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 Status
Claims 1-14 are under consideration
Claims 15-19 are withdrawn
Election/Restrictions
Applicant’s election of claims 1-14 in the reply filed on 06/17/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/17/2026.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (TWI732580B, published 7/1/2021, references made to related US publication US20210382389A1).
Regarding claims 1-10 and 13-14,
Chen teaches a photosensitive resin composition comprising of an alkali-soluble resin (A); an ethylenically-unsaturated monomer (B); and a photopolymerization initiator (C), where the alkali-soluble resin (A) comprises an alkali-soluble resin (A-1), wherein the alkali-soluble resin (A-1) comprises a structural unit represented by formula (I-1) and a structural unit represented by formula (I-2),
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in formula (I-1), R1 and R2 respectively represent a hydrogen atom or a methyl group, X1 represents ethylene, propylene, butylene, 1,2-phenylene, 1,2-cyclohexylene, 1,2-cyclohex-1-enylene, 4,5-cyclohex-1-enylene, or norbornenylene, and * represents a bonding position;
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and in formula (I-2), R3 and R4 respectively represent a hydrogen atom or a methyl group, and * represents a bonding position, [claim 1], aligning with the instant alkali-soluble resin.
Chen further teaches the ethylenically-unsaturated monomer (B) may also include other ethylenically-unsaturated monomers (B-2) [0085], such as 9,9-bis [4-(2-acryloyloxy ethyloxy)phenyl]fluorene (shown below, reading on the instant compound represented by formula (B1)), 1,6-hexanediol diacrylate, or combinations thereof [0097], reading on instant claims 1 and 6.
Chen teaches that based on 100 parts by weight of the alkali-soluble resin (A), the ethylenically-unsaturated monomer (B) may be 15 parts by weight to 35 parts by weight, preferably 20 parts by weight to 30 parts by weight [0101], reading on instant claim 2.
Chen teaches that based on 100 parts by weight of the alkali-soluble resin (A), the photopolymerization initiator (C) may be preferably 2 parts by weight to 5 parts by weight [0126], reading on instant claim 14.
Chen teaches that in the alkali-soluble resin (A-1), based on a total of 100 mol % of the structural unit represented by formula (I-1) and the structural unit represented by formula (I-2), the structural unit represented by formula (I-2) may be 40 mol % to 70 mol %, preferably 50 mol % to 65 mol % [0056], reading on instant claim 3.
Chen teaches the weight-average molecular weight of the alkali-soluble resin (A-1) may be 3,000 to 20,000 [0061], reading on instant claim 4.
Chen teaches the acid value of the alkali-soluble resin (A-1) may be 30 mgKOH/g to 100 mgKOH/g [0062], reading on instant claim 5.
Chen teaches the photopolymerization initiator (C) includes an acylphosphine oxide compound (C-1). In addition, the photopolymerization initiator (C) may further include an oxime ester-based compound (C-2). In addition, the photopolymerization initiator (C) may also include other photopolymerization initiators (C-3) [0103], reading on instant claim 7.
Chen teaches including a solvent (D) [0127], where based on 100 parts by weight of the alkali-soluble resin (A), the solvent (D) may be preferably 30 parts by weight to 50 parts by weight [0131], reading on instant claim 8.
Chen teaches further including an additive (F), which may be a siloxane-based surfactant, a fluorine-based surfactant, or a combination thereof [0138], reading on instant claim 9.
Chen teaches including a pigment (E) which includes a white pigment (E-1), where the white pigment is at least one selected from a group including zirconium oxide (zirconium dioxide) and titanium oxide (titanium dioxide) [0132-0133], reading on instant claim 10.
Chen teaches that based on 100 parts by weight of the alkali-soluble resin (A), the pigment (E) may be 55 parts by weight to 95 parts by weight, preferably 60 parts by weight to 80 parts by weight [0137], reading on instant claim 13.
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.
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.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (TWI732580B, published 7/1/2021, references made to related US publication US20210382389A1) as applied to claim 1 above, and further in view of Arayama (US20150166783A1, published 2015).
Regarding claims 11-12,
Chen teaches the above limitations set forth.
Chen is silent to the particle size and refractive index of their zirconium oxide (zirconium dioxide) and titanium oxide (titanium dioxide).
Arayama, analogous art, teaches a curable composition containing metal oxide particles and a polymer [abstract], where the composition is cured by an exposure process by irradiation of radiation (photosensitive resin composition) [0308]. Arayama teaches the particles may be titanium dioxide or zirconium dioxide particles, preferably titanium dioxide particles [0073] with a primary particle diameter of 1 nm to 100 nm [0076], overlapping the range of instant claim 12. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Arayama further teaches the refractive index of metal oxide particles is preferably from 1.75 to 2.70, and more preferably 1.90 to 2.70, from the viewpoint of obtaining a high refractive index [0079], reading on instant claim 11.
As both Arayama and Chen teach photosensitive resin composition comprising of metal oxide particles, it would have been obvious to a person of ordinary skill in the art that using the zirconium oxide (zirconium dioxide) and titanium oxide (titanium dioxide) particles of Chen with the particle size and refractive index disclosed by Arayama would result in a comparable and expected photosensitive resin composition.
That is, the substitution of the particle size and refractive index disclosed by Arayama for the zirconium oxide (zirconium dioxide) and titanium oxide (titanium dioxide) particles of Chen, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a photosensitive resin composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20150376355A1 teaches a photosensitive resin composition comprising of an alkali-soluble resin, a solvent, and an ortho-naphthoquinon diazide sulfonic acid ester, wherein the alkali-soluble resin (A) is copolymerized by an unsaturated carboxylic acid or unsaturated carboxylic anhydride compound (a1), a fluorene derivative having a double-bond group (a2) and an unsaturated compound having an acid-decomposable group (a3), wherein the fluorene derivative having a double-bond group (a2) has a structure of Formula (II).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571) 272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander N. Lee/Examiner, Art Unit 1737
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