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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: Page 2 recites “R41 to R44 are each independently a halogen atom, or a substituent represented by *-L1-L2-A, provided that at least one of R41 to R44 is a substituent represented by *-L1-L2-A” and Page 6 recites “R41 to R44 may each independently be or include, e.g., a halogen atom, or a substituent represented by *-L1-L2-A, provided that at least one of R41 to R44 is a substituent represented by *-L1-L2-A”. However, page 9 recites “In an implementation, any one of R41 to R44 may be a substituent represented by *-L1-L2-A; and the rest may be all hydrogen atoms or all halogen atoms” and pages 11-16 include Chemical Formulae 1-1-2, 1-1-4, 1-1-5, 1-1-7, 1-1-9, 1-1-10, 1-1-12, 1-1-14, and 1-1-15 which demonstrate when R41, R42, and R44 are hydrogen atoms.
Appropriate correction is required.
Claim Objections
Claim 17 is objected to because of the following informalities: Claim 17 recites “manufacturing using” which should instead recite --comprising--. Appropriate correction is required.
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.
Claims 11-13, 15, and 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.
The term “about” in claims 11-13, 15, and 16 are a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The maximum absorption wavelength, weight ratio, and amounts of each component are all rendered indefinite by the term “about”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 9, and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites “as claimed in claim 1, wherein one of R41 to R44 is a substituent represented by *-L1-L2-A; and the rest are all hydrogen atoms or halogen atoms”. Claim 9 recites “as claimed in claim 1, wherein the additive is represented by Chemical Formula 1-1…R41, R42, and R44 are each independently a hydrogen atom or a halogen atom”. Claim 10 recites “as claimed I claim 1, wherein the additive represented is a compound represented by one of the following Chemical Formulae:
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”. However, claim 1 recites “R41 to R44 are each independently a halogen atom, or a substituent represented by *-L1-L2-A, provided that at least one of R41 to R44 is a substituent represented by *-L1-L2-A”. Thus, claims 5, 9, and 10 do not include all of the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. The Examiner suggests amending claim 1 to include hydrogen atoms as part of the definition for R41 to R44.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-20 of copending Application No. 18/380,247 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to photosensitive resin compositions comprising a colorant, a photopolymerizable compound, a photopolymerization initiator, a binder resin, and a solvent where the colorant includes a phthalocyanine compound, a dispersant, and a pigment. Specifically, Chemical Formula 1 of ‘247, more specifically Chemical Formula 1-1 when defined as: R11-R14 are hydrogen atoms or halogen atoms, R21, R23, R24, and R31-R34 are hydrogen atoms, R22 is a substituted C4 alkyl group or a hydrogen atom, R41, R42, and R44 are hydrogen atoms or halogen atoms, R51-R54 are hydrogen atoms, and R55 is a carboxyl group it encompasses the instantly claimed Chemical Formula 1, specifically Chemical Formula 1-1, more specifically Chemical Formulae 1-1-1 to 1-1-5. Chemical Formula 1-1-4 of ‘247 encompasses instantly claimed Chemical Formula 1 of instant claims 1-8, specifically Chemical Formula 1-1 of instant claim 9 when M is Zn, R11-R14, R21, R23, R24, and R31-R34 are hydrogen atoms, R22 is a substituted C4 alkyl group, R41, R42, and R44 are halogen atoms, R51, R53, and R54 are hydrogen atoms, and R52 and R55 are carboxyl groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami et al. (WO2014021100) in view of Shin et al. (U.S. 2021/0124264). Translation attached.
Murakami et al. teaches the colored curable composition of the present invention (hereinafter sometimes referred to as "composition of the present invention") includes at least a coloring agent containing a halogenated phthalocyanine dye, a thermosetting compound, and a solvent that dissolves at least a halogenated phthalocyanine dye and a thermosetting compound, wherein the total content of the coloring agent is 60 to 90 mass % with respect to the total solid content [0013] and he compound represented by the general formula (1) is also preferably represented by the following general formula (1-5). When the compound represented by the following general formula (1-5) is contained, the chemical resistance can be further improved [0059]:
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[0059] wherein Z1 to Z16 each represent a hydrogen atom, a halogen atom, a group represented by general formula (1-5-1), at least one of Z1 to Z16 represents a group represented by (1-5-1), and at least one of Z1 to Z16 is a halogen atom. M represents two hydrogen atoms, metal atoms, metal oxides or metal halides:
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wherein L1 represents a divalent linking group, Ar represents an arylene group, and A represents a group represented by general formula (1-5-2). * represents a site to be bonded to a phthalocyanine ring:
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wherein L2 represents a single bond or a divalent linking group. R5 to R7 each represent a hydrogen atom or a monovalent substituent. * represents a site to be bonded to Ar in the general formula (1-5-1) [0059]; where When the central metal is zinc or copper, heat resistance is high, which is preferable. In addition, when the center metal is zinc, it is particularly preferable that the transmittance in the vicinity of 520 nm to 545 nm, which is the wavelength of green than in the case of copper, is high and the luminance can be improved when the center metal is made into a color filter. In addition, the solvent solubility in a general-purpose solvent such as acetone, methanol, and methyl cellulose is high, and the solubility in the resin is high and the contrast is high, and therefore, it is particularly preferable [0056], L1 is preferably a divalent linking group comprising one or more combinations of -O-, -S-, -C(=O)-, -CH2-, -C(=S)-, -NRA-, -SO-, -SO2-, particularly preferably -O- [0060], Ar is more preferably a phenylene group [0061], and L2 is preferably a divalent linking group comprising one or more combinations of -O-, -S-, -C(=O)-, -CH2-, -CH(OH)-, -C(=S)-, -NRB-, -SO-, -SO2-; L2 preferably has a C(=O)O- structure on the double bond side [0062] and the other substituent T includes an alkyl group (preferably a linear, branched or cyclic alkyl group having 1 to 24 carbon atoms, for example, a methyl group, an ethyl group, a propyl group, an isopropyl group, a butyl group, a tert-butyl group, a pentyl group, a hexyl group, a heptyl group, an octyl group, a 2-ethylhexyl group, a dodecyl group, a hexadecyl group, a cyclopropyl group, a cyclopentyl group, a cyclohexyl group, a 1-norbornyl group, a 1-adamantyl group) [0050]; such that when M is zinc, Z1-Z4 is a halogen atom (e.g. Cl) while Z5, Z7-Z14, and Z16 are hydrogen atoms, or when Z1-Z5 and Z7-Z12 are hydrogen atoms while Z13, Z14, and Z16 are halogen atoms (e.g. Cl), Z6 is a tert-butyl group, and Z15 is represented by General Formula (1-5-1) when L1 is -O-, Ar is phenylene, and A is represented by General Formula (1-5-2) where L2 is C(=O)O and R5-R7 are hydrogen atoms it is equivalent to an additive represented by Chemical Formula 1 of instant claims 1-8, specifically Chemical Formula 1-1 of instant claim 9, more specifically Chemical Formula 1-1-6 or Chemical Formula 1-1-7 respectively of instant claim 10. Murakami et al. also teaches examples of the phthalocyanine compound used in the present invention will be described below, but the present invention is not limited thereto [0066] and it is possible to provide a colored curable composition capable of forming a colored layer pattern having excellent spectral characteristics even when formed into a thin film and having high chemical resistance and heat resistance [0007]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Murakami et al. to include additional compounds of formula (I) such as those defined above and arrive at the instant claims through routine experimentation of substituting equally suitable groups for the sought invention in order to achieve excellent spectral characteristics. Murakami et al. further teaches the halogenated phthalocyanine dye used in the present invention is usually a compound having a maximum absorption wavelength in a region of 600 to 800 nm, and preferably having a maximum absorption wavelength in a region of 630 to 750 nm [0014] (claim 11). Murakami et al. also teaches in addition to the halogenated phthalocyanine compound, the composition of the present invention may contain another coloring agent, and preferably contains another coloring agent. As another colorant, a yellow dye is preferably used, and even a dye or a pigment may be a dye or a pigment, but is preferably a dye from the viewpoint of obtaining a composition in a uniformly dissolved state without using a dispersant [0107] and when a pigment is used for adjusting the composition of the present invention, it is preferable to use a pigment dispersion. From the viewpoint of improving the dispersibility of the pigment, it is preferable to further add a pigment dispersant. Examples of the pigment dispersant that can be used in the present invention include a polymer dispersant [0115-0116] and the content of the pigment dispersant in the composition of the present invention is preferably 1 to 80 parts by mass, more preferably 5 to 70 parts by mass, and still more preferably 10 to 60 parts by mass with respect to 100 parts by mass of the pigment, which is a coloring agent. Specifically, when a polymer dispersant is used, the amount of the polymer dispersant used is preferably in the range of 5 to 100 parts by mass and more preferably in the range of 10 to 80 parts by mass relative to 100 parts by mass of the pigment [0121] (claims 12-15). Murakami et al. further teaches from the viewpoint of coatability, the content of the solvent in the colored curable composition is preferably an amount in which the total solid content concentration of the composition is 5 to 30 mass %, more preferably 7 to 25 mass %, and particularly preferably 10 to 20 mass % [0192]. Murakami et al. further teaches at least one pattern among the patterns constituting the color filter is a colored pattern formed from the colored curable composition of the present invention described above [0215]; an example of a method for manufacturing a color filter of the present invention includes the steps of: forming a colored layer using the colored curable composition of the present invention; forming a photoresist layer on the colored layer; patterning the photoresist layer by exposure and development to obtain a resist pattern; and dry-etching the colored layer using the resist pattern as an etching mask [0216]; since the first colored layer is formed of the colored curable composition of the present invention, as described above, the first colored layer has excellent solvent resistance and alkali developer resistance. As a result, in the step of forming the resist pattern (patterned photoresist layer) as a mask for etching on the first colored layer, the step of forming the second colored radiation-sensitive layer on the first colored layer with the second colored radiation-sensitive composition, and the step of forming the third colored radiation-sensitive layer with the third colored radiation-sensitive composition on the first colored layer, the organic solvent in the second or third colored radiation-sensitive composition or the second or third colored radiation-sensitive layer formed by the second or third colored radiation-sensitive composition can be dissolved in the developer used when the second or third colored radiation-sensitive layer is exposed and developed, and the color component in the first colored layer may be eluted into the solvent or the developer, or the color component in the second or third colored radiation-sensitive composition may be prevented from being mixed into the first colored layer. As a result, the occurrence of the color drop of the color component in the first colored layer and the occurrence of the overlap region in which the plurality of colors overlap each other can be suppressed, so that the performance of the finally obtained color filter can be improved [0217]; each of the second colored radiation-sensitive composition and the third colored radiation-sensitive composition contains a colorant [0258]; it is preferable that the second colored radiation-sensitive composition and the third colored radiation-sensitive composition are each a negative-type radiation-sensitive composition [0260]; specifically, the negative radiation-sensitive composition is preferably a composition containing a photopolymerization initiator, a polymerization component (polymerizable compound), and a binder resin [0261]; and the color filter obtained from the colored curable composition of the present invention can be suitably used for a liquid crystal display device (LCD) or a solid-state imaging device (for example, a CCD, a CMOS, or the like) [0265] (claims 1 and 17-20). Murakami et al. does not teach the colored curable composition comprises a photopolymerizable compound, a photopolymerization initiator, and a binder resin.
However, Shin et al. teaches a photosensitive resin composition may include, e.g., the phthalocyanine compound according to the embodiment, a binder resin, a photopolymerizable compound, a photopolymerization initiator, and a solvent [0070] and the binder resin may be included in an amount of about 1 wt % to about 20 wt %, e.g., about 1 wt % to about 15 wt %, or about 1 wt % to about 10 wt %, based on the total weight of the photosensitive resin composition. When the binder resin is included within the above range, developability may be improved and excellent surface smoothness may be improved due to improved cross-linking during the production of a color filter [0093]; the photopolymerizable compound may be included in an amount of about 1 wt % to about 15 wt %, e.g., about 1 wt % to about 10 wt %, based on the total weight of the photosensitive resin composition. When the photopolymerizable compound is included within the range, the photopolymerizable compound is sufficiently cured during exposure in a pattern-forming process and has excellent reliability, and developability for alkali developing solution may be improved [0099]; the photopolymerization initiator may be included in an amount of about 0.01 wt % to about 10 wt %, e.g., about 0.1 wt % to about 5 wt %, based on the total weight of the photosensitive resin composition. When the photopolymerization initiator is included within the range, excellent reliability may be secured due to sufficiently curing during exposure in a pattern-forming process, a pattern may have excellent resolution and close-contacting properties as well as excellent heat resistance, light resistance, and chemical resistance, and transmittance may be prevented from deterioration due to a non-reaction initiator [0110]; and the solvent may be included in a balance amount, e.g., about 30 wt % to about 80 wt %, based on the total weight of the photosensitive resin composition. When the solvent is included within the range, the photosensitive resin composition may have an appropriate viscosity and thus processability is improved during a production of a color filter [0114] (claims 1 and 16). It should be noted that 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., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Murakami et al. and Shin et al. are directed to colored compositions comprising phthalocyanine compounds used in color filters. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Murakami et al. to include additional components such as those taught by Shin et al. and arrive at the instant claims through routine experimentation of combining equally suitable components for the sought invention with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2009/0053626, U.S. 2008/0081268, JP2009051896, and KR20200143927.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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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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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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