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 .
Response to Arguments
1. Applicant’s arguments, see page 7, line 19, filed 06 July 2026, with respect to the rejection of Claims 1-11 and 14-15 under 35 U.S.C. 103 as being unpatentable over Shiota et al. (United States Patent Publication No. US 2014-0231729 A1), hereinafter Shiota; Claim 12 under 35 U.S.C. 103 as being unpatentable over Shiota et al. (United States Patent Publication No. US 2014-0231729 A1), hereinafter Shiota, in view of Abe et al. (Japanese Patent Publication no. JP 2018-060136 A), hereinafter Abe; have been fully considered but they are not persuasive. Applicant argues that multiple limitations of the independent claim of the present application are not simultaneously found in the experimental examples of the prior art. Examiner points to MPEP § 2123(I) which states:
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Also, Examiner points to MPEP § 2123(II) which states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” As such, Applicant’s arguments regarding all limitations of the present application being found in a single experimental example of the prior art is not persuasive. Applicant claims that the present application represents unexpected results, but the present claims are not commensurate in scope with the claims which the evidence is offered to support. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02. Herein, claims essentially ANY polymerizable monomer comprising a polyurethane acrylate oligomer, ANY photopolymerization initiator, ANY photoacid generator, ANY black colorant, and ANY solvent. Suffice to say, Applicant has not shown unexpected results across the entire range of said components of the composition. As such, Applicant’s arguments are not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 103
2. 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:
3. 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.
4. Claims 1-11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (United States Patent Publication No. US 2014-0231729 A1), hereinafter Shiota.
5. Regarding Claims 1-11 and 14-15, Shiota teaches (Paragraphs [0109-0150]) a resin comprising an alkali-soluble resin. Shiota teaches (Paragraphs [0109-0150]) a styrene-based resin. Shiota teaches (Paragraphs [0141 and 0148]) wherein a weight average molecular weight of the alkali-soluble resin is 2,000 to 20,000. Shiota teaches (Paragraphs [0053 and 0236]) the alkali-soluble resin comprises a structural unit having a fluorene ring and two or more ethylenic polymerizable groups. Shiota teaches (Paragraphs [0053, 0064, and 0076]) a polymerizable monomer comprising a polyurethane acrylate oligomer. Shiota teaches (Paragraphs [0052-0053]) a photopolymerization initiator. Shiota teaches (Paragraphs [0156-0176]) a photoacid generator. Shiota teaches (Paragraphs [0092-0100]) a black colorant. Shiota teaches (Paragraph [0109]) a solvent. Shiota teaches (Paragraphs [0053, 0057-0068, and 0322]) the structural unit having a fluorene ring and two or more ethylenic polymerizable groups comprises a structural unit represented by Formula (A1) of the present application. Shiota teaches (Paragraphs [0109-0150]) wherein the styrene-based resin (A-2) comprises a structural unit represented by Formula (A2) of the present application. Shiota teaches (Paragraphs [0053, 0064, and 0076]) wherein the polyurethane acrylate oligomer comprises a structural unit represented by Formula (B1) of the present application. Shiota teaches (Paragraphs [0053, 0079, 0157, and 0172]) wherein the polymerizable monomer further comprises a triazine-based monomer. Shiota teaches (Paragraphs [0053, 0079, 0157, and 0172]) wherein the polymerizable monomer further comprises a triazine-based monomer represented by Formula (B3) of the present application. Shiota teaches (Paragraphs [0053, 0079, 0157, and 0164]) wherein the photopolymerization initiator comprises an oxime ester-based compound. Shiota teaches (Paragraph [0451]) wherein the photoacid generator comprises a propane sulfonic acid-based compound. Shiota teaches (Paragraphs [0092-0100]) wherein the black colorant comprises a carbon black, a titanium black, or a combination thereof. Shiota teaches (Paragraph [0099]) wherein, based on a usage amount of 100 parts by weight of the resin composition, a usage amount of the carbon black is 10 parts by weight to 40 parts by weight, and a usage amount of the titanium black is 30 parts by weight to 70 parts by weight. Shiota teaches (Paragraphs [0102-0105]) wherein the solvent includes propylene glycol monomethyl ether, propylene glycol monomethyl ether acetate, dipropylene glycol monomethyl ether acetate, propylene glycol monoethyl ether, propylene glycol monopropyl ether, or a combination thereof. Shiota teaches (Paragraphs [0105 and 0150]) based on a usage amount of 100 parts by weight of the resin composition, a usage amount of the resin is 6 parts by weight to 40 parts by weight. Shiota teaches (Paragraphs [0077 and 0105]) based on a usage amount of 100 parts by weight of the resin composition a usage amount of the polymerizable monomer is 2 parts by weight to 40 parts by weight. Shiota teaches (Paragraphs [0080 and 0105]) a usage amount of the photopolymerization initiator is 0.01 parts by weight to 10 parts by weight. Shiota teaches (Paragraphs [0105 and 0174]) a usage amount of the photoacid generator is 0.01 parts by weight to 10 parts by weight. Shiota teaches (Paragraphs [0099 and 0105]) a usage amount of the black colorant is 40 parts by weight to 88 parts by weight. Shiota teaches (Paragraph [0105]) a usage amount of the solvent is 0.1 parts by weight to 20 parts by weight. Shiota teaches (Paragraph [0281]) a cured film formed by curing the resin composition. Shiota teaches (Paragraphs [0092-0100 and 0281]) a color filter comprising a black matrix formed by curing the resin composition.
6. However, Shiota fails to explicitly teach all components of the composition limited by the present application with a single experimental example. That said, all components of the composition are described with sufficient detail by the prior art. Thus, a person of ordinary skill in the art in view of Shiota would have found it obvious to try the combinations of components herein limited with a reasonable expectation of success. Furthermore, Shiota teaches that the disclosure therein is not limited by given examples (Paragraph [0052]) the basic components are taught, i.e. an alkali-soluble resin, a photopolymerization initiator, an organic solvent, a photopolymerable monomer, etc. and those teachings are not limited to one single embodiment. Thus, a person having ordinary skill in the art would understand that the teaching of Shiota includes combinations of compounds given for the different embodiments taught therein with a reasonable expectation of success.
7. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (United States Patent Publication No. US 2014-0231729 A1), hereinafter Shiota, in view of Abe et al. (Japanese Patent Publication no. JP 2018-060136 A), hereinafter Abe.
8. Shiota teaches all limitations of Claim 1 above. Furthemore, Shiota teaches (Paragraph [0106]) a surfactant. However, Shiota fails to explicitly teach wherein the surfactant comprises a fluorine-based surfactant, a siloxane-based surfactant, a nonionic surfactant, or a combination thereof.
9. Abe teaches (Paragraph [0232]) a (non-limited) surfactant as well as the surfactant may comprise a nonionic surfactant.
10. A person having ordinary skill in the art would understand that Shiota in view of Abe teaches the surfactant may comprise a nonionic surfactant. Doing so would involve only the simple substitution of one know element, i.e. a non-limited surfactant taught by both Shiota and Abe, with the nonionic surfactant taught by Abe and that said simple substitution would lead to predictable results given that both the non-limited surfactant and the nonionic surfactant serve the same function.
Conclusion
11. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
12. A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
13. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
14. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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16. 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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
