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.
Claim(s) 5, 6, 10, 15, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claims 5, 6, and 10 are indefinite because they recite “preferably”. It is unclear whether the limitations following the word “preferably” in each claim are optional or mandatory. For the purposes of examination, the limitations following “preferably” in each claim will be considered optional.
Claim 15 recites the limitation "the component (D)" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, this claim will be interpreted as being dependent on claim 7 instead of claim 1.
Claim 16 recites the limitation "the component (E)" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, this claim will be interpreted as being dependent on claim 9 instead of claim 1.
Claim 9 recites the limitation “at least one photo radical polymerization initiator”. Claims 10 then recite the limitation "the photo radical polymerization initiator”. Claim 10 is considered indefinite without the “at least one” language preceding the limitation in all dependent claims. Claim 10 should be amended to include “the at least one photo radical polymerization initiator” or “component (E)” in place of “the photo radical polymerization initiator”.
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.
Claim(s) 1-12 and 14-19 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated over JP2017126074 to Hirano et al. For the purposes of examination, citations for Hirano are taken from a machine translation equivalent of the document obtained from the European Patent Office website in July 2026.
Regarding Claim(s) 1, 2, 5, 6, Hirano teaches a photosensitive resin composition and cured film [title] comprising a radical polymerizable compound having (meth)acrylic groups [0086] that are preferably at least trifunctional [0086] (reading on at least one (meth)acrylate of claim 1 and polyfunctional (meth) acrylate of claim 2); a photocationic polymerization initiator (B) [0039] wherein aromatic iodonium salt (B2) is preferred [0041] and includes diphenyliodonium hexafluorophosphate [0043] (reading on diaryliodonium salt of claim 1 and diphenyl iodonium phosphate of claim 5); and a heat curing catalyst [0120] such as microencapsulated latent curing agent Novacure 3742 [0121] which is the same commercially available latent amine catalyst as mentioned in instant application [0050] (reading on at least one latent amine catalyst of claim 1 and amine adduct latent amine catalyst of claim 6).
Regarding claim 3, the monofunctional (meth)acrylate monomer of claim 3 is considered an optional embodiment because claim 3 depends from claim 2 , and claim 2 recites a Markush group for the component (A) including a monofunctional (meth)acrylate monomer, polyfunctional (meth)acrylate monomer, and oligomers thereof. Hirano teaches component (A) of claim 2 wherein component (A) is a polyfunctional (meth)acrylate, [0086]. As such, the limitation of claim 3 is considered to be met because claim 3 is further narrowing an optional embodiment (monofunctional (meth)acrylate) and claim 2 is rejected by a different component (A) (polyfunctional (meth)acrylate).
Regarding Claim(s) 4, Hirano teaches the curable composition of claim 1, wherein component (A) is trimethylolpropane tri(meth)acrylate [0087].
Regarding Claim(s) 7 and 15, Hirano teaches the curable composition of claim 1, comprising 1-10% by weight of silane compound (D) [0119] that is used for heat resistance [0113] (i.e., 0-10% by weight of heat resistance additive).
Regarding Claim(s) 8, Hirano teaches the curable composition of claim 1, wherein the coating is obtained through a high-temperature firing process that accelerates the thermal hardening of the coating [0161].
Regarding Claim(s) 9, 10, and 16, Hirano teaches the curable composition of claim 1, comprising a photoradical polymerization initiator (A) in an amount of 1-15 wt% [0036] such as 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide [0031] which is a α-cleavage photo radical polymerization initiator as set forth in instant specification [0061].
Regarding Claim(s) 11, Hirano teaches the curable composition of claim 10 comprising a photoradical polymerization initiator [0036] (i.e., radiation curable) and wherein the coating is obtained through a high-temperature firing process that accelerates the thermal hardening of the coating [0161] (i.e., thermally curable).
Regarding Claim(s) 12, Hirano teaches the curable composition of claim 1, wherein component (A) is in an amount of 5-80% by weight [0090].
Regarding Claim(s) 14, Hirano teaches the curable composition of claim 1, wherein component (C) is preferably 0.5-30% by weight [0122]
Regarding Claim(s) 17, Hirano teaches the curable composition of claim 1, that forms a cured film [abstract].
Regarding Claim(s) 18, Hirano teaches the curable composition of claim 17 that is formed into a hardened film (i.e., cured product) on a glass substrate (i.e., first substrate) wherein ITO was sputtered onto the surface (i.e., second substrate bonded to the first substrate through the cured product).
Regarding Claim(s) 19, Hirano teaches the curable composition of claim 1, used in electronic devices [0002]
Claim Rejections - 35 USC § 103
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 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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over JP2017126074 to Hirano et al. For the purposes of examination, citations for Hirano are taken from a machine translation equivalent of the document obtained from the European Patent Office website in July 2026.
Regarding Claim(s) 13, Hirano teaches the curable composition of claim 1, wherein component (B) is in an amount of 1-20% by weight [0050].
Though the prior art range is not identical to the claimed range (larger than 0% to less than 3% by weight), it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764
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