DETAILED ACTION
Claims 1-6 and 8-14 are pending. Claims 1-3, 5, 6, 11, and 14 have been amended and claim 7 has been 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 .
Response to Amendment
Upon further review, claim 7 (now claims 1 and 14) should have been rejected over Shimada modified by Maeda together with previously cited prior art Sakaguchi and/or newly cited prior art Tsujimura.
Therefore, this action is Non-Final.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-11, and 16-24 of copending Application No. 17/812,768 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to an infrared cut filter comprising a film containing a cyanine dye having a polymethine and nitrogen-containing heterocyclic cation and a tris(pentafluoroethyl)trifluorophosphate anion and a copolymer including a glycidyl (meth)acrylate repeating unit, a phenolic hydroxyl-containing repeating unit, and a repeating unit having an aromatic or alicyclic ring-containing (meth)acrylate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. A Notice of Allowance was mailed February 10, 2026.
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 § 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 1-3 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsugawa (U.S. 2005/0163958) in view of Maeda et al. (WO2017098996). Translation provided by Applicant.
Nakatsugawa teaches the optical filter according to the present invention most basically comprises a near infrared absorptive laminate 4 having a laminate structure comprising a near infrared absorptive layer 3 provided on a transparent substrate 2 [0056] and the near infrared absorptive layer 3 is basically formed of a transparent binder resin containing a near infrared absorptive colorant capable of absorbing a near infrared radiation [0061]. Nakatsugawa also teaches the acrylic resin as the binder resin used in the near infrared absorptive layer 3 is a highly transparent resin having a birefringence value of 0 to 15 nm [0078], the average molecular weight of the acrylic resin as the binder resin in the near infrared absorptive layer of the optical filter according to the present invention is preferably 500 to 600000, more preferably 10000 to 400000. When the average molecular weight is in the above-defined range, the above properties such as transparency, weathering resistance, moldability, and tensile strength are excellent [0080] (claim 10), and when an acrylic resin is used, preferably, the acrylic resin used contains a substituent of which the content of carbon and hydrogen free from a lone electron pair is high, from the viewpoint of enhancing the level of water vapor barrier property. This substituent can be realized by incorporating a bulky alicyclic or aromatic ring group in a molecular structure of the acrylic resin. An example of the acrylic resin containing an alicyclic or aromatic ring group is an acrylic resin comprising constituent units represented by general formula (1) [0091-0092]:
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[0015] wherein representative examples of preferred constituent units of the alicyclic acrylic resin in the case where the substituent R2 in the acrylic resin is an alicyclic group include isobornyl methacrylate [0094] and representative examples of preferred constituent units of the aromatic-substituted acrylic resin in the case where the substituent R2 in the acrylic resin is an aromatic ring group include benzyl methacrylate [0095] which are equivalent to a third repeating unit represented by formula (3) of instant claim 6 when R7 is a methyl group, R8 is a single bond, and R9 is an alicyclic structure having 11 carbon atoms and a third repeating unit represented by formula (2) of instant claim 5 when R4 is a methyl group, R5 is a linear alkylene having 1 carbon atom, and R6 us a hydrogen atom respectively. Nakatsugawa further teaches in order to suppress a lowering in mechanical strength such as breaking strength at bending, the acrylic resin used in the present invention may be prepared by copolymerizing the above constituent unit with other monomer component other than the above constituent unit. Such copolymerizable other monomer components are not particularly limited so far as they do not sacrifice the transparency, birefringence, heat resistance, and low hygroscopicity of the optical polymer. Examples thereof include glycidyl acrylate and hydroxyethyl acrylate among others [0096-0097] which are equivalent to a first repeating unit represented by formula (1) of instant claims 1 and 2 when R1 is a hydrogen atom, R2 is a linear alkylene group having 1 carbon atom, and R3 is an epoxy group and a second repeating unit of instant claims 1 and 3 having an acidic functional group that reacts with the cyclic ether group respectively. Nakatsugawa also teaches the acrylic resin used in the near infrared absorptive layer of the optical filter according to the present invention can be produced by providing preferably 5 to 100 parts by mass, more preferably 5 to 95 parts by mass, still more preferably 10 to 70 parts by mass, most preferably 20 to 40 parts by mass, based on the whole amount (100 parts by mass) of the monomer component, of an alicyclic group- or aromatic ring group-containing (meth)acrylic resin monomer component, providing preferably 95 to 0 (zero) part by mass, more preferably 95 to 5 parts by mass, still more preferably 90 to 30 parts by mass, most preferably 80 to 60 parts by mass, of a (meth)acrylic resin monomer component which is copolymerizable with the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin component and is other than described above, and copolymerizing both the above monomers or homopolymerizing only the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin monomer component. The reason why the amount of the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin monomer incorporated is preferably 5 to 100 parts by mass based on 100 parts by mass of the total amount of the monomer component, is that, when the amount of the monomer incorporated is less than 5 parts by mass, in some cases, an increase in birefringence value or an increase in hygroscopicity occurs. When the amount of the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin monomer incorporated exceeds 95 parts by mass, mechanical strength such as breaking strength at bending is sometimes lowered. On the other hand, the reason why the amount of the (meth)acrylic resin monomer, which is copolymerizable with the alicyclic group- or aromatic ring group-containing (meth)acrylic resin monomer and is other than described above, incorporated is preferably 95 to 0 part by mass based on 100 parts by mass of the total amount of the monomer component is that, when the amount of the copolymerizable monomer incorporated exceeds 95 parts by mass, in some cases, a lowering in heat resistance or an increase in birefringence occurs. When the amount of the copolymerizable monomer incorporated is 0 (zero), in some cases, the regulation of the heat resistance or the hygroscopicity is sometimes difficult [0101-0103] which overlap the instant claimed ranges of 7.5% by weight – 17.5% by weight of the first repeating unit and 65% by weight or higher of the third repeating unit as well as ratio by weight of the second repeating unit to the first repeating unit of 1.0-3.0. (claims 7 and 8). Nakatsugawa further teaches preferably, the glass transition temperature of the acrylic resin is, for example, 80 to 150°C [0021] (claim 9). Nakatsugawa also teaches specific examples of inorganic near infrared absorptive colorants usable as the near infrared absorptive colorant include cyanine compounds among others [0066].
Nakatsugawa does not teach a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion.
However, Maeda et al. teaches a thermosetting resin composition for wavelength cut filters [0001] containing a cationic dye (A), a cationically polymerizable organic substance (B), and a thermal acid generator (C) [0010] in which a specific example of the cationic dye (A) includes A-17: Compound No. 37 and tris(pentafluoroethyl)trifluorophosphate [0102] in which compound No. 37 is the following:
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[JP 0039] which is equivalent to a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion of instant claim 1. 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, Nakatsugawa and Maeda teach cyanine dyes suitable for use in infrared cut filters.
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 teachings of Nakatsugawa to include other known cyanine dyes such as those taught by Maeda et al. and arrive at the instant claims through routine experimentation of substituting equally suitable dyes for the sought invention with a reasonable expectation of success.
With regard to claim 11, Nakatsugawa does not teach a percentage MM/MS x 100 is 20% or lower where MM is a mass of monomers derived from the first and second repeating units and MS is a sum of a mass of the copolymer and the mass of monomers derived from the first and second repeating units.
However, it is desirable to minimize the amount of unreacted monomer because unreacted monomers can be toxic, and their presence can destabilize the polymer and reduce its lifespan.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have pushed the polymerization reaction to completion, i.e. MM/MS x 100 = 0%, thereby reducing the amount of the monomer represent in the resulting polymer through routine experimentation and arrive at the instant claims with a reasonable expectation of success.
With regard to claims 12 and 13, Nakatsugawa teaches the antireflective layer which may be added to the near infrared absorptive laminate 4 is typically such that a high-refractive index layer and a low-refractive index layer are stacked in that order. Other laminate structure may also be adopted. The high-refractive index layer is, for example, a thin film of a material such as ZnO and TiO2, or a transparent resin film in which fine particles of these materials have been dispersed. On the other hand, the low-refractive index layer is a thin film of SiO2, a film of SiO2 gel, or a fluorine-containing or fluorine- and silicon-containing transparent resin film [0144] in which the low-refractive index layer is equivalent to a barrier layer that suppresses transmission of an oxidation source of instant claim 12. Nakatsugawa also teaches an optical filter was disposed on the front face of a plasma display [0171].
Nakatsugawa does not explicitly teach a photoelectric conversion device.
However, Maeda et al. teaches when the cured product obtained by curing the thermosetting resin composition of the present invention is used as a wavelength cut filter, the main applications include heat ray cut filters attached to window glass of automobiles and buildings; digital still cameras, digital videos. Visibility correction for solid-state imaging devices such as CCD and CMOS in solid- state imaging devices such as cameras, surveillance cameras, in-vehicle cameras, web cameras, and mobile phone cameras; automatic exposure meters; display devices such as plasma displays, etc. [0083].
Claim 1 recites “An infrared cut filter, comprising: a film” which refers to the use of the film. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Thus, the near infrared absorptive laminate of Nakatsugawa is the same as the instantly claimed infrared cut filter comprising a film.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nakatsugawa (U.S. 2005/0163958) in view of Maeda et al. (WO2017098996) as applied to claim 1 above, and further in view of Sakaguchi et al. (U.S. 2015/0338556).
With regard to claim 4, Nakatsugawa teaches an acrylic resin comprising hydroxyethyl acrylate as the second repeating unit having an acidic functional group that reacts with the cyclic ether group.
Nakatsugawa modified by Maeda do not teach the functional group is a phenolic hydroxyl group.
However, Sakaguchi et al. teaches a non-photosensitive resin composition including: a self-cross-linkable copolymer having structural units of Formulae (1) and (2) [abstract] in which specific examples of the compound (monomer) that forms a structural unit of Formula (1) include 2-hydroxyphenyl(meth)acrylate [0023] which is equivalent to a second repeating unit having a phenolic hydroxyl functional group that reacts with the cyclic ether group of the first repeating unit; and a specific example of the compound (monomer) that forms a structural unit of Formula (2) include monomers of Formulae (2-3) to (2-18) [0024] such as the following Formula (2-3):
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[0024] which is equivalent to a first repeating unit represented by formula (1) of instant claim 1 and Nakatsugawa’s glycidyl acrylate. Sakaguchi et al. also teaches the copolymer contained in the non-photosensitive resin composition of the present invention may further contain at least one of structural units of Formulae (3) to (6) in addition to the structural units of Formulae (1) and (2) [0025] where specific examples of the compound (monomer) that forms a structural unit of Formula (4) include isobornyl(meth)acrylate and benzyl(meth)acrylate [0027] which are equivalent to the third repeating units of instant claims 6 and 5 respectively and Nakatsugawa’s general formula (1). Sakaguchi et al. further teaches a cured film, a protection film, a planarizing film, and a microlens, which are formed from the non-photosensitive resin composition [0001]. Sakaguchi et al. also teaches an object of the present invention to provide a resin composition capable of forming a cured film having excellent chemical resistance, heat resistance, transparency, and planarization properties. It is another object of the present invention to provide a microlens having excellent chemical resistance, heat resistance, and transparency [0011]. Furthermore, 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, Nakatsugawa, Maeda, and Sakaguchi are directed to thermosetting resins and their use in electronic devices.
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 teachings of Nakatsugawa and Maeda to include a hydroxyphenyl (meth)acrylate repeating unit as taught by Sakaguchi et al. and arrive at the instant claims through routine experimentation of combining equally suitable components for the sought invention in order to achieve excellent chemical resistance, heat resistance, transparency, and planarization properties.
Claims 1-6 and 9-14 is rejected under 35 U.S.C. 103 as being unpatentable over Shimada et al. (U.S. 2017/0317131) in view of Sakaguchi et al. (U.S. 2015/0338556) and Maeda et al. (WO2017098996). Translation provided by Applicant.
Shimada et al. teaches a solid-state imaging device that includes: first pixels provided with a color filter layer having a transmission band in a visible light wavelength region on a light-receiving surface of a first light-receiving element; second pixels provided with an infrared pass filter layer having a transmission band in an infrared wavelength region on a light-receiving surface of a second light-receiving element; and an infrared cut filter layer that is provided on a lower surface side of the color filter layer and transmits light in the visible light wavelength region by blocking light in the infrared wavelength region; wherein the infrared cut filter layer is formed with an infrared-absorbing composition containing a compound having a maximum absorption wavelength in an wavelength range of from 600 to 2000 nm, and at least one kind selected from a binder resin and a polymerizable compound [abstract] and a method of forming the infrared cut filter layer 142 by using the infrared-absorbing composition will be described step by step. The infrared cut filter layer 142 according to an embodiment of the present invention may be formed by sequentially carrying out the following steps from (1) to (4) or by carrying out steps including step (1) and step (4) followed by carrying out a step (5). (1) A step of forming a coated film by coating the infrared-absorbing composition of the present invention on a substrate, (2) a step of irradiating radiation on at least a part of the coated film, (3) a step of developing the coated film (developing step), (4) a step of heating the coated film (heating step), and (5) a step of removing a part of an infrared cut filter layer obtained in the step (4) [0135-0140] wherein the step (5) is a step for partially removing the infrared cut filter layer obtained in the step (4). For example, in the case where the infrared-absorbing composition that does not have the alkali developability is applied over an entire surface of the substrate in the step (1), after the step (4), an infrared cut filter layer that does not have an opening is formed. Thus, by the step (5), an opening may be provided on a part corresponding to the infrared pass filter layer 140. Specifically, a photoresist layer is formed on the infrared cut filter layer obtained in the step including the step (1) and the step (4), the photoresist layer is pattern-wisely removed to form a resist pattern, followed by etching by dry etching with the resist pattern as an etching mask, and the resist pattern remaining after the etching is removed. Thus, a part of the infrared cut filter layer may be removed [0152] (claim 14). Shimada et al. also teaches the infrared-absorbing composition preferably contains the binder resin. The binder resin is not particularly limited, but at least one kind selected from the group consisting of an acrylic resin, a polyimide resin, a polyamide resin, a polyurethane resin, an epoxy resin and polysiloxane is preferable. First, the acrylic resin will be described. Among the acrylic resins, acrylic resins having an acidic functional group such as a carboxyl group and a phenolic hydroxyl group are preferable. As the acrylic resin having the acidic functional group, a polymer having a carboxyl group (hereinafter, referred to also as “carboxyl group-containing polymer”) is preferable, for example, a copolymer of an ethylenically unsaturated monomer having one or more carboxyl groups (hereinafter, referred to also as “unsaturated monomer (1)”) and another copolymerizable ethylenically unsaturated monomer (hereinafter, referred to also as “unsaturated monomer (2)”) may be used [0070-0071] examples of the unsaturated monomer (2) described above include aryl (meth)acrylates such as benzyl (meth)acrylate, (meth)acrylic acid esters of aryl alcohol such as 4-hydroxyphenyl (meth)acrylate, and (meth)acrylic esters having an alicyclic hydrocarbon group such as isobornyl (meth)acrylate [0073]; further, as the unsaturated monomer (2), (meth)acrylic acid ester having an oxygen-containing saturated heterocyclic group may be also used [0074] and examples include glycidyl (meth)acrylate [0075] and these unsaturated monomers (2) may be used singularly or in a combination of two or more kinds thereof [0077] in which glycidyl (meth)acrylate is equivalent to a first repeating unit represented by formula (1) of instant claims 1, 2, and 14 when R1 is a hydrogen atom or a methyl group, R2 is a linear alkylene group having one carbon atom, and R3 is a cyclic ether group having an oxygen atom an a plurality of carbon atoms; hydroxyphenyl (meth)acrylate is equivalent to a second repeating unit having an acidic phenolic hydroxyl functional group that reacts with the cyclic ether group of instant claims 1, 3, 4, and 14; benzyl (meth)acrylate is equivalent to a third repeating unit represented by formula (2) of instant claim 5 when R4 is a hydrogen atom or a methyl group, R5 is a linear alkylene group having 1 carbon atom, and R6 is a hydrogen atom; and isobornyl (meth)acrylate is equivalent to a third repeating unit represented by formula (3) of instant claim 6 when R7 is a hydrogen atom or a methyl group, R8 is a single bond, and R9 is an alicyclic structure having 11 carbon atoms.
Shimada et al. does not teach the copolymer has the first repeating unit at 7.5% by weight to 17.5% by weight and ratio by weight of the second repeating unit to the first repeating unit is 1.0 to 3.0.
However, Sakaguchi et al. teaches a non-photosensitive resin composition and to a cured film, a protection film, a planarizing film, and a microlens [0001] in which the non-photosensitive resin composition comprises a self-crosslinkable copolymer having structural units of Formula (1) and Formula (2) [0012]:
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[0012] wherein specific examples of the compound (monomer) that forms a structural unit of Formula (1) include 2-hydroxyphenyl(meth)acrylate [0023] which is equivalent to a second repeating unit of instant claims 1, 3, 4, and 14 which has an acid phenolic hydroxyl group that reacts with the cyclic ether group; and specific examples of the compound (monomer) that forms a structural unit of Formula (2) include monomers of Formulae (2-3) to (2-18) [0024] such as the following formula (2-3):
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[0024] which is equivalent to a first repeating unit represented by formula (1) of instant claims 1, 2, and 14 when R1 is a hydrogen atom, R2 is an alkylene group having 1 carbon atom, and R3 is an epoxy group. Sakaguchi et al. also teaches the copolymer contained in the non-photosensitive resin composition of the present invention may further contain at least one of structural units of Formulae (3) to (6) in addition to the structural units of Formulae (1) and (2). By controlling the content of structural unit(s) of Formulae (3) to (6), optical characteristics, a dry etching rate, thermal characteristics, and level difference planarization properties of the cured film can be controlled over a broader range [0025] where specific examples of the compound (monomer) that forms a structural unit of Formula (4) include isobornyl(meth)acrylate and phenyl(meth)acrylate [0027] which are equivalent to a third repeating unit represented by formula (3) and formula (4) respectively of instant claims 1, 5, 6, and 14 when R4 is a hydrogen atom or a methyl group, R5 is a single bond, and m is 0; and R7 is a hydrogen atom or a methyl group, R8 is a single bond, and R9 is an alicyclic structure having 9 carbon atoms. Sakaguchi et al. further teaches in the copolymer having structural units of Formula (1) and Formula (2), and further having at least one of structural units of Formulae (3) to (6), a content of the structural unit of Formula (1) is 5 mol % to 90 mol %, preferably 10 mol % to 80 mol %, a content of the structural unit of Formula (2) is 5 mol % to 90 mol %, preferably 10 mol % to 80 mol %, and a content of at least one of structural units of Formulae (3) to (6) (in cases where two or more of the structural units are contained, a total content of these structural units) is 5 mol % to 90 mol %, preferably 10 mol % to 80 mol %, relative to a total content of the structural unit of Formula (1), the structural unit of Formula (2), and the at least one of structural units of Formulae (3) to (6) as 100 mol %. A weight-average molecular weight of the copolymer is typically 1,000 to 100,000, preferably 3,000 to 50,000 [0030-0031] (claim 10). Although the amounts of each repeating unit is in mol% instead of % by weight, the amounts would still overlap with the instant claims as would the ratio by weight of the second repeating unit to the first repeating unit (claims 1, 8, and 14). The copolymer of Sakaguchi et al. is the same as instantly claimed, therefore it is expected to have a glass transition temperature of 75°C or higher, absent any evidence to the contrary (claim 9). Further, 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, Shimada and Sakaguchi are directed to thermosetting resins and their use in electronic devices.
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 teachings of Shimada et al. to include other known copolymers such as that taught by Sakaguchi et al. and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention in order to control optical characteristics.
Shimada et al. also teaches as the infrared-absorbing agent, at least one kind of compound selected from the group consisting of cyanine-based compounds among others [0039].
Shimada modified by Sakaguchi do not teach a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion.
However, Maeda et al. teaches a thermosetting resin composition for wavelength cut filters [0001] containing a cationic dye (A), a cationically polymerizable organic substance (B), and a thermal acid generator (C) [0010] in which a specific example of the cationic dye (A) includes A-17: Compound No. 37 and tris(pentafluoroethyl)trifluorophosphate [0102] in which compound No. 37 is the following:
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[JP 0039] which is equivalent to a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion of instant claim 14. 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, Shimada and Maeda teach cyanine dyes suitable for use in infrared cut filters.
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 teachings of Shimada modified by Sakaguchi to include other known cyanine dyes such as those taught by Maeda et al. and arrive at the instant claims through routine experimentation of substituting equally suitable dyes for the sought invention with a reasonable expectation of success.
With regard to claim 11, Shimada modified by Sakaguchi do not teach a percentage MM/MS x 100 is 20% or lower where MM is a mass of monomers derived from the first and second repeating units and MS is a sum of a mass of the copolymer and the mass of monomers derived from the first and second repeating units.
However, it is desirable to minimize the amount of unreacted monomer because unreacted monomers can be toxic, and their presence can destabilize the polymer and reduce its lifespan.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have pushed the polymerization reaction to completion, i.e. MM/MS x 100 = 0%, thereby reducing the amount of the monomer represent in the resulting polymer through routine experimentation and arrive at the instant claims with a reasonable expectation of success.
With regard to claims 12 and 13, Shimada modified by Sakaguchi do not teach a barrier layer or explicitly teach a photoelectric conversion device.
However, Maeda et al. teaches the wavelength cut filter has a coating layer (I) made of a cured product of the thermosetting resin composition on one side of a glass substrate (H) and an infrared reflective film (J) [0085] in which the infrared reflective film (J) has the function of blocking light in the wavelength range of 700 to 1200 nm and has a low refractive index layer and a high refractive index layer [0093] and as the low refractive index layer, a material having a refractive index of 1.2 to 1.6 can be used, such as silica [0094] which is equivalent to a barrier layer that suppresses transmission of an oxidation source that oxidizes the infrared cut filter. Maeda et al. also teaches when the cured product obtained by curing the thermosetting resin composition of the present invention is used as a wavelength cut filter, the main applications include heat ray cut filters attached to window glass of automobiles and buildings; digital still cameras, digital videos. Visibility correction for solid-state imaging devices such as CCD and CMOS in solid-state imaging devices such as cameras, surveillance cameras, in-vehicle cameras, web cameras, and mobile phone cameras; automatic exposure meters; display devices such as plasma displays, etc. [0083]. Furthermore, 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, Shimada, modified by Sakaguchi, and Maeda are directed to thermosetting resins and their use in electronic devices.
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 teachings of Shimada modified by Sakaguchi to include additional components such as those taught by Maeda and arrive at the instant claims though routine experimentation of combining equally suitable components for the sought invention with a reasonable expectation of success.
Claims 1-5 and 9-14 is rejected under 35 U.S.C. 103 as being unpatentable over Shimada et al. (U.S. 2017/0317131) in view of Tsujimura et al. (U.S. 2015/0175729) and Maeda et al. (WO2017098996). Translation provided by Applicant.
Shimada et al. teaches a solid-state imaging device that includes: first pixels provided with a color filter layer having a transmission band in a visible light wavelength region on a light-receiving surface of a first light-receiving element; second pixels provided with an infrared pass filter layer having a transmission band in an infrared wavelength region on a light-receiving surface of a second light-receiving element; and an infrared cut filter layer that is provided on a lower surface side of the color filter layer and transmits light in the visible light wavelength region by blocking light in the infrared wavelength region; wherein the infrared cut filter layer is formed with an infrared-absorbing composition containing a compound having a maximum absorption wavelength in an wavelength range of from 600 to 2000 nm, and at least one kind selected from a binder resin and a polymerizable compound [abstract] and a method of forming the infrared cut filter layer 142 by using the infrared-absorbing composition will be described step by step. The infrared cut filter layer 142 according to an embodiment of the present invention may be formed by sequentially carrying out the following steps from (1) to (4) or by carrying out steps including step (1) and step (4) followed by carrying out a step (5). (1) A step of forming a coated film by coating the infrared-absorbing composition of the present invention on a substrate, (2) a step of irradiating radiation on at least a part of the coated film, (3) a step of developing the coated film (developing step), (4) a step of heating the coated film (heating step), and (5) a step of removing a part of an infrared cut filter layer obtained in the step (4) [0135-0140] wherein the step (5) is a step for partially removing the infrared cut filter layer obtained in the step (4). For example, in the case where the infrared-absorbing composition that does not have the alkali developability is applied over an entire surface of the substrate in the step (1), after the step (4), an infrared cut filter layer that does not have an opening is formed. Thus, by the step (5), an opening may be provided on a part corresponding to the infrared pass filter layer 140. Specifically, a photoresist layer is formed on the infrared cut filter layer obtained in the step including the step (1) and the step (4), the photoresist layer is pattern-wisely removed to form a resist pattern, followed by etching by dry etching with the resist pattern as an etching mask, and the resist pattern remaining after the etching is removed. Thus, a part of the infrared cut filter layer may be removed [0152] (claim 14). Shimada et al. also teaches the infrared-absorbing composition preferably contains the binder resin. The binder resin is not particularly limited, but at least one kind selected from the group consisting of an acrylic resin, a polyimide resin, a polyamide resin, a polyurethane resin, an epoxy resin and polysiloxane is preferable. First, the acrylic resin will be described. Among the acrylic resins, acrylic resins having an acidic functional group such as a carboxyl group and a phenolic hydroxyl group are preferable. As the acrylic resin having the acidic functional group, a polymer having a carboxyl group (hereinafter, referred to also as “carboxyl group-containing polymer”) is preferable, for example, a copolymer of an ethylenically unsaturated monomer having one or more carboxyl groups (hereinafter, referred to also as “unsaturated monomer (1)”) and another copolymerizable ethylenically unsaturated monomer (hereinafter, referred to also as “unsaturated monomer (2)”) may be used [0070-0071] examples of the unsaturated monomer (2) described above include aryl (meth)acrylates such as benzyl (meth)acrylate, (meth)acrylic acid esters of aryl alcohol such as 4-hydroxyphenyl (meth)acrylate, and (meth)acrylic esters having an alicyclic hydrocarbon group such as isobornyl (meth)acrylate [0073]; further, as the unsaturated monomer (2), (meth)acrylic acid ester having an oxygen-containing saturated heterocyclic group may be also used [0074] and examples include glycidyl (meth)acrylate [0075] and these unsaturated monomers (2) may be used singularly or in a combination of two or more kinds thereof [0077] in which glycidyl (meth)acrylate is equivalent to a first repeating unit represented by formula (1) of instant claims 1, 2, and 14 when R1 is a hydrogen atom or a methyl group, R2 is a linear alkylene group having one carbon atom, and R3 is a cyclic ether group having an oxygen atom an a plurality of carbon atoms; hydroxyphenyl (meth)acrylate is equivalent to a second repeating unit having an acidic phenolic hydroxyl functional group that reacts with the cyclic ether group of instant claims 1, 3, 4, and 14; benzyl (meth)acrylate is equivalent to a third repeating unit represented by formula (2) of instant claim 5 when R4 is a hydrogen atom or a methyl group, R5 is a linear alkylene group having 1 carbon atom, and R6 is a hydrogen atom; and isobornyl (meth)acrylate is equivalent to a third repeating unit represented by formula (3) of instant claim 6 when R7 is a hydrogen atom or a methyl group, R8 is a single bond, and R9 is an alicyclic structure having 11 carbon atoms.
Shimada et al. does not teach the copolymer has the first repeating unit at 7.5% by weight to 17.5% by weight.
However, Tsujimura et al. teaches a resin film comprising a copolymer for a solid-state imaging device [abstract], specifically, Example 1 comprises 69 parts by mass of phenylphenyl methacrylate, 17 parts by mass of p-hydroxyphenyl methacrylate, 14 parts by mass of glycidyl methacrylate, 600 parts by mass of propylene glycol monomethyl ether acetate, and 10 parts by mass of dimethyl 2,2'-azobis(2-methylpropionate) were loaded into a flask provided with a reflux condenser and a stirring machine, and the air in the flask was replaced with nitrogen. After that, the temperature of the mixed liquid was increased to 80°C while the mixed liquid was stirred. The mixed liquid was subjected to a reaction at 80°C for 6 hours. The disappearance of the monomers was confirmed by gel permeation chromatography and the temperature of the resultant was increased to 100°C, followed by aging for 30 minutes. Propylene glycol monomethyl ether acetate was removed by distillation at 100°C under reduced pressure, and the solid content of the residue was adjusted to 30 mass %. Thus, a resin solution was obtained. A copolymer in the resin solution had a weight-average molecular weight (Mw) of 8,800 and a molecular weight distribution (Mw/Mn) of 3.6 [0043-0044] which is equivalent to a copolymer of instant claims 1-5, 8, 11, and 14 including a third repeating unit in an amount of 69% by weight represented by formula (2) when R4 is a methyl group, R5 is a single bond, m is 1, and R6 is a substituent; a second repeating unit in an amount of 17% by weight having an acidic phenolic hydroxyl group that reacts with the cyclic ether; and a third repeating unit a first repeating unit in an amount of 14% by weight represented by formula (1) when R1 is a hydrogen atom or a methyl group, R2 is a linear alkylene group having one carbon atom, and R3 is an epoxy group respectively where the ratio of the second repeating unit to the first repeating unit it ~1.2. Tsujimura et al. also teaches the weight-average molecular weight (Mw) of the copolymer of the present invention is preferably from 5,000 to 60,000, or more preferably from 8,000 to 50,000 calculated in terms of polystyrene. When the weight-average molecular weight is less than 5,000, the resin film may become brittle. On the other hand, when the weight-average molecular weight exceeds 60,000, the resin may not dissolve in a solvent [0033] (claim 10). The copolymer of Tsujimura et al. is the same as instantly claimed, therefore it is expected to have a glass transition temperature of 75°C or higher, absent any evidence to the contrary (claim 9). 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 Shimada and Tsujimura teach copolymers which can be used in solid-state imaging devices.
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 teachings of Shimada et al. to include a resin having the specified repeating units in the specified amounts and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention with a reasonable expectation of success.
Shimada et al. also teaches as the infrared-absorbing agent, at least one kind of compound selected from the group consisting of cyanine-based compounds among others [0039].
Shimada modified by Tsujimura do not teach a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion.
However, Maeda et al. teaches a thermosetting resin composition for wavelength cut filters [0001] containing a cationic dye (A), a cationically polymerizable organic substance (B), and a thermal acid generator (C) [0010] in which a specific example of the cationic dye (A) includes A-17: Compound No. 37 and tris(pentafluoroethyl)trifluorophosphate [0102] in which compound No. 37 is the following:
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[JP 0039] which is equivalent to a cyanine dye including a cation having a polymethine and a nitrogen-containing heterocycle at each end of the polymethine and a tri(pentafluoroethyl)trifluorophosphate anion of instant claims 1 and 14. 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, Shimada and Maeda teach cyanine dyes suitable for use in infrared cut filters.
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 teachings of Shimada et al. to include other known cyanine dyes such as those taught by Maeda et al. and arrive at the instant claims through routine experimentation of substituting equally suitable dyes for the sought invention with a reasonable expectation of success.
With regard to claims 12 and 13, Shimada modified by Tsujimura do not teach the solid-state imaging device comprises a barrier layer or explicitly teach a photoelectric conversion device.
However, Maeda et al. teaches the wavelength cut filter has a coating layer (I) made of a cured product of the thermosetting resin composition on one side of a glass substrate (H) and an infrared reflective film (J) [0085] in which the infrared reflective film (J) has the function of blocking light in the wavelength range of 700 to 1200 nm and has a low refractive index layer and a high refractive index layer [0093] and as the low refractive index layer, a material having a refractive index of 1.2 to 1.6 can be used, such as silica [0094] which is equivalent to a barrier layer that suppresses transmission of an oxidation source that oxidizes the infrared cut filter. Maeda et al. also teaches when the cured product obtained by curing the thermosetting resin composition of the present invention is used as a wavelength cut filter, the main applications include heat ray cut filters attached to window glass of automobiles and buildings; digital still cameras, digital videos. Visibility correction for solid-state imaging devices such as CCD and CMOS in solid- state imaging devices such as cameras, surveillance cameras, in-vehicle cameras, web cameras, and mobile phone cameras; automatic exposure meters; display devices such as plasma displays, etc. [0083]. Furthermore, 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, Shimada, modified by Tsujimura, and Maeda teach known solid-state imaging devices.
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 teachings of Shimada modified by Tsujimura to include additional components such as those taught by Maeda and arrive at the instant claims though routine experimentation of combining equally suitable components for the sought invention with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed December 31, 2025 have been fully considered but they are not persuasive. Applicant argues the claimed infrared cut filter including the first repeating unit at 7.5% by weight to 17.5% by weight, and a ratio of the second repeating unit to the first repeating unit is 1.0 to 3.0, is associated with unexpected improvements in infrared absorbance after heating and/or exposure to stripping liquid as demonstrated in the specification, specifically, Examples 2-2 to 2-4 and 2-7 to 2-9 exhibit improvements over Examples 2-1, 2-5, 2-6, 2-10, and 2-11. Applicant also submits that claims 1 and 14 are commensurate in scope with the examples used to demonstrate unexpected results.
The Examiner respectfully disagrees. Claims 1 and 14 require a first repeating unit represented by formula (1) in which R3 is any cyclic ether group; a second repeating unit having any functional group that reacts with the cyclic ether group; and a third repeating unit represented by formula (2) or formula (3). However, Examples 2-1 to 2-11 only use glycidyl methacrylate as the first repeating unit, hydroxyphenyl methacrylate as the second repeating unit, and phenyl methacrylate as the third repeating unit (claimed formula 2). Thus, the copolymers are not commensurate in scope with claims 1 and 14 which are much broader. The Examiner acknowledges that Examples 1-1 to 1-5 in the specification use other repeating units that meet the claimed requirements. However, the repeating units used as still too narrow to be considered commensurate in scope with broad claims 1 and 14. Therefore, Applicants arguments are unpersuasive over the rejection. Further, Nakatsugawa teaches reasons for modifying the amounts of each monomer component. Specifically, The reason why the amount of the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin monomer incorporated is preferably 5 to 100 parts by mass based on 100 parts by mass of the total amount of the monomer component, is that, when the amount of the monomer incorporated is less than 5 parts by mass, in some cases, an increase in birefringence value or an increase in hygroscopicity occurs. When the amount of the alicyclic ring group- or aromatic ring group-containing (meth)acrylic resin monomer incorporated exceeds 95 parts by mass, mechanical strength such as breaking strength at bending is sometimes lowered. On the other hand, the reason why the amount of the (meth)acrylic resin monomer, which is copolymerizable with the alicyclic group- or aromatic ring group-containing (meth)acrylic resin monomer and is other than described above, incorporated is preferably 95 to 0 part by mass based on 100 parts by mass of the total amount of the monomer component is that, when the amount of the copolymerizable monomer incorporated exceeds 95 parts by mass, in some cases, a lowering in heat resistance or an increase in birefringence occurs. When the amount of the copolymerizable monomer incorporated is 0 (zero), in some cases, the regulation of the heat resistance or the hygroscopicity is sometimes difficult [0102-0103]. Thus, one of ordinary skill in the art would be motivated to adjust the amounts of the corresponding repeating units through routine experimentation and arrive at the instant claims with a reasonable expectation of success. Therefore, the rejection is maintained.
Applicant notes that application 17/812,768 has a pending Office Action and the claims may change so Applicant requests the double patenting rejection over copending application 17/812,768 be held in abeyance until the present claims are confirmed to be otherwise in condition for allowance.
The Examiner would like to note that an amendment to application 17/812,768 was made but does not overcome the rejection. Further, a Notice of Allowance for application 17/812,768 was mailed on February 10, 2026.
Due to the amendment of instant claims 1-3, 5, 6, 11, and 14, the objections have been withdrawn.
Conclusion
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/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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