DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of App. No. PCT/JP2022/013566, filed on 03/23/2023, which is entitled to and claims the benefit of priority of JP Patent App. Nos. 2021-055075, filed 03/29/2021, and 2021-097851, filed 06/11/2021, respectively. The preliminary amendment filed on 09/25/2023 is entered and acknowledged by the Examiner.
3. Claims 1-20 are pending. Claims 1-20 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 12/24/2023, and 10/21/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Drawings
5. The drawings are received on 09/25/2023. These drawings are acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 11/21/2023 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 4 is 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 pre-AIA the applicant regards as the invention. Claim 4 recites “the carboxylic acid anhydride has 1 to 40 carbon atoms”, wherein applicant fails to articulate by sufficiently distinct functional language the correct number of carbons atom for carboxylic acid anhydride, since it is chemical not possible to have carboxylic acid anhydride comprising only one carbon atom, thus claim 4 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
9. Claim 17 is 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 pre-AIA the applicant regards as the invention. Claim 17 recites “the carboxylic acid anhydride has 1 to 40 carbon atoms”, wherein applicant fails to articulate by sufficiently distinct functional language the correct number of carbons atom for carboxylic acid anhydride, since it is chemical not possible to have carboxylic acid anhydride comprising only one carbon atom, thus claim 17 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
Claim Rejections - 35 USC § 102
10. 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.
11. Claims 1-8, 10-14, 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makino et al. (US Pub. No. 2011/0294049 A1, hereinafter “’049”).
Regarding claim 1: ‘049 discloses a black photosensitive composition (Page 30, [0426]-[0427]) comprising: a black pigment such as (Page 31, [0433], Table 4, Examples 4-1 to 4-11, 4-14 and 4-15), a resin (Page 30, [0429], specific Resin 1; Page 31, [0432], a binder polymer), a carboxylic acid anhydride (Page 31, [0432]; Page 31, [0433], Table 4), and a polymerizable compound (Page 31, [0432]-[0433], Table 4, see D-1 to D-11, D14, and D-15 in Examples 4-1 to 4-11, 4-14 and 4-15), wherein the carboxylic acid anhydride has a molecular weight of 50 to 550, the carboxylic acid anhydride has a content of 0.30% to 10.0% by mass with respect to a total solid content of the black photosensitive composition (Page 31, [0432]-[0433], Table 4), and the black pigment such as titanium black has an average particle diameter of 75 nm (Page 30, [0427]) .
Regarding claims 2-4,16-17: ‘049 discloses the black photosensitive composition (Page 30, [0426]-[0427]), wherein the carboxylic acid anhydride is a cyclic carboxylic acid anhydride, and a compound obtained by subjecting the cyclic carboxylic acid anhydride to ring opening has a pKa of -1.20 to 4.50 such as compound (B)-6 or (B)-7 (Page 21, [0352]; Page 23, Compound (B)-6 or (B)-7; Page 29, Table 3, Examples 3-9,3-10), which are similar to instant carboxylic acid anhydride od S-2 and S-4 (US Pub. No. 2024/0045328 A1, Page 42, [0757], Compound S-2 and S-4), wherein the carboxylic acid anhydride has a ClogP value of 6.00 or less, and the carboxylic acid anhydride has 1 to 40 carbon atoms (US Pub. No. 2024/0045328 A1, Page 44, [0757], Compound S-2 and S-4) as shown below.
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Regarding claims 5-6,18: ‘049 discloses the black photosensitive composition (Page 30, [0426]-[0427]), wherein the carboxylic acid anhydride is a carboxylic acid anhydride selected from the group consisting of a carboxylic acid anhydride represented by Formula (P1) such as compound (B)-6 or (B)-7 (Page 21, [0352]; Page 23, Compound (B)-6 or (B)-7; Page 29, Table 3, Examples 3-9,3-10), which are similar to instant carboxylic acid anhydride od S-2 and S-4 (US Pub. No. 2024/0045328 A1, Page 42, [0757], Compound S-2 and S-4).
Regarding claims 7,19: ‘049 discloses the black photosensitive composition (Page 30, [0426]-[0427]), wherein the black pigment is one or more selected from the group consisting of titanium black having an average particle diameter of 75 nm (Page 30, [0427]; Page 31, [0433], Table 4, Examples 4-1 to 4-11, 4-14 and 4-15).
Regarding claims 8,20: ‘049 discloses the black photosensitive composition (Page 30, [0426]-[0427]), wherein the black photosensitive composition contains inorganic particles different from the black pigment, or the black photosensitive composition contains the inorganic particles different from the black pigment and modified inorganic particles having a coating layer that coats at least a part of the inorganic particles (Page 13, [0163]).
Regarding claim 10: ‘049 discloses a cured film that is formed from the black photosensitive composition (Page 1, [0002]; Page 31, [0439], Example 5; Page 31, [0441]-[0442]; Page 33, Claim 16).
Regarding claim 11: ‘049 discloses a color filter comprising: the cured film (Page 1, [0002]; Page 31, [0439], Example 5; Page 31, [0441]-[0442]; Page 33, Claim 17).
Regarding claim 12: ‘049 discloses a light shielding film comprising: the cured film (Page 13, [0163]; Page 19, [0319]).
Regarding claim 13: ‘049 discloses an optical element comprising: the cured film (Page 19, [0319]; Page 32, [0447]-[0448]).
Regarding claim 14: 049 discloses a solid-state imaging element comprising: the cured film (Page 31, [0439], Example 5; Page 32, [0447]-[0448]).
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 9, 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Makino et al. (US Pub. No. 2011/0294049 A1, hereinafter “’049”) as applied to claim 1 above, and further in view of Takahiro Oya (US Pub. No. 2022/0018992 A1, hereinafter “’992”).
Regarding claim 9: The disclosure of ‘049 is adequately set forth in paragraph 11 above and is incorporated herein by reference. ‘049 teaches a method of producing a color filter, the method comprising: forming a polymerizable composition layer by applying the polymerizable composition onto a support; exposing the polymerizable composition layer to light in a patterned manner; and forming a colored pattern by developing the exposed polymerizable composition layer (Page 33, Claim 18). ‘049 does not expressly teach a production method for the black photosensitive composition, wherein the polymerizable compound is added to the black composition in a final mixing step.
However, ‘992 teaches a production method for the black photosensitive composition (Page 38, [0759]-[0760]) comprising a black color material, inorganic particles, and a resin, wherein the polymerizable compound is added to the black composition in a final mixing step (Page 47, [0878], Page 47, [0878]-[0899]; Page 48, Table 2).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since changes in sequence of adding Ingredients (i.e., selection of any order of performing process steps is prima facie obvious) for its intended use is within the level ordinary skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding claim 15: The disclosure of ‘049 is adequately set forth in paragraph 11 above and is incorporated herein by reference.’049 does not expressly teach a headlight unit of a lighting tool for a vehicle, comprising: a light source; and a light shielding unit that shields at least a part of light emitted from the light source, wherein the light shielding unit includes the cured film.
However, ‘992 teaches a headlight unit for a vehicle lighting tool, comprising: a light source; and a light shielding part which shields at least a part of light emitted from the light source, wherein the light shielding part includes the light shielding film (Page 37, [0744]; Page 38, [0746, Fig. 4; Page 53, Claim 26).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Prior-Art Cited But Not Applied
14. Any prior-art reference which is cited on FORM PTO-892 but not applied is cited of interest to show the general state of the prior-art at the time of the application’s invention. Please see Idei et al. (US Pub. No. 2015/0010856 A1).
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
09/03/2025
bijan.ahvazi@uspto.gov