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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10 and 12-17) in the reply filed on May 8, 2026 is acknowledged. The traversal is on the ground(s) that a) no adequate reasons and/or examples having been provided to support a conclusion of patentable distinctness between the identifiable groups. The examiner addressed applicant’s arguments below:
Applicant’s argument: The office has characterized Groups I and III to be unrelated. Applicant submits that the elements recited in Claim 1 are also recited in claim 18. Therefore, the conclusion that the two Groups are unrelated cannot be sustained.
Examiner’s response: While the elements recited in claim 1 are recited in claim 18, they are considered unrelated because one group is drawn to a compositional claim and the other is drawn to a method of making an optical filter which is not the composition of the first group. They are different designs, modes of operation and effects as noted in MPEP section 8.20.02. Also, searches for one group will not necessarily produce the art which would reject the claims of the second group which creates an undue search burden on the examiner.
Applicant argument: Regarding the relationship between groups II and III, applicants argue that there is no evidence in the record to support the conclusion alleged by the office that the color filter can be made by a materially different process such as “depositing the material without the use of a solvent”.
Examiner’s response: The support for this argument lies in the claim limitations themselves – claim 11, the independent claim of the optical filter article is free from solvent which is necessary in claim 18. Therefore, it is evident that the color filter can be made by a solvent-free method as the composition does not mandatorily include the solvent.
Claims 11 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 8 and 17 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.
Regarding claim 8 and 17, this claim is unclear as it seems to be establishing the amount of residual monomers, but the limitations are not clear. The phrase “WM is a weight of monomers corresponding to respective repeating units constituting the copolymer”, is this in the polymer itself? Or in the reaction vessel where the polymerization takes place? Also, the “weight of the monomers” at the end of the claims is also confusing because does this refer to the unreacted monomers? Or are these the same monomers in the WM recitation? Clarification is requested.
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.
Claim(s) 1-3, 7, 9, 12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana et al (US 2011/0262863).
Regarding claim 1, Tachibana teaches a colored resin composition which includes:
a colorant having a maximum absorbance between 500 to 1200 nm ([0104])
a copolymer with many repeat units ([0060])
a solvent which is compatible with the colorant and copolymer ([0110])
The copolymer can have the following repeat units ([0060]-[0061]):
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138
106
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Greyscale
glycidyl methacrylate (reads on the first repeating unit)
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156
116
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Greyscale
4-hydroxy-phenyl meth(acrylate) (reads on the second repeating unit)
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148
104
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phenyl methacrylate (reads on the third repeating unit)
Tachibana fails to specifically exemplify the exact copolymer recited in the claims. However, Tachibana discloses each of the components of the copolymer, and teaches that they are all suitable for use in the composition. It is within the ordinary level of skill in the art to make any of the copolymers suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the copolymers suggested by Tachibana, including the claimed copolymer. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Tachibana to arrive at the presently claimed invention. It would have been nothing more than using known components in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claim 2, Tachibana teaches in the examples that the percentage weight of colorant to the weight of the solvent overlaps the claimed range of 0.6 to 30% by weight. (Table 2). Please refer to example 1 which states that the colorant is present in the amount of 22 pbw and the solvent is present in the amount of (1470+150=1620 pbw) and therefore, the amount of colorant is present in the amount of 2% by the weight of the solvent.
Regarding claims 3 and 12, as the colorant used in Tachibana in paragraph [0106] can be the exact same structure as the recited in the present specification, it would inherently have the recited molar absorbance coefficient.
Regarding claims 7 and 16, Tachibana teaches that the polymer has a molecular weight of 1,000 to 200,000 ([0084]).
Regarding claim 9, Tachibana teaches that the colorant is a cyanine dye ([0104].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana et al (US 2011/0262863) in view of Ignatyev (US 2008/0275224).
The discussion regarding Tachibana in paragraph 8 above is incorporated here by reference.
Regarding claim 10, Tachibana teaches a cyanine dye including a cation having polymethine and nitrogen-containing heterocyclic ring at each terminal end of the polymethine ([0106]).
Tachibana teaches that anions are associated with the dye ([0095]), however, fails to teach that the anion is a tris(pentafluoroethyl) trifluorophosphate.
Ignatyev teaches cyanine dyes ([0002]) which incorporate anions such as tris(pentafluoroethyl) trifluorophosphate (FAP) ([0019]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the FAP anion of Ignatyev with the cyanine dye of Tachibana. One would have been motivated to do so in order to provide dyes which are stable and have good solubility in solvents (Ignatyev, [0007]).
Allowable Subject Matter
Claims 4-6 and 13-15 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
Prosecution Insights