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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 102(a)1 as being anticipated by Kim et al. (JP 2019-109515), wherein the machine English translation is used for citation.
Regarding claims 1-4; Kim et al. teaches, in a preferred embodiment, a laminated structure comprising a photosensitive composition of a quantum dot binder dispersion of [1] (comprising a binder resin), hexaacrylate, oxime ester initiator (photoinitiator), and light diffusion A composition (herein referred to as a QDPR composition) prepared by mixing TiO2 (light scattering agent) and PGMEA (propylene glycol monomethyl ether acetate), which is spin-coated on a formed silicon-containing layer, and heat treated (PRB). The PRB-treated film is photocured with 80 mJ, heat treated (POB) for 30 minutes at 180°C under nitrogen atmosphere, thus producing a cured film [0166-0168].
Kim et al. does not explicitly teach wherein the cured film has a Martens hardness of 0.10 GPa or more. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, by carrying out the exposure step and the thermal curing step such that the formula (1) is satisfied (X*Y*Z2 ≥ 3000), a cured film having a high Martens hardness can be produced (0.10 GPa or more). Therefore, the claimed effects and physical properties, i.e. Martens hardness, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II. The Examiner makes note that the teachings of Kim et al. satisfy the formula (1), wherein 80 * 180 * 0.52 = 3600, thus satisfying a Martens hardness of 0.10 GPa or more.
Regarding claim 7; Kim et al. teaches a display device comprising the cured film [01-02, 011-015].
Claim(s) 5 is/are rejected under 35 U.S.C. 102(a)1 as being anticipated by Kim et al. (JP 2019-109515), wherein the machine English translation is used for citation.
Regarding claims 5; Kim et al. teaches, in a preferred embodiment, a laminated structure comprising a photosensitive composition of a quantum dot binder dispersion of [1] (comprising a binder resin), hexaacrylate, oxime ester initiator (photoinitiator), and light diffusion A composition (herein referred to as a QDPR composition) prepared by mixing TiO2 (light scattering agent) and PGMEA (propylene glycol monomethyl ether acetate), which is spin-coated on a formed silicon-containing layer, and heat treated (PRB). The PRB-treated film is photocured with 80 mJ, heat treated (POB) for 30 minutes at 180°C under nitrogen atmosphere, thus producing a cured film [0166-0168].
Kim et al. does not explicitly teach wherein the cured film has a Martens hardness of 0.10 GPa or more. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, by carrying out the exposure step and the thermal curing step such that the formula (1) is satisfied (X*Y*Z2 ≥ 3000), a cured film having a high Martens hardness can be produced (0.10 GPa or more). Therefore, the claimed effects and physical properties, i.e. Martens hardness, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II. The Examiner makes note that the teachings of Kim et al. satisfy the formula (1), wherein 80 * 180 * 0.52 = 3600, thus satisfying a Martens hardness of 0.10 GPa or more.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)1 as being anticipated by Kim et al. (JP 2019-109515), wherein the machine English translation is used for citation, as applied to claim 5 above, and further in view of Fujita et al. (JP 2017-088876), wherein the machine English translation is used for citation.
Kim et al. teaches the basic claimed cured film, as set forth above, with respect to claim 1.
Regarding claim 6; Kim et al. fails to teach wherein the thermal curing step is carried out under a vacuum atmosphere. Fujita et al. teaches a light-emitting composition comprising a wavelength converting material, a polymer material, and quantum dots. Fujita et al. teaches the composition is cured by irradiating or heating, wherein the curing step, the atmosphere during heating can be air, nitrogen or in a vacuum [017, 0090-0092, 0112]. Kim et al. and Fujita et al. are analogous art because they are both concerned with the same field of endeavor, namely compositions comprising quantum dots suitable for use in display devices. At the time of filing, a person of ordinary skill in the art would have found it obvious to conduct there thermal step in a vacuum, as taught by Fujita et al., in the method of Kim et al., and would have been motivated to do so in order to reduce internal distortion, as suggested by Fujita et al. [091].
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/288362 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to the same art specific subject matter, namely a cured film. The essential difference between the instant application and the copending application is that the copending application further comprising quantum dots. However, the instant application is directed to a film “comprising”, thus the additional, unrecited elements may be present in the composition. In addition, “quantum dots” necessarily possess the ability to scatter light.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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