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 .
Election/Restrictions
Claims 6-9 and 15-25 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/04/2026.
Claim Status
Claim 1 is amended. Claims 2 and 3 are canceled. Claims 6-9 and 15-25 are withdrawn from further consideration.
Response to Arguments
Applicant’s arguments, see p. 7-12, filed 06/16/2026 , with respect to the rejection(s) of claim(s) 1-5 under 35 U.S.C. 103 as being unpatentable over Satoru et al (herein ‘Satoru’; US 20050272896 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
Furthermore, the examiner notes that applicants’ arguments regarding unexpected results appears to be persuasive, however, the claimed invention is not commensurate in scope with applicants showing. For instance, applicants exemplify a single species of epoxy resin A and epoxy resin B. Furthermore, applicants claim a glycidyl ester epoxy resin may be selected as epoxy resin B, which does not share the structural similarities of bisphenol A and bisphenol F, and is not exemplified.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
KR 20120080050 A
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as obvious over Chen (CN 112375524 A; all citations are directed toward the English machine translation), in view of Kun (KR 20120080050 A; all citations are directed toward the English machine translation) as evidenced by Stapf (US 2022/0315813 A1).
Chen discloses a composition comprising 100 parts of halogen-free bisphenol A epoxy resin (NPEL-127E of South Asia) and 28 parts of organic silicon modified epoxy resin
(ALBIFLEX 296) [embodiment 3]. Albiflex 296 is a bisphenol-A-epoxy-polydimethylsiloxane block copolymer resin, as evidenced by Stapf [table 1], which corresponds a hydroxyl-terminated polydimethylsiloxane modified epoxy resin as well as the representative structural skeleton presented on p. 9 of applicant’s remarks, filed on 06/16/2026. Although Chen is silent with respect to the transmittance of the bisphenol A epoxy resin and the organic silicon modified epoxy resin, the transmittance of embodiment 3 is >90% [table 2]. In light of this, a skilled artisan would reasonably predict that individual epoxy resins used by Chen would satisfy or obviously embrace a transmittance >90%.
Chen is silent with respect to the refractive index of the bisphenol A epoxy resin and the organic silicon modified epoxy resin.
Chen teaches the epoxy resin composition has high transparency and is used as packaging film for miniLED’s, wherein the composition is coated onto a PET film. PET film samples typically have a refractive index of 1.636, as evidenced by KLA. Kun is directed toward a transparent resin composition. Kun teaches it is preferable if the resin composition has a refractive index which satisfies the following formula:
Refractive index of the resin composition = n + 0.001 to n + 0.009
The refractive index (n) is the refractive index of the intended substrate. Considering the PET substrate of Chen, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select an epoxy resin A and an epoxy resin B having a refractive index in the range of 1.637 to 1.645 in order to produce a transparent miniLED packaging film. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 103 as obvious over Norigishe (JP 2010/018797 A; all citations are directed toward the English machine translation), in view of Kun (KR 2012/0080050 A; all citations are directed toward the English machine translation) as evidenced by BGF Industries.
Norigishe teaches a curable composition for an optical component that contains a photocationic polymerizable compound, a photocationic polymerization initiator, and a sensitizer. The photocationically polymerizable compound is not particularly limited as long as it is a polymerizable monomer having at least one cationically polymerizable functional group in the molecule, and examples thereof include compounds having at least one photocationically polymerizable functional group such as an epoxy group [p. 0011]. Norigishe teaches The compound having at least one epoxy group in the molecule (hereinafter, also simply referred to as "epoxy compound") is not particularly limited, and examples thereof include bisphenol epoxy compounds such as bisphenol A epoxy compounds and bisphenol F epoxy compounds [p. 0012]. Norigishe teaches lower limit of the content of the bisphenol epoxy resins is more preferably 10 parts by weight, and the upper limit thereof is more preferably 50 parts by weight [p. 0018].
Norigishe further teaches the photocationic polymerizable compound preferably contains an epoxy-modified silicone represented by the following general formula (5-1) or (6). The curable composition for an optical component containing such an epoxy-modified silicone or oxetane-modified silicone can exhibit a stable adhesive force even when the use environment changes and does not cause peeling at the interface of the adherend. In addition, very high transparency can be exhibited. [p. 0019].
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Norigishe teaches when "A" in the general formula (5-1) is a benzene ring and X is CR2, the epoxy-modified silicone and oxetane-modified silicone represented by the general formula (5-1) can be obtained, for example, by subjecting bisphenol-type epoxy resins and silicone resins (PDMS) to a condensation reaction by a known method [p. 0027]. Examples of commercially available products of the epoxy-modified silicone represented by the general formula (5-1) include trade names "296", "348", "XP544", and "712" of epoxy-silicone copolymers "ALBIFLEX" series manufactured by Nanoresin Co., Ltd. [p. 0029] In a case where the curable composition for an optical component of the present invention contains the epoxy-modified silicone or the oxetane-modified silicone represented by General Formula (5-1) or General Formula (6), the content of the epoxy-modified silicone is not particularly limited, however, when the content of the epoxy-modified silicone is 10 parts by weight or less, he transparentizing effect may be weak [p. 0037]. Norigishe teaches the lower limit of the amount of the epoxy-modified silicone is more preferably 30 parts by weight, and the upper limit thereof is more preferably 80 parts by weight [p. 0037].
Norigishe teaches the curable cured product obtained by curing the curable composition for an optical component preferably has a light transmission of 90% or more in the visible region [p. 0073]. In light of this, a skilled artisan would reasonably predict that the bisphenol epoxy resin and epoxy-modified silicone resin individual epoxy resin taught by Norigishe would obviously embrace a transmittance >90%.
Norigishe is silent with respect to the refractive indices of the epoxy resins in the composition. Norigishe teaches the composition is used as a high transparency sealant for electroluminescent elements, and evaluates the transmission of the composition after application to a glass substrate [p. 0003, 0086]. E glass, used for electroluminescent (EL) elements, has a refractive index of 1.547 – 1.562, as evidenced by BGF Industries [p. 14].
Kun is directed toward a transparent resin composition. Kun teaches it is preferable if the resin composition has a refractive index which satisfies the following formula:
Refractive index of the resin composition = n + 0.001 to n + 0.009
The refractive index (n) is the refractive index of the intended substrate. Considering the E-glass substrate, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select a bisphenol resin and an epoxy-modified silicone resin having a refractive index in the range of 1.548 – 1.571 in order to produce a transparent sealant for EL elements. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 4 and 5, Norigishe teaches the bisphenol epoxy resin may comprise 10–50 parts by weight relative to 100 parts by weight of the composition (epoxy resin B) [p. 0018], and the epoxy-modified silicone resin may comprise 30–80 parts by weight relative to 100 parts by weight of the composition (epoxy resin A) [p. 0037]. The ranges taught by Norigishe obviously embrace the ranges of claims 4 and 5, for instance 31.25:25 (1.25:1) and 50:25 (2:1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Conclusion
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766