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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group 1, species IB, claims 1-5 and 7-22 in the reply filed on 10/01/2025 is acknowledged. The traversal is on the ground that there is no serious search burden exists for examining species IA and IB. This is not found persuasive because, as set forth in the previous office, these two species directed two chemical compounds having different chemical structures which have patentable distinction. Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 6 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-5 and 7-22 are currently under examination on the merits.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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.
Claims 14-17 are 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 pre-AIA the applicant regards as the invention.
Claim 14 is rejected as being vague and indefinite when the claim recites
“wherein a mass ratio of a content of the carbon black to a total content of the copper phthalocyanines is 4.0 to 99”, because the ratio as claimed does not match any embodiment as disclosed in the present specification as originally filed (See examples, Table 1, the ratio of carbon black to copper phthalocyanines is 18 to 1, 19.8 to 1, 15 to 1, or 13 to 1). A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) (see MPEP 2173.03). These rejection also applicable to claims 15-17.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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.
Claims 1, 7-9, 12-13 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al (JP2019082533, paragraph citation see original document, ‘533 hereafter) in view of Nabeta (JP 2016079245, ‘245 hereafter).
Regarding claims 1, 7-9 and 18, ‘533 discloses a composition for black matrix comprising a carbon black ([0012]-[0014], [0024]), a barium sulfate with particles size of 10 to 80 nm satisfying present claim 9 ([0016]), a polymerizable compound ([0024], [0026]) and a polymerization initiator ([0027]); wherein the content of the carbon black can be 24.75 wt% satisfying present claim 7 (Table 1, Example 3), and solid content can be 29.75 wt% based on total mass of the composition satisfying present claim 18. (Example 3). ‘533 does not disclose that the composition also includes a silica, however, in the same field of endeavor, ‘245 discloses a composition for black matrix comprising carbon black , silica, polymerizable compound and a polymerization initiator ([0010], [0012]-[0013], [0030], [0031], [0036]); wherein the silica with particle size is in a range of 1 to 20 nm, satisfying present claim 8, which is used to adjust taper angle and dispersion stability ([0021]). In light of these teachings, one of ordinary skill in the art would have been motivated to use silica particles as taught by 245, to modify the composition of ‘254, in order to render a composition for black matrix having well-balanced taper angle and dispersion stability.
Regarding claims 12 and 13, modified ‘533 teaches all the limitations of claim 1, ‘533 also discloses that the composition may further include a phthalocyanine-based derivative having a sulfonic acid group ([0020], copper phthalocyanine is the most common phthalocyanine-based pigments).
Regarding claims 19-22, modified ‘533 teaches all the limitations of claim 1, ‘533 also discloses a cured black film which can be used in an image display device satisfying present claims 19-22 ([0002], Examples, [0044]).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al ((JP2019082533, paragraph citation see original document, ‘533 hereafter) in view of Nabeta (JP 2016079245, ‘245 hereafter) as applied to claim 1 above, further in view of Lungu et al (US 2009/0075199, ‘199 hereafter).
Regarding claims 2-4, modified ‘533 teaches all the limitations of claim 1, ‘533 also discloses that the polymerizable compound having multiple polymerizable groups being acryloyl group or meth-acryloyl group ([0027]), but ‘533 does not specifically disclose that the composition comprises a first polymerizable compound having 7 or more polymerizable groups and a second polymerizable compound having 6 or less polymerizable group in a mass ratio from 30 /70 to 95/5. However, in the same field of endeavor, ‘199 discloses a composition comprising carbon-based particles including carbon black, silica, and coloring agent ([0011], [0037]-[0042], [0046]-[0047]), polymerizable compounds ([0028]-[0033], and photoinitiators ([0034]-[0036]), wherein the polymerizable compounds can be a compound having more than 7 polymerizable group (Example 1, CN2304 from Sartomer) and a polymerizable compound having polymerizable group less than 6 (Example 1, SR238 from Sartomer) in a ratio 10/10 (equal to 50/50 as in present claim 3); to render a black composition being curable by actinic radiation and suitable for printing [0012]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the polymerizable compounds having 7 or more polymerizable group and 6 or less polymerizable group together to render a curable composition by actinic radiation which suitable for printing.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al (JP2019082533, paragraph citation see original document, ‘533 hereafter) in view of Nabeta (JP 2016079245, ‘245 hereafter) as applied to claim 1 above, further in view of Qian (WO2010/102502, ‘502 hereafter).
Regarding claims 5, modified ‘533 teaches all the limitations of claim 1, ‘533 also discloses that the photoinitiator can be an oxime-based photoinitiator (Examples, OXE02), but does not set forth that the photoinitiator is a compound represented by Formula (1) as in claim 5. However, it is known in the art that the photoinitiator having chemical structure represented by Formula (1) provide better performance, light sensitivity and heat stability (Abstract, pages 2-3) as evidenced by ‘502, in light of these teachings, one of ordinary skill in the art would have been motivated to use the photoinitiator having chemical structure represented by formula (1) as in the present claim 5, to modify the composition of ‘533, to take the advantage of better performance, light sensitive and heat stability for the composition.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al ((JP2019082533, paragraph citation see original document, ‘533 hereafter) in view of Nabeta (JP 2016079245, ‘245 hereafter) as applied to claim 1 above, further in view of Takishita et al (US 2017/0010528, ‘528 hereafter).
Regarding claims 10 and 11, modified ‘533 teaches all the limitations of claim 1, but the references do not set forth that the composition further include a silicone surfactant. However, silicone surfactants include a silicone surfactant having a phenyl group is commonly used in a coloring composition to improve the uniformity is well-known in the art as evidenced by ‘528 ([0477], [0485], KP341). In light of these teachings, one of ordinary skill in the art would have been motivated to use a silicone surfactant as known in the art, to modify the coloring composition of ‘533, in order to render a composition having better uniformity.
Allowable Subject Matter
Claims 14-17 would be allowable if rewritten to overcome 112 rejections as set forth above and including all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the prior art of record fails to disclose or fairly suggest a composition as recited in the present claim 1 having the specific ratios of carbon black/copper phthalocyanines, carbon black/silica, carbon black/barium sulfate, barium sulfate/silica as recited in the claims 14-17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782 .