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 .
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.
Priority
3. This application is a 371 of PCT/KR2021/013547 10/04/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application KOREA, REPUBLIC OF 10-2020-0128620 10/06/2020 filed on 04/03/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 05/12/26 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-11 and species i) repeating unit of alkali-soluble resin (representing species and subspecies):Formula (1), wherein R¹ and R² are each H, X¹ is Formula (A), X² is aryl group (phenyl), A¹ and A² are each independently Formula (C) or Formula (D) and the ratio of Formula (C) to Formula (D) is 1:9 to 9:1 in a polymer chain of the resin, R³ and R⁴ are H, R⁷ and R⁸ are H, Y1 and Y² are Formula (E), R¹¹ is H, and L¹ is a single bond, as disclosed in Synthesis Examples 1 to 3, ii) reactive unsaturated compound resin (representing species and subspecies): Formula (2), wherein Z₁ to Z₄ are Formula (G), t is 1, L4 is alkylene group (methylene), Y₃ is Formula (H), and R₂₁ is H, as disclosed in Synthesis Example 37, iii) photoinitiator (representing species and subspecies): Formula (3), wherein U1 is 1, Uз is o, L₅ is Formula (J), R₃₁ is methyl group, L6 is carbonyl group (benzoyl), L7 is aryloxy group (methoxynaphthyl), as disclosed in Synthesis Examples 38 to 40, and iv) colorant: black pigment in the reply filed on 06/04/26 is acknowledged.
Claims 1-15 are pending and claims 12-15 are directed to non-elected invention. Accordingly, claims 12-15 are withdrawn from further consideration by the examiner, 37 C.F.R. §1.142(b), as being drawn to a non-elected invention. Claims 1-11 are examined in this Office action.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-15 of copending Application No. 18/658162. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and copending claims are directed to a photosensitive resin composition comprising an alkali-soluble resin; a reactive unsaturated compound; a photoinitiator having a maximum molar absorption coefficient of 10,000 (L/mol-cm) or more in the region of 320 nm to 380 nm and a loss of 5 wt% at 200°C or less, and a solvent, wherein the instant claim 1 require colorant while copending claim 1 discloses reactive dye (read on instant claimed colorant).
Dependent claims 2-11 are same as copending claims 7-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Idei (US 2016/0004154).
Regarding claim 1, Idei discloses a photosensitive resin composition comprising an alkali-soluble resin; a reactive unsaturated compound; a photoinitiator in which the molar absorption coefficient 5,000 to 200,000 at 365 nm and a 5% weight loss occurs at 120 °C; a colorant; and a solvent (para [0026], [0118], [0287], [0381], [0403], [428]), fall into claimed 320 to 380 nm, 200 °C or below, and encompassing claimed molar absorption coefficient 10,000.
A prima facie case of obviousness exists for the photosensitive resin composition, wherein Idei discloses molar absorption coefficient 5,000 to 200,000, encompassing the requirement of claim 1. It is well-settled that where 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, 267 (CCPA 1976).
Regarding claim 5, Idei discloses a photopolymerizable compound containing unsaturated groups in an amount of 2.0% to 30% by mass (para [0357]-[0359]), fall into claimed range of 1 to 40 wt% (mass approx. wt).
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Regarding claim 6, Idei discloses a photopolymerizable compounds include
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and n is 0-1 (para [0321]; incorporated reference JP2013/29760, para [0227]-[0231]).
Regarding claims 7-8, Idei discloses colorants such as inorganic or organic pigments in an amount of 25% by mass or more (para [0314], [0534]), overlapping claimed range of 5 to 40 wt% (mass approx. wt).
A prima facie case of obviousness exists for the photosensitive resin composition, wherein Idei discloses colorants such as inorganic or organic pigments in an amount of 25% by mass or more, overlapping the requirement of claim 7. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 9, Idei discloses photoinitiators in an amount of 1 to 20% by mass (para [0384]), overlapping claimed range of 0.01 to 10 wt% (mass approx. wt).
A prima facie case of obviousness exists for the photosensitive resin composition, wherein Idei photoinitiators in an amount of 1 to 20% by mass, overlapping the requirement of claim 9. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
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Regarding claim 10, Idei discloses the photoinitiator such as
Conclusion
(para [0379]).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Idei as applied to claim 1 above, and further in view of Lee (WO2019078566; for English translation US 2020/0241415 applied).
Idei includes the features of claim 1 above.
Regarding claims 2-4, Idei does not disclose the claims 2-4 features.
However, Lee discloses a photosensitive resin composition comprising resin having improved adhesiveness and cohesion of the formula
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(para [0004], [0040]-[0059]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Idei with the resin of Lee. The rationale to do so would have been motivation provided by of Lee that to do so would improve adhesiveness and cohesion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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