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 .
Priority
This application claims priority to Japanese patent application JP2020-170838 filed on 9 October 2020 and PCT application PCT/JP2021/034110 filed on 16 September 2021. A certified copy of JP2020-17038 was properly filed and is acknowledged.
Information Disclosure Statement
The information disclosure statements submitted on 4 April 2023; 16 June 2023; 3 June 2024; 20 December 2024; 10 July 2025 have been acknowledged and considered.
Election/Restrictions
Applicant’s election without traverse of species A1-17 and propylphosphonic acid copper complex in the reply filed on 3 November 2025 is acknowledged. Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Interpretation
Claim 4 recites “… the phosphonic acid is an alkylphosphonic acid, and the metal compound includes…”. Claim 5 recites: “The near-infrared absorbing composition according to claim 1, wherein the metal compound includes…”. Claims 1, 4 and 5 each recite a “metal compound” in singular form. However, as recited, the singular compound required multiple distinct compounds which are different in claims 4 and 5, than in claim 1, from which claims 4 and 5 depend. As such, the recitation of “the metal compound” is interpreted to permit the inclusion of multiple distinct compounds and/or complexes as recited in claims 4 and 5. With respect to the recited metal compound, claims 4 and 5 are interpreted to include both the structure of claim 1 and the structures represented by General Formula (I) and/or (D1). Claims 4 and 5 have been searched and interpreted as such. Examiner suggests that Applicants amend claims 4-5 to clarify the subject matter applicants intended to encompass.
Claim Rejections - 35 USC § 112(b)
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 1 and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “… the organic dye includes: at least one of a squarylium dye (A) or a cyanine dye (B) ...; and a cyanine dye (C)…” Claim 7 recites “… the organic dye includes: at least one of a squarylium dye (A) and a cyanine dye (B) ...; and a cyanine dye (C)…”. Given the combination of “at least one of” with “and” and “or”, it is unclear if the organic dye encompasses just one of A/B/C OR a combination of A or B WITH C. Additionally, Applicant’s election of species of a single dye A1-17 further supports the consideration of an organic dye comprising solely dye A1-17 which leads to further ambiguity. In the interest of compact prosecution, applicant’s intended claim scope appears to be a near-infrared composition comprising a mixture of organic dyes A or B WITH C. Claims 1 and 7 have been searched and interpreted as such.
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.
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 1-2 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yong Joo Lee (US PG Publication No. US20190079227) and Matsumura (US PG Publication No. US 20200301272), in view of Tomotaka (JP Publication No. JP2019066814), further in view of Ryotaro (JP Publication No. JP2014058621). Translations referenced herein.
Yong Joo Lee teaches electronic devices, like cell phones, digital cameras, camcorder, etc. comprise image sensors and that they may include an optical filter with a near-infrared light-absorbing film so the device is configured to reduce or prevent optical distortion by light in other wavelengths like visible light (¶ [0003]). The near-infrared (NIR) film composition taught includes a binder, a compound represented by Chemical Formula 1, and a compound represented by Chemical Formula 2, (Abstract). Example 1 in Table 1 describes a composition containing Dye 1, representative species of Chemical Formula 1 (cyanine dye), and Dye 2, representative species of Chemical Formula 2 (squarylium dye) (page 8, ¶ [0134]). The composition is made into a film with a thickness between 25 µm to about 160 µm and imported into a camera device comprising a lens and an image sensor (claims 1, 10, and 16-18).
Yong Joo Lee does not teach a film comprising a metal compound that includes at least a phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion, nor does it teach the representative elective species A1-17.
Matsumura teaches a curable composition that includes a near infrared absorbing colorant along with a film, a NIR filter, solid-state imaging element, display device, and an infrared sensor (¶ [0002]). The curable compounds are squarylium compounds with substituted o-amides, relative to the cyclobutene core, wherein the substituent on the amide is a tertiary alkyl group (¶ [0015]). Increased steric hindrance in the vicinity of the amide bond presumably limits motion of the molecule in a photoexcited state and photodissociation. It also attenuates hydrolysis allowing moisture retention (¶ [0093]). A disclosed species is SQ-6
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as a preferred organic dye to be used in combination with SQ-1 to form a curable composition (¶ [0480]; Table 1-continued, Example 16).
Yong Joo Lee and Matsumura are considered analogous art to the claimed invention because they are in the same field of producing compositions using organic dyes that specifically absorb in the NIR wavelengths, and have good transmittance in the visible region. Therefore, it would have been prima facie obvious to a PHOSITA before the effective filing date of the claimed invention to substitute the squarylium Dye 2 taught by Yong Joo Lee with the squarylium dye SQ-6 taught by Matsumura to form a composition containing a cyanine and squarylium dye as claimed. While SQ-6 has a different tertiary alkyl group than elected species A1-17, a PHOSITA would have been motivated through the teachings of Matsumura to synthesize a squarylium dye wherein the amide ortho to the cyclobutene core, contains a tert-butyl substituent as the difference is successive removal of methylene groups which results in a similarly sterically hindered compound which would be expected to have similar properties (MPEP §2144.09(II)). There would have been a reasonable expectation of success in synthesizing compounds with similar properties by replacing one sterically hindered group with another.
Matsumura does not teach a composition containing a combination of a cyanine dye and squarylium dye, nor does it teach a film comprising phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion.
Tomotaka teaches a light absorbing layer 10 that comprises a light absorber formed by phosphonic acid and copper ions wherein the phosphonic acid has an alkyl group with carbons of 6 or less attached to the phosphorus atom (Page 9, ¶¶ 6 and 7). An example coating was made using butylphosphonic acid and copper acetate monohydrate to form coating liquid IRA2 (page 13, Example 1, ¶ 2). This IRA2 coating was further modified to include ultraviolet (UV) dye, benzophenone, and an infrared absorbing dye, combination of a cyanine and squarylium organic based dye having an absorption peak at 680 to 780 nm, to form UVIRA1 (Example 2, ¶ 3). Figure 6B displays the graph of % transmittance of UVIRA1; the average light transmittance within a wavelength range of 450 to 600 nm is around 90%, average light transmittance within a wavelength range of 700 to 1000 is less than 2%, average light transmittance within a wavelength range of 1000 to 1200 nm is less than 5%, and the cutoff wavelength at 50% transmittance is around 630 nm.
Yong Joo Lee, Matsumura, and Tomotaka are all considered analogous art to the claimed invention because they are all in the same field of optimizing an optical filter which includes a NIR absorbing layer. Therefore, it would have been prima facie obvious to a PHOSITA to combine a cyanine dye (Dye 1) and squarylium dye (Dye 2) as taught by Yong Joo Lee, and substitute Dye 2 with SQ-6 taught by Matsumura (MPEP §2144.09 and §2144.06(II)), and further include in that combination a copper phosphonate complex as taught by Tomotaka. A PHOSITA would have been motivated to include a copper phosphonate complex because the teachings suggest that this light absorber can be used as a replacement for a reflective film in optical filters which can cause color unevenness at large incident angles of light (page 3, ¶ 3; page 5, ¶9). Accordingly claims 1-2, 6, and 8-9 are prima facie obvious.
Tomotaka does not teach use of cyanine dyes that are representative of genus B1 of the instant application.
Ryotora teaches a near-infrared cut filter containing a resin composition comprising novel cyanine dye compounds (¶ [0001]). Specifically shown in Table 1, the second entry is taught as one of the cyanine dye species utilized in an infrared cut filter (page 14, ¶ [0026]).
Yong Joo Lee, Matsumura, Tomotaka, and Ryotora are all considered analogous art to the claimed invention because they are all in the same field of optimizing an optical filter which includes a NIR absorbing layer. Therefore, it would have been prima facie obvious to include the cyanine dye taught by Ryotora in the NIR composition taught in Yong Joo Lee, Matsumura, and Tomotaka. Specifically, Yong Joo Lee teaches examples where compositions may comprise 3 dyes (Table 1, Examples 5-8) with similar transmittance characteristics as compositions containing only 2 dyes (Table 3). Simple substitution of the dye taught by Ryotora for Dye 3 or Dye 4 taught by Yong Joo Lee would have been routine optimization to a PHOSITA (2144.05(II)). Additionally, the transmittance percentages and the range of wavelengths assessed of the compositions overlap with the instant claims (MPEP §2144.05(I)). Accordingly, claims 7 and 10-11 are prima facie obvious.
Claims 1-2 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yong Joo Lee (US PG Publication No. US20190079227) and Miyata (US PG Publication No. US 20200319548), in view of Tomotaka (JP Publication No. JP2019066814), further in view of Ryotaro (JP Publication No. JP2014058621). Translations referenced herein.
Yong Joo Lee teaches electronic devices, like cell phones, digital cameras, camcorder, etc., include image sensors that comprise an optical filter with a near-infrared light-absorbing film so the device is configured to reduce or prevent optical distortion by light in other wavelengths like visible light (¶ [0003]). The near-infrared (NIR) film composition taught includes a binder, a compound represented by Chemical Formula 1, and a compound represented by Chemical Formula 2, (Abstract). Example 1 in Table 1 describes a composition containing Dye 1, representative species of Chemical Formula 1 (cyanine dye), and Dye 2, representative species of Chemical Formula 2 (squarylium dye) (page 8, ¶ [0134]). The composition is made into a film with a thickness between 25 µm to about 160 µm and imported into a camera device comprising a lens and an image sensor (claims 1, 10, and 16-18).
Yong Joo Lee does not teach a film comprising a metal compound that includes at least a phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion, nor does it teach a representative species of A1.
Miyata teaches a composition that includes a near infrared absorbing colorant along with a film, a NIR filter, solid-state imaging element, display device, and an infrared sensor (¶ [0002]). Specifically, the compositions include at least one of the NIR pigments selected from a squarylium compound, a cyanine compound, a croconium compound, and an iminium compound (claims 1-2). A species taught to make up an embodiment is compound Aa-1
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and an example composition is shown in Table 8 and subsequently made into a film (¶ [0574]).
Yong Joo Lee and Miyata are considered analogous art to the claimed invention because they are in the same field of producing a composition using organic dyes that specifically absorbs in the NIR which are subsequently made into films for filters, imaging elements, infrared sensors, etc. Therefore, it would have been prima facie obvious to a PHOSITA before the effective filing date of the claimed invention to substitute the squarylium Dye 2 taught by Yong Joo Lee with the squarylium dye Aa-1 taught by Miyata to form a composition containing a cyanine and squarylium dye as claimed. Aa-1 is equivalent to the species A1-12 in the instant application and reads on each variable of the Markush structure of genus A1. It would have been prima facie obvious to a PHOSITA to substitute Dye 2 taught in Yong Joo Lee for the squarylium dye Aa-1 in Miyata to yield the composition instantly claimed.
Miyata does not teach a composition containing a combination of a cyanine dye and squarylium dye, nor does it teach a film comprising phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion.
Tomotaka teaches a light absorbing layer 10 that comprises a light absorber formed by phosphonic acid and copper ions wherein the phosphonic acid has an alkyl group with carbons of 6 or less attached to the phosphorus atom (Page 9, ¶¶ 6 and 7). An example coating was made using butylphosphonic acid and copper acetate monohydrate to form coating liquid IRA2 (page 13, Example 1, ¶ 2). This IRA2 coating was further modified to include ultraviolet (UV) dye, benzophenone, and an infrared absorbing dye, combination of a cyanine and squarylium organic based dye having an absorption peak at 680 to 780 nm, to form UVIRA1 (Example 2, ¶ 3). Figure 6B displays a graph of % transmittance of UVIRA1; the average light transmittance within a wavelength range of 450 to 600 nm is around 90%, average light transmittance within a wavelength range of 700 to 1000 is less than 2%, average light transmittance within a wavelength range of 1000 to 1200 nm is less than 5%, and the cutoff wavelength at 50% transmittance is around 630 nm.
Yong Joo Lee, Miyata, and Tomotaka are all considered analogous art to the claimed invention because they are all in the same field of optimizing an optical filter which includes a NIR absorbing layer. Therefore, it would have been prima facie obvious to a PHOSITA to combine a cyanine dye (Dye 1) and a squarylium dye (Dye 2) as taught by Yong Joo Lee, and substitute Dye 2 with Aa-1 taught by Miyata (MPEP §2144.06(II)), and further include in that combination a copper phosphonate complex as taught by Tomotaka. A PHOSITA would have been motivated to include a copper phosphonate complex because the teachings in Tomotaka suggest that this light absorber can be used as a replacement for a reflective film in optical filters which can cause color unevenness at large incident angles of light (page 3, ¶ 3; page 5, ¶9). Additionally, the transmittance percentages and the range of wavelengths assessed of the compositions overlap with the instant claims (MPEP §2144.05(I)). Accordingly claims 1-2, 6, and 8-9 are prima facie obvious.
Tomotaka does not teach use of cyanine dyes that are representative of genus B1 of the instant application.
Ryotora teaches a near-infrared cut filter containing a resin composition comprising novel cyanine dye compounds (¶ [0001]). Specifically shown in Table 1, the second entry is taught as one of the cyanine dye species utilized in an infrared cut filter (page 14, ¶ [0026]).
Yong Joo Lee, Miyata, Tomotaka, and Ryotora are all considered analogous art to the claimed invention because they are all in the same field of optimizing an optical filter which includes a NIR absorbing layer. Therefore, it would have been prima facie obvious to include the cyanine dye, which reads on the genus of B1, taught by Ryotora in the NIR composition taught in Yong Joo Lee, Matsumura, and Tomotaka. Specifically, Yong Joo Lee teaches examples where compositions may comprise 3 dyes (Table 1, Examples 5-8) with similar transmittance characteristics as compositions containing only 2 dyes (Table 3). Simple substitution of the dye taught by Ryotora for Dye 3 or Dye 4 taught by Yong Joo Lee would have been routine optimization to a PHOSITA (2144.05(II)). Accordingly, claims 7 and 10-11 are prima facie obvious.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yong Joo Lee (US PG Publication No. US20190079227), Yosuke (JP Publication No. JP2020105409A) and Sekine (PCT Publication No. WO2008069268) further in view of Miyata (US PG Publication No. US 20200319548). Translations referenced herein.
Yong Joo Lee teaches electronic devices, like cell phones, digital cameras, camcorder, etc., include image sensors that comprise an optical filter with a near-infrared light-absorbing film so the device is configured to reduce or prevent optical distortion by light in other wavelengths like visible light (¶ [0003]). The near-infrared (NIR) film composition taught includes a binder, a compound represented by Chemical Formula 1, and a compound represented by Chemical Formula 2, (Abstract). Example 1 in Table 1 describes a composition containing Dye 1, representative species of Chemical Formula 1 (cyanine dye), and Dye 2, representative species of Chemical Formula 2 (squarylium dye) (page 8, ¶ [0134]). The composition is made into a film with a thickness between 25 µm to about 160 µm and imported into a camera device comprising a lens and an image sensor (claims 1, 10, and 16-18).
Yong Joo Lee does not teach a film comprising a metal compound that includes at least a phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion, nor does it teach a representative species of A1.
Yosuke teaches preparation of a composition comprising Exemplary Compound 100 (Table IV, entry 100, General Formula (I) below) and a mixture of phenylphosphonic and propylphosphonic acid (Table V, entry 19, General Formula (II) below). NIR absorption additives are preferably added to the composition to adjust the absorbing waveform, with the additives possessing absorption at 650 nm to 800 nm wavelengths (¶ [0128]).
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Yosuke does not teach a representative species of genres A, B, C, or D.
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[AltContent: textbox (X-127)]
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[AltContent: textbox (General Formula (I))]Sekine teaches a composition for optical filters containing at least one metal ion-containing compound represented by general formula (I) (shown below) and at least one squarylium compound. Species X-127 is a non-limiting example of a copper containing compound that makes up the composition and example embodiments can be found in Table 4 (page 43, B-12-B-17; page 18, Table 1, MS-49).
Sekine does not teach any of the species in genuses A1-4.
Miyata teaches a composition that includes a near infrared absorbing colorant along with a film, a NIR filter, solid-state imaging element, display device, and an infrared sensor (¶ [0002]). Specifically, the compositions include at least one of the NIR pigments selected from a squarylium compound, a cyanine compound, a croconium compound, and an iminium compound (claims 1-2). A species taught to make up an embodiment is compound Aa-1
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and an example composition is shown in Table 8 and subsequently made into a film (¶ [0574]).
Miyata does not teach a composition containing a combination of a cyanine dye and squarylium dye, nor does it teach a film comprising phosphonic acid and a copper ion, or a copper phosphonate complex formed from a phosphonic acid and a copper ion.
Yong Joo Lee, Yosuke, Sekine, and Miyata are considered analogous art to the claimed invention because they are in the same field of preparing NIR film containing organic dyes. Therefore, it would have been prima facie obvious to a PHOSITA to prepare the NIR composition taught by Yosuke and incorporate the metal containing compound taught by Sekine, the cyanine dye (Dye 1) taught by Yong Joo Lee, and the squarylium dye (Aa-1) taught by Miyata to arrive at the compositions instantly claimed. The metal containing compound X-127 is equivalent to species D43 of the instant application and reads on each variable of the Markush structure of genus D1. Substituting equivalents of metal containing compounds, cyanine dyes, and squarylium dyes would have been routine to a PHOSITA (MPEP §2144.05(II) and §2144.06). A PHOSITA would have been motivated by the teachings of Yosuke to include cyanine and squarylium dyes to achieve adjusting the absorbing waveform from the viewpoint of spectral characteristics (see above citations). Accordingly, claims 1 and 4-5 are prima facie obvious.
Conclusion
Claims 1-2 and 4-11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAHIL CHANDER AGGARWAL whose telephone number is (571)272-7755. The examiner can normally be reached 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C Milligan can be reached at (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAHIL CHANDER AGGARWAL/
Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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