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 Interpretation
The limitation “liquid repellent” in the claims, given BRI, is being interpreted a substance which deters or repels liquids, i.e., oil and/or water. Thus, a resin composition comprising a compound represented by chemical formula 1 or chemical formula 2 will meet the claim limitations, wherein it is deemed the liquid repellency property will be inherent, in absence of evidence to the contrary, since products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable.
If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 6-8 and 14-16 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.
In claims 6 and 14, it is set forth the liquid repellent further includes a compound of formula (3) or a compound of formula (4). It is unclear if applicant intends the “further include” to mean the liquid repellent comprises a separate compound of formula (3) or (4) and separate compound (1) or (2), i.e., a mixture of two or more compounds. Does applicant intend for “further include” to mean the liquid repellent is a copolymeric compound which comprises structural units of chemical compound (1) or (2) and structural units of chemical compound (3) or (4). Clarification is requested.
In claims 7 and 15, it is set forth the liquid repellent further includes a compound of formula (5). It is unclear if applicant intends the “further include” to mean the liquid repellent comprises a separate compound of formula (5) and separate compound (1) or (2), i.e., a mixture of two or more compounds. Does applicant intend for “further include” to mean the liquid repellent is a copolymeric compound which comprises structural units of chemical compound (1) or (2) and structural units of chemical compound (5). Clarification is requested.
In claims 8 and 16, it is set forth the liquid repellent further includes a compound of formula (6). It is unclear if applicant intends the “further include” to mean the liquid repellent comprises a separate compound of formula (6) and separate compound (1) or (2), i.e., a mixture of two or more compounds. Does applicant intend for “further include” to mean the liquid repellent is a copolymeric compound which comprises structural units of chemical compound (1) or (2) and structural units of chemical compound (6). Clarification is requested.
Claim Rejections - 35 USC § 102
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 and 8 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Kohler et al (CA 1,336,091).
Kohler sets forth photoinitiator copolymers.
Regarding claims 1 and 8: Per examples 7 and 8, Kohler sets forth a resin composition comprising 4-2-acryloyloxyethylthiophenyl 2-N-morpholino-2-propyl ketone (Ik); 4-[2-(methacryloyloxy) ethoxy carbonyl] thioxanthone; and acrylic acid to obtain a copolymer comprising a structural unit corresponding to chemical formula (2) and an acid group. This is deemed to anticipate claim 1 and therefore should inherently have liquid repellency, i.e., be a liquid repellent. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 should not be negated by the manner in which the invention was made.
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohler as applied to claims 1 and 8 above.
Kohler is set forth above as anticipating the resin composition of claims 1 and 8 as set forth above. Kohler sets forth said photoinitiator copolymers can be photo-structured and are suitable for use as negative photoresist—see page 11, lines 37-39. It is deemed photoresists are known components in display devices, such as LEDs.
Kohler additionally sets forth methods comprising spin coating solutions of said photoinitiator copolymers onto glass plates and exposing said coating plates to radiation via a mask (plate of which half is covered) having a power/illuminance of 80 W/cm2 (80,000 mW/cm²--see page 18, line 23), wherein after exposure the irradiated film is developed using acetone to remove unexposed parts to obtain a negative resist—see page 19, lines 10-20.
The primary difference is Kohler does not expressly teach using the polymeric copolymers having structural units corresponding to chemical formula (2), i.e., those found in examples 7-8 in the method for obtaining said negative resist, i.e. copolymeric photoinitiators -2-acryloyloxyethylthiophenyl 2-N-morpholino-2-propyl ketone (Ik)/4-[2-(methacryloyloxy)ethoxy carbonyl] thioxanthone/acrylic acid. However, from the overall teachings of the reference a skilled artisan would have at least found it obvious to try to obtain a negative photoresist from the copolymer obtain in examples 7-8 with a reasonable expectation of successfully obtaining a photo-structured polymer in absence of evidence to the contrary and/or unexpected results.
Claim(s) 1-3, 5, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harada (JP10-279834).
Harada sets forth fluoropolymer coating films having water/oil repellency, as well as processes to obtain such.
Said film is composed of a layer of a polymer segment (I) on the side of a substrate and a layer of a fluoropolymer segment (II), formed thereon—see overview.
Said polymer segment (I) is formed from a monomer having a photopolymerization initiating group, wherein the photopolymerization initiating group fragment contains a group:
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. Harad sets forth compounds such as 4-(2-hydroxy-2-methylpropionyl)phenyl group, a 4-(1-hydroxycyclohexylcarbonyl)phenyl group, a 4-(2-dimethylamino-2-methylpropionyl)phenyl group, a 4-(2-morphorino-2-methylpropionyl)phenyl group, a 4-(α,α-dimethoxybenzyl carbonyl)phenyl group are preferably examples of the photopolymerization initiating group for obtaining the photopolymerization initiating group fragment—see [0039]. Hadara sets forth said initiating groups can be obtained from monomers, such as 1-{4-(2-(metha)acryloyloxyethoxy)phenyl}-2-hydroxy-2-methylpropane-1-one, {4-(2-(metha)acryloyloxyethoxy)phenyl}(1-hydroxycyclohexyl)ketone, 1-{4-(2-(metha)acryloyloxyethoxy)phenyl}-2-morphorino-2-methylpropane-1-one, 1-{4-(2-(metha)acryloyloxyethoxy)phenyl}-2-dimethylamino-2-methylpropane-1-one, 1-[4-{2-(2-((metha)acryloyloxy)ethoxycarbonyloxy)ethoxy}phenyl]-2-hydroxy-2-methylpropane-1-one, and 1-{4-(2-(meth)acryloyl ethoxy)phenyl}-2,2-dimethoxy-2-phenylethane-1-one—see [0056].
Harda sets forth obtaining said fluoropolymer coating film having oil/water repellency by coating a solution comprising a monomer having a photoinitiation group and optionally one or more monomer having no photoinitiation group and additives. Said solution is coated onto a substrate and polymerized in the presence of a radical initiator to obtain a polymer film comprising a photoinitiator group to obtain layer (I), i.e. a layer comprising polymer segment (I)see [0058-0059]. After the formation of the polymer film layer (I) having photoinitiator group, Hadara sets forth forming the fluorine-containing polymer segment (II) to obtain said polymer film having oil/water repellency.
Per example 1 and 8--Table 2: Hadara sets forth coating an acrylic plate (substrate) with a polymer solution comprising a copolymer comprising 1-{4-(2-(metha)acryloyloxyethoxy)phenyl}-2-hydroxy-2-methylpropane-1-one/methyl methacrylate/ hydroxyethyl acrylate/methacrylic acid in a ratio of 30/50/10/10 to obtain coating (I) comprising pendent photoinitiator and acid groups (from methacrylic acid)—see example 1 and Table 1. Said copolymer comprises 0.3 wt. % of photoinitiator moieties. It is deemed this intermediate resin film reads on the resin composition of claim 1, where the primary difference is the obtain coating/resin (I) does not comprise a compound of formula (1) or formula (2), as claimed. However, in the overall teachings of the reference Harada sets forth the polymerizable photoinitiator 1-4-(2-(meth) acryloyloxyethyl) phenyl-2-morphorino-2-methylpropane-1-one (corresponding to claimed formula (2)) is a preferable compound for obtaining said polymer segment (I). Therefore, it would have been within the skill level of an ordinary artisan from the overall teachings of the reference to obtain a resin composition comprising a liquid repellent, wherein said liquid repellent comprises a compound represented by at least formula (II) Therefore, it is deemed a skilled artisan using the method of Hadara could obtain a liquid repellent, wherein said liquid repellent includes polymer segment (I) by using equivalently taught polymerizable photoinitiator monomer, 1-{4-(2-(metha)acryloyloxyethoxy)phenyl}-2-morphorino-2-methylpropane-1-one in example 1 with a reasonable expectation of successfully polymer segment (I) in absence of evidence to the contrary and/or unexpected results. Thus, it is deemed claim 1 is obvious in view of the method set forth by Hadara.
Regarding claims 2-3: the pendent photoinitiator comprising formula [2] would be 0.3 wt.% when obtained using the method of example 1. Thus, claim 2-3 are obvious in view of the teachings. The courts have upheld, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955).
Regarding claim 5: the molecular weight of the polymer obtained, in example 2 is 21000 g/mol. Thus, claim 5 is obvious in view of the overall teachings. The courts have upheld, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955).
Regarding claim 8: the polymer of example 1 comprises acrylic acid. Additionally, Harada sets forth other polymerizable monomers can be used in obtaining polymer segment (I), such as acrylamide, N,N-dialkyl aminoalkyl(meth)acrylate , fumaric esters, glycidyl (meth) acrylate, maleic esters, itaconic esters, (meth) acrylic acids, maleic anhydrides, styrene, vinyl acetates, N-vinyl pyrrolidone , N-vinylpyridine, fluorine-containing monomers, silicon-containing monomers, and phosphorus-containing monomers—see [0036].
Allowable Subject Matter
Claims 4, 10-15, 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.
The following is a statement of reasons for the indication of allowable subject matter: Hadara is the closest prior art. The instant claims are differentiated over Harada since the fluoropolymer coating film (final product) having said oil/water repellency obtained does not comprise the chemical formula (1) or (2) after exposure to radiation step [0068], [0073] and Table 2. The method comprises forming a layer of a polymer segment (I) having a photopolymerization initiating group fragment by free radical polymerization and forming a layer of a fluorine-containing polymer segment (II) formed from a fluorine-containing monomer bonded thereto via the photopolymerization initiating group fragment by exposure to radiation. Thus, the manufacturing method of a display device of claim 9 and the display device defined in claim 18 are distinguished over the closest prior art.
Claims 18-20 are allowed.
The following is an examiner’s statement of reasons for allowance: As of the date of this Office action, the Examiner has not located or identified any reference that can be used singularly or in combination with another reference including Kohler et al and Hadara (both cited above), to render the present claims anticipated or obvious to one of ordinary skill in the art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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