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 .
Status of the Claims
The status of the claims are as follows:
Claims 1-24 are pending.
Claims 1-9 and 11-24 are rejected.
Claims 10 and 23 are objected to.
Election/Restrictions
Applicant’s election of Species (II), claims 1-24 in the reply filed on 2026, May 15 is acknowledged. No claims are withdrawn from consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Pursuant to MPEP § 818.01(a), the Election made in the reply filed on 2026, May 15 is being treated as an election without traverse.
Priority
Acknowledgement is made that instant application 18/281,826, filed on 2023, Sept. 13 is a National Stage entry of PCT/KR2022/012437, filed on 2022, Aug. 19, which claims foreign priority to 10-2022-0024687, filed on 2022, Feb. 24.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2013, Sept. 13, 2024, Jun. 25, and 2026, Jan. 27 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure state is being considered by the examiner.
Claim Objections
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The claim is directed to the shell of the core-shell dye, represented by Formula 2 below, wherein X1 and X2 are each independently a halogen atom and a1+a2 is an integer between 1 and 8. The prior art discloses many squaraine-based core-shell dyes, wherein the shell is represented by Formula 2; however, few of the aforementioned shells are comprised of halogenated aryl rings. Furthermore, the art is silent on shell compounds comprising halogenated aryl rings that encapsulate squaraine-based core compounds with diamino naphthalene appendages.
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.
Claim 23-24 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 23 depends from itself. Further, there is at least no antecedent basis for ‘the near-infrared absorbing film’. Claim 24 does not resolve the issue.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites the limitation “the near-infrared absorbing resin composition of claim 19, wherein the near-infrared absorbing resin composition is used for a CMOS image sensor.” This is an intended use claim and does not further limit the scope of the parent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-9 and 11-21 /are rejected under 35 U.S.C. 103 as being unpatentable over Jeong (US 2019/0256713 A1; published 2019, Aug. 22) in view of Ernst (Synthesis and Characterization of a New Class of Unsymmetrical Squaraines with 2,3-dihydro-1H-perimidine Terminal Groups. Dyes and Pigments, 2018, 154, 216-228. https://doi.org/10.1016/j.dyepig.2018.01.059), as evidenced by Ilina (Squaraine Dyes: Molecular Design for Different Applications and Remaining Challenges. Bioconjug. Chem. 2020, 31(2), 194-213. doi:10.1021/acs.bioconjchem.9b00482).
Claim 1 is directed to core-shell dyes, consisting of a core comprising squaraine-based compounds with delocalized diamino naphthalene motif, represented by chemical Formula 1
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215
439
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wherein,
each R1 is independently a substituted or unsubstituted C1 to C30 alkyl group, or a substituted or unsubstituted C6 to C30 aryl group;
each R2 is independently a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted C1 to C30 alkylaryl group or adjacent two R2s are separate or are linked to each other to form a substituted or unsubstituted C3 to C30 cycloalkyl ring;
each R3 is independently a substituted or unsubstituted C1 to C30 alkyl group, or a substituted or unsubstituted C6 to C30 aryl group; and
each R4 is independently a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C6 to C30 aryl group, or a substituted or unsubstituted C1 to C30 arylalkyl group, or adjacent two R4s are separate or are linked to each other to form a substitute or an unsubstituted C3 to C30 cycloalkyl ring;
and further consisting of a shell comprising compounds represented by chemical Formula 2
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162
478
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wherein,
L1 and L2 are each independently a substituted or unsubstituted C1 to C10 alkylene group;
Z1 and Z2 are each independently *–CR–* or a nitrogen atom, in which R is a hydrogen atom or a substituted or unsubstituted C1 to C10 alkyl group;
X1 and X2 are each independently a halogen atom or a substituted or unsubstituted C1 to C10 alkyl group;
a1 and a2 are independently an integer of 0 to 4; and
n is an integer of 2 or more.
Jeong teaches core-shell compounds comprising a squaraine core and a surrounding shell (title, abstract), wherein the squaraine core is represented by chemical Formula 3, below:
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201
529
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.
Jeong further teaches the shell component is represented by chemical Formula 4, below (page 3, paragraph 0030):
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112
406
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.
Specifically, Jeong further teaches compound 5-1 as a preferred embodiment of Formula 4 (page 3, paragraph 0034), which is presented in Table 1 with a shell component recited by the instant application.
Table 1. Shell component of the core-shell dye in instant application (left) and Jeong (right).
Compound 2-3
(instant spec, page 9)
Compound 5-1
(page 3, paragraph 0034)
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381
247
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376
267
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The difference between the core-shell dyes of Jeong and the instant application is the that Jeong fails to teach where the core of the core-shell dye is comprised of a squaraine-based compound with a diamino naphthalene motif.
However, Ernst teaches unsymmetrical squaraines with 2,3-dihydro-1H-perimidine terminal groups (title), represented by chemical Formula 6 (page 217):
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168
392
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Ernst teaches one embodiment where R1 = tridecyl and R2 = R3 = Me as compound 3a (page 217, Table 1).
Table 2. Ernst compound 3a.
Compound 3a
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139
415
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One of ordinary skill in the art would be motivated to encapsulate the squaraine-based diamino naphthalene compounds of Ernst with the shell of Jeong because it is was known in the art that substituted squaraine dyes (e.g., compounds of Formula 6) are susceptible to fluorescent quenching via solubility, stability in aqueous environments, or aggregation (see Ilina, page 6, paragraph 4) and could therefore benefit from the stability provided by a surrounding shell. Prior to the effective filing date of the current invention, it was known that encapsulating squaraine dyes in a shell was an effective method stabilizing the core motif (see Ilina, page 6, paragraph 5). Therefore, said artisan would have found it prima facie obvious to stabilize the squaraine-based diamino naphthalene dye compounds of Ernst by encapsulating them with the shell compound of Jeong, thus arriving at the claimed invention.
Claims 2 and 4 are directed to the core-shell dye above wherein each R1 and R3 is independently a substituted or unsubstituted C1 to C10 alkyl group, or a substituted or unsubstituted C6 to C10 aryl group; and when R1 and R3 is a substituted C1 to C10 alkyl group or a substituted C6 to C10 aryl group, the substituent of R1 and R3 includes a (meth)acrylate group, a *–O–* (epoxy) group, or a combination thereof.
Ernst teaches embodiment 3a (shown above) in which each R1 and R3 is independently unsubstituted C1 alkyl.
Claim 3 and 5 is directed to the core-shell dye above wherein each R2 and R4 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C1 to C10 arylalkyl group; or adjacent two R2s and R4s are separate or are linked to each other to form a C1 to C10 cycloalkyl ring that is substituted or unsubstituted with a C1 to C5 alkyl group; and when R2 and R4 is a substituted C1 to C10 alkyl group or a substituted C1 to C10 arylalkyl group, the substituent of R2 and R4 includes a C1 to C5 alkyl group.
Ernst teaches embodiment 3a (shown above) in which each R2 and R4 is independently an unsubstituted C1 alkyl group and a substituted C10 alkyl group. The instant specification defines “substituted” as “replacement of at least one hydrogen of a compound by a … C1 to C20 alkyl group” (page 21, lines 16-23). In the case of compound 3a, a terminal hydrogen on C10 is substituted with C3 alkyl to form the tridecyl substituents on R2 and R4.
Claim 6 is directed to the core-shell dye above wherein the core has a symmetrical structure.
Ernst teaches embodiment 3a (shown above) with a symmetrical structure.
Claim 7 is directed to the core-shell dye above wherein the core is represented by any one of Chemical Formulas 1-1 to 1-4, wherein
R11, R12, R13, R21, R31, R32, R33, R41, and R42 are each independently a substituted or unsubstituted C1 to C10 alkyl group;
L31, L32, L41, and L42 are each independently a substituted or unsubstituted C1 to C10 alkylene group;
R5, R6, R8, and R10 are each independently a substituted or unsubstituted C1 to C10 alkyl group;
R7 and R9 are each independently a (meth)acrylate group of *–O–*(epoxy) group; and
c, d, e, f, and g are each independently an integer of 0 to 5.
Ernst teaches embodiment 3a (shown above). Compound 3a encompasses Formula 1-1, shown below, when:
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R11 = R31 = unsubstituted C1 alkyl group;
L31 = L41 = unsubstituted C10 alkylene group; and
R21 = R41 = unsubstituted C3 alkyl group.
Claim 8 is directed to the core-shell dye above wherein the core is selected as one of the compounds 1-1-1 to 1-4-1.
Ernst teaches compounds 3b (page 217, Table 1), which relates to instant compound 1-4-1 in that they are homologues of each other.
Table 3. Instant compound 1-4-1 and Ernst compound 3b
Compound 1-4-1
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102
300
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Compound 3b
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140
430
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Ernst the near infrared absorption properties of compound 3b, having λmax = 757 nm in CHCl3 and λmax = 771 nm in DMSO. The instant specification recites Example 9 as a process in which compound 1-4-1 is incorporated into a core-shell dye (page 67, lines 1-14 to page 68, lines 1-4). Example 9 is shown to have a maximum absorption wavelength of λmax = 765 nm (no solvent) (page 73, Table 4).
As stated by MPEP 2144.09,
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)
Thus, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. In the present case, the methyl and phenyl groups of compound 3b were each extended by a single CH2 unit to arrive at instant compound 1-4-1. Based on the absorption properties described above, the instant application has failed to show that homologation of the groups led to novel or unexpected results. Therefore, one of ordinary skill in the art would have found instant compound 1-4-1 to be prima facie obvious in view of compound 3b.
Claim 9 and 11 are directed to the core-shell dye above wherein the shell of Formula 2 has:
One of Z1 and Z2 is *–CH–* or a nitrogen atom; and
The other of Z1 and Z2 is *–CH–*
n is 2
L1 and L2 are each independently an unsubstituted C1 to C10 alkylene group.
Jeong teaches shell compound 5-1 (Table 1), wherein the shell compound is of the form Z1 = *–CH–*, Z2 = nitrogen, n = 2, and L1 = L2 = unsubstituted C1 alkylene group.
Claim 13 is directed to the core-shell dye above wherein the shell is represented by any of the Chemical Formulas 2-1 to 2-4.
Jeong teaches shell compound 5-1 (Table 1), which is the same as instantly claimed Chemical Formula 2-3.
Claim 14 is directed to the core-shell dye above, wherein the core and the shell are in a mole ratio of 1:1.
Jeong teaches the core-shell dye may include the core and the shell in a mole ratio of 1:1 (page 5, paragraph 0039).
Claim 15 is directed to the core-shell dye above, wherein the core-shell dye is represented by one of the Chemical Formulae 3-1-1 to 6-4-1.
The combination of the shell compound 5-1 of Jeong (Table 1) with the squaraine-based core compound 3a of Ernst (Table 2) arrives at instant Chemical Formula 5-1-1.
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.
Claim 16 is directed to the core-shell dye above, wherein the core has a maximum absorption peak at a wavelength of 700 nm to 850 nm.
Ernst teaches that the core compound 3a has λmax = 757 nm in CHCl3 and λmax = 771 nm in DMSO (page 217, Table 1).
Claims 17-18 are directed to the core-shell dye above, wherein the core-shell dye is a near infrared absorbing dye with a maximum absorption peak at a wavelength 700 nm to 850 nm.
Ernst teaches that compound 3a has λmax = 757 nm in CHCl3 and λmax = 771 nm in DMSO (page 217, Table 1). The instant specification describes core-shell dye represented by Chemical Formula 6-4-1, wherein the core is the homologue of compound 3a, as described above. Chemical Formula 6-4-1 (Example 9) is shown to have maximum absorption wavelength λmax = 765 nm (no solvent) (page 73, Table 4). One of ordinary skill in the art would know that the comparable λmax between the compound 3a and the core-shell dye of Chemical Formula 6-4-1 illustrates that the shell has a negligible effect on the absorption properties of the core. Therefore, the core-shell dye formed from the combined teachings of Kim and Ernst would necessarily be a near infrared absorbing dye having maximum absorption between 700 to 850 nm.
Claims 19-20 are directed to a near-infrared absorbing resin composition comprising the above core-shell dye, wherein the resin further comprises a binder resin and solvent.
Jeong teaches the use of the core-shell dye in a photosensitive resin composition that may include a binder resin and a solvent (page 5, paragraph 0042).
The difference between the resin taught by Jeong and the resin recited by the instant application is that Jeong is silent on the resin being a near-infrared absorbing resin.
However, the squaraine-based diamino naphthalene compounds taught by Ernst are near-infrared absorbing compounds with λmax = 757 nm in CHCl3 and λmax = 771 nm in DMSO (page 217, Table 1). Therefore, a resin comprising e.g., compound 3a would be a near-infrared absorbing resin.
Claim 21 is directed to the near-infrared absorbing resin composition above, wherein the near-infrared absorbing resin composition is used for a CMOS image sensor.
Jeong teaches photosensitive resin compositions can be used for a color filter, which may then be used in CMOS image sensors (page 1, paragraph 0006-0007). Therefore, the above near-infrared absorbing resin composition taught by Jeong is inherently capable of performing the recited intended use and one of ordinary skill in the art would be motivated to do so.
Claim 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong, in view of Ernst, as evidenced by Ilina, in further view of Lee (US 2022/0100085 A1, published 2022, Mar. 31; foreign priority claim to KR 10-2020-0127362, published 2020, Sept. 29).
The teachings of Jeong and Ernst as evidenced by Ilina are discussed above and incorporated herein by reference.
Claim 22 is directed to a near-infrared absorbing film manufactured using the near-infrared absorbing composition above.
The difference between the teachings of Jeong and Ernst as evidenced by Ilina and the instant application is that the combined teachings fail to teach where the near-infrared absorbing composition is manufactured into a near-infrared absorbing film.
However, Lee teaches squaraine-based core-shell compounds, photosensitive resin compositions including the same, a photosensitive resin layer produced using the photosensitive resin composition, a color filter including the photosensitive resin layer, and a CMOS image sensor including the color filter, the core-shell compound (title, abstract). Lee further teaches the photosensitive resin composition can be used to produce a photosensitive layer (page 1, paragraph 0009).
One of ordinary skill in the art would be motivated to combined the teachings of Lee with the teachings of Jeong and Ernst as evidenced by Ilina because they are in the same field of endeavor of squaraine-based core-shell dyes. Furthermore, the core compounds taught by Lee are of chemical Formula 3 above, and the shell compounds taught by Lee are of chemical Formula 4. Therefore, there is a reasonable expectation of success that the combined teachings of Jeong and Ernst as evidenced by Ilina could be manufactured into a film, as taught by Lee.
Claim 23 is directed to an optical filter comprising the near-infrared absorbing film.
The difference between the teachings of Jeong and Ernst as evidenced by Ilina and the instant application is that the combined teachings fail to teach an optical filtered comprised of the near-infrared absorbing film.
However, Lee teaches the photosensitive resin layer may be used to produce a color filter (page 1, paragraph 0010).
Claim 24 is directed to a CMOS image sensor comprising the optical filter.
The difference between the teachings of Jeong and Ernst as evidenced by Ilina and the instant application is that the combined teachings fail a CMOS image sensor comprising the optical filter.
However, Lee teaches the color filter can be used to produce a CMOS image sensor (page 1, paragraph 0011).
Conclusions
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/P.A./
Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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