, such as phthalocyanine blue (C.I. 74160), victoria pure blue, zinc phthalocyanine etc. [0067]-[0068], a solvent [0065], a curing promoter [0062], and a silane-based compound for improving adhesion (reads on silane coupling agent) [0010]-[0021].
Disclosed genus of curing promoters include thiol compounds within the scope of the claimed invention, such as pentaerythritol-tetrakis(3-mercaptopropionate) (reads on 1a), pentaerythritol-tetrakis(2-mercaptoacetate) (reads on 1c), pentaerythritol-tris(2-mercaptoacetate), trimethylolpropane-tris(2-mercaptoacetate) (reads on 1d), and trimethylolpropane-tris(3-mercaptopropionate) (reads on (1b), said thiol compounds including at least two terminal functional groups of Formula 1 of claim 3, i.e., in the claimed group, L1=1 and L2= C1 or C2 alkylene group [0064].
Disclosed amount of the curing promoter (thiol compound) ranges from 0.01 to 10 parts by weight, based on 100 parts by weight of the photoactive compound, wherein the amount of said photoactive compound may preferably range from 0.01 to 5 wt.%, based on the total weight of the photosensitive composition [0061]-[0062].
Additionally, disclosed amount of silane-based compound may preferably range from 0.01 to 5 wt.%, based on the total weight of the photosensitive composition [0035].
Cho is silent on a composition comprising components within the scope of the claimed invention in one single embodiment as claimed.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Cho on suitable compounds and amounts thereof for preparing the photosensitive resin composition, and noting that the prescribed amount of photoactive compound is a preferred range, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a composition within the scope of the claimed invention. For instance, with the thiol compound at 5 parts per 100 parts of the photoactive compound, and with the photoactive compound at 3 wt.% of the total composition, the calculated amount of the thiol compound is ~0.15 wt.% based on the total weight of the photosensitive composition (5x3/95).
Regarding claims 5 and 6, Cho teaches a silane-based compound of Formula 1 shown below:
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Compounds encompassed by the above formula read on amino silanes of claimed Formula 2 ([0010]-[0030], TABLE 1). That is, in the claimed Formula 2, R1 = R2 = R3 = C1 alkoxy group, L3 = C3 alkylene group, R4=H, and R5=substituted C6 aryl group.
With regard to claims 7-9, disclosed binder resins include resins of copolymerized alkyl(meth)acrylates (read on acrylic resins), having wt. average molecular wt. ranging from 1,000 to 50,000, and an acid value, preferably, of 50 to 150 [0036]-0049].
Regarding claim 10, Cho teaches a binder resin at 1 to 20 wt.% [0049], a polymerizable compound at 1 to 30 wt.% [0055], a photoactive compound at 0.1 to 5 wt.% [0061], a colorant at 1 to 20 wt.% [0076], a solvent at 40-95 wt.% [0066], a silane-based compound at 0.01 to 5 wt.% [0035], said ranges being based on the total wt. of the photoactive composition. Additionally, the curing promoter (thiol compound) may be at 0.01 to 10 parts per 100 parts by wt. of the photoactive compound [0062]. Thus, the calculated range of the curing promoter is 0.00001 to 0.5 wt.% based on the total wt. of the composition, and overlaps with the claimed range.
Regarding claim 11, Cho teaches a leveling agent as an additive [0067].
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762