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 § 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 2, 3 and 10 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.
Instant claim 2 recites “wherein a weight average molecular weight of each resin in the alkali-soluble resin (A-1)” However, the claim as written is implying that more than one alkali-soluble resin (A-1) are present in claims 1 and 2. However, claim 1 only requires “one” alkali-soluble resin (A-1). The claim as written is indefinite and confusing. Examiner suggests amending claim 1 to delete the term “each” or amending the claim to depend from claim 4. Appropriate correction is required.
Instant claim 3 recites “wherein an acid value of each resin in the alkali-soluble resin (A-1) and the other resin (A-2)” However, the claim as written is implying that more than one alkali-soluble resin (A-1) and other resin (A-2) are present in claims 1 and 3. However, claim 1 only requires “one” alkali-soluble resin (A-1) or one other-resin (A-2). The claim as written is indefinite and confusing. Appropriate correction is required.
Instant claim 10 recites “ The photosensitive resin composition according to claim 9, wherein the pigment (D) comprises a black pigment (D-2),…” However, instant claim 9 recites “ The photosensitive resin composition according to claim 1, wherein the pigment (D) comprises a white pigment (D-1),..” The claim as written is indefinite and unclear. Does applicant intends the pigment of the instant invention to be a white pigment and black pigment or either white or black pigment. Examiner suggests amending claim 10 to recite “further” comprising. Appropriate correction is required.
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, 3, 5-6,9-10 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh et al. (CN 108415221 A1; citations from attached English Machine Translation).
Regarding claims 1, 3, 5-6,9-10 and 14, Hsieh et al. teach a photosensitive resin composition ( see abstract, claims, examples and paragraphs [0001-0002]), comprising a resin (A) comprising an alkali-soluble resin (C-2) having acid value preferably from 50 mg KOH/g to 200 mg KOH/g [0009 , 0084-0087 & 0176-0177] ( other resin (A-2) having an acid value of 60 mg KOH/g to 135 mg KOH/g); an ethylenically unsaturated monomer (B) comprises alkyl (meth)acrylate ( propyl acrylate; Compound (D) containing an ethylene unsaturated group; [0178-0184]); a photopolymerization initiator (C ) comprising a compound represented by radical photoinitiator (E-4) biimidazole [0288] meeting the limitation of a compound represented by formula (C1) as instantly claimed; a pigment (D) ( pigment (A); [0073-0075] iron oxides (black pigment) or titanium oxide ( white pigment) ; and solvent ( E) ( solvent (F); [0299]). Hsieh et al. also teaches the photosensitive resin composition further comprises a fluorinated surfactant [0078-0079].
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.
Claim(s) 16 and 18-23 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hsieh et al. (CN 108415221 A1; citations from attached English Machine Translation).
Regarding claims 16 and 18-23, Hsieh et al. teach a light emitting device comprising a light conversion layer comprising the cured product ( light-curing coating layer; claims, examples and [0310]).
Examiner notes claim 16 recites product by process language, “formed by curing the photosensitive resin composition." The photosensitive resin composition is not a positive recitation in claim 16.
Applicant is reminded of MPEP 2113: "[E]ven though product-by-process claims are limited by and defined by the process; determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The cured product of Hsieh et al. has not been shown to be different than the instant cured product.
Allowable Subject Matter
Claims 4, 7, 8, 11-13, 15 and 17 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
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/CHANCEITY N ROBINSON/ Primary Examiner, Art Unit 1737