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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 June 2026 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 6, line 5, filed 30 June 2026, with respect to the rejection of Claims 1-2 under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (Japanese Patent Publication No. JP 2017-096017 A), hereinafter Nakayama; have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shustack et al. (United States Patent Publication No. US 2003/0021566 A1), hereinafter Shustack.
3. Applicant’s arguments, see page 6, line 5, filed 30 June 2026, with respect to the rejection of Claims 1-2 and 4-5 under 35 U.S.C. 103 as being unpatentable by Sakida et al. (Japanese Patent Publication No. JP 2008-202022 A), hereinafter Sakida; have been fully considered but they are not persuasive. Applicant argues that the rejection in view of Sakida, by Sakida teaching a polymerizable unsaturated monomer, is overcome by amending Claim 1 to state: “component (B) a photopolymerizable compound having two or more polymerizable functional groups and/or a photopolymerizable compound having a sulfur atom.” This is unpersuasive because Sakida both teaches the previously cited polymerizable unsaturated monomer which comprise a sulfur atom, See: prior citation, and a second polymerizable compound which may be polyfunctional. See: below. Note: Examiner has provided a replacement English translation of Sakida to replace the previously-provided one which had some sections which weren’t properly translated.
Claim Rejections - 35 USC § 103
4. 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:
5. 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.
6. Claims 1, 8-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable by Sakida et al. (Japanese Patent Publication No. JP 2008-202022 A), hereinafter Sakida.
7. Regarding Claims 1, 8-9, and 11, Sakida teaches (Paragraphs [0034-0035]) a photocurable composition, therein a curable composition. Sakida teaches (Paragraphs [0034-0035]) metal oxide nanoparticles, therein inorganic oxide fine particles. Sakida teaches (Paragraphs [0044-0088]) a photopolymerizable compound having two or more polymerizable functional groups and/or a photopolymerizable compound having a sulfur atom, therein a polymerizable unsaturated monomer, e.g. formula I-18 of Paragraph [0047], and a second polymerizable unsaturated monomer, e.g. bifunctional and polyfunctional polymerizable unsaturated compounds of Paragraphs [0066-0070]. Sakida teaches (Paragraphs [0034-0035]) a photoradical polymerization initiator. Sakida teaches (Paragraphs [0034-0035]) the content of the photoradical polymerization initiator is 10 to 42.8 parts by mass or more with respect to 100 parts by mass of the total content of the metal oxide nanoparticles and the photopolymerizable compound. Therein, Sakida teaches a mass of 0.1-15% of the initiator, 35-99% of the polymerizable compound and 0.1-50% mass of the metal oxide nanoparticles. This equates to a minimum of 0.1 parts by mass of the initiator with respect to 100 parts by mass of the metal oxide nanoparticles and photopolymerizable compound and a maximum of 15/(35+0.1) = 42.8 parts by mass of the initiator with respect to 100 parts by mass of the metal oxide nanoparticles and photopolymerizable compound, which overlaps with the claimed range. Sakida teaches (Paragraphs [0034-0035]) the content of the metal oxide nanoparticles is 58.8 parts by mass and the content of the photopolymerizable compound is 41.2 parts by mass, with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Therein, the maximum content of the metal oxide nanoparticles is 50 parts with respect to (50+35)=85 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound, which equals 58.8 parts by mass of the metal oxide nanoparticle with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Whereas Sakida teaches a minimum of 35% by mass of a photopolymerizable compound and a maximum of 50% by mass of metal oxide nanoparticles, which equates to 41.2 parts by mass of the photopolymerizable compound with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Sakida teaches (Paragraphs [0091-0092 and 0152]) the photoradical polymerization initiator is selected from the group consisting of: 1- hvdroxvcvclohexvlphenyl ketone, 2-hydroxy-2-methyl- 1 -phenylpropan- 1-one, 1-[ 4-(2- hydroxyethoxy)phenyl]-2-hydroxy-2-methyl- 1 -propan- 1-one, 2,2-dimethoxy-1,2-diphenylethan- 1-one, 2-methyl-1 -(4-methylthiophenyl)- 2-morpholinopropan-1-one, bis(2,4,6- trimethylbenzoyl)-phenylphosphine oxide, 4-benzoyl-4'-methyldimethyl sulfide, ethyl 4-dimethylaminobenzoate, benzyl dimethyl ketal, methyl o-benzoylbenzoate, 2,4-diethyithioxanthone, 2-chlorothioxanthone, 1-chloro-4-propoxythioxanthone, 2-ethylanthraquinone, benzoyl peroxide, benzophenone, 4,4'-bisdiethylaminobenzophenone, benzoin, benzoin methyl ether, benzoin ethyl ether, benzoin isopropyl ether, benzoin isobutyl ether, 2,2-diethoxyacetophenone, trichloroacetophenone, thioxanthone, 2-methylthioxanthone, 2-isopropylthioxanthone, dibenzosuberone, 2-[2-(5- methylfuran-2-yl)ethenyl]-4,6-bis(trichloromethyl)-s-triazine, 2-[2-(furan-2-yl)ethenyl]-4,6- bis(trichloromethyl)-s-triazine, 2-[2-(3,4-dimethoxyphenyl)ethenyl]-4,6-bis(trichloromethyl)-s- triazine, 2-(4-methoxyphenyl)-4,6-bis(trichloromethyl)-s-triazine. Sakida teaches (Paragraphs [0034-0035]) a cured film formed of the photocurable composition has a refractive index of 1.70 or more at a wavelength of 530 nm. Sakida teaches (Paragraph [0106]) a cured film having a film thickness of 600 nm, which is formed of the photocurable composition, has a haze value of 0.4% or less as measured in accordance with ASTM D100. Sakida teaches (Paragraphs [0034-0035]) the photocurable composition is used for optical imprint lithography. Herein, MPEP § 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” Sakida teaches (Paragraph [0091]) the photopolymerizable compound having the sulfur atom has a diaryl sulfide skeleton, therein 4-benzoyl-4'-methyldimethyl sulfide. Sakida teaches (Paragraph [0106]) the metal oxide nanoparticles have a volume-average primary particle diameter of 100 nm or less.
8. Herein, Sakita does not teach away from a content of less than 35 mass % of photopolymerizable compound with respect to the total mass of the composition and 58.8 mass % is merely close to the claimed 60 mass % of metal oxide nanoparticles with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Similarly, Sakita does not teach away from a content of more than 50% by mass of metal oxide nanoparticles with respect to the total mass of the composition and 41.2% by mass is merely close to the claimed 40 mass % of photopolymerizable compound with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. MPEP § 2144.05(I) states: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).” Herein the content of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound is very close to the teaching of the prior art Sakita that a person having ordinary skill in the art would expect composition having 58.8 mass % versus 60 mass % of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound to have the same properties. Herein the content of photopolymerizable compound with respect to the total content of metal oxide nanoparticles and photopolymerizable compound is very close to the teaching of the prior art Sakita that a person having ordinary skill in the art would expect composition having 41.2 mass % versus 40 mass % of photopolymerizable compound with respect to the total content of metal oxide nanoparticles and photopolymerizable compound to have the same properties. Furthermore, the limitations of Claim 1 of the present application are not found in a single experimental example of the prior art. That said, the specification of Sakida teach each limitation and it would have been obvious to a person having ordinary skill in the art to combine the prior art elements taught by Sakida according to known methods taught by Sakida to yield predictable results.
9. Claims 1 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable by Shustack et al. (United States Patent Publication No. US 2003/0021566 A1), hereinafter Shustack.
10. Regarding Claims 1 and 8-11, Shustack teaches (Abstract) a photocurable composition, therein an energy curable composition. Shustack teaches (Abstract) metal oxide nanoparticles. Shustack teaches (Paragraphs [0030-0038]) a photopolymerizable compound, therein a high refractive index monomers and oligomers, having two or more polymerizable functional groups and/or a photopolymerizable compound having a sulfur atom, e.g. bis(4-methacryloylthiophenyl) sulfide. Shustack teaches (Paragraphs [0036-0039]) a photoradical polymerization initiator, therein a photoinitiator which is a free radical initiator, e.g. KTO-46 of the experimental examples. Shustack teaches (Paragraphs [0034-0035]) the content of the photoradical polymerization initiator is at minimum 10 parts by mass with respect to 100 parts by mass of the total content of the metal oxide nanoparticles and the photopolymerizable compound. Therein, Shustack teaches a mass of 0.01-10% of the initiator with respect to the total composition mass, the composition comprising the polymerizable compound and the metal oxide nanoparticles. Shustack teaches (Paragraphs [0047-0053], i.e. Examples 1-2) the content of the metal oxide nanoparticles is 77.8 and 76.2, respectively, parts by mass and the content of the photopolymerizable compound is 22.2 and 23.8, respectively, parts by mass, with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Therein, Example 1 has 37.42 g of HIT-32M and 3.2 g of bis(4-methacryloylthiophenyl) sulfide, whereas Example 2 has 39.7 g of HIT-32M and 3.722 g of bis(4-methacryloylthiophenyl) sulfide. HIT-32M is a 30 wt % suspension of about 5 nm TiO2.ZnO2.SnO2 nanoparticles in methanol (Paragraph [0024]). Thus, Examples 1 and 2 have 11.226 g and 11.91 g metal oxide nanoparticles, respectively. Thus, 11.226/(11.226 + 3.2) = 77.8 parts by mass and 11.91/(11.91 + 3.722) = 76.2 parts by mass, respectively, of metal oxide nanoparticles with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. This corresponds to 3.2/(11.226 + 3.2) = 22.2 parts by mass and 3.722/(11.91 + 3.722) = 23.8 parts by mass, respectively, of photopolymerizable compound with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Shustack teaches (Paragraphs [0036-0039]) the photoradical polymerization initiator (C) is selected from the group consisting of: 1- hydroxycvclohexylphenyl ketone, 2-hydroxy-2-methyl-1-phenylpropan-1-one, benzyl dimethyl ketal, and benzoyl peroxide. Shustack teaches (Paragraphs [0039 and 0042]) a cured film formed of the photocurable composition has a refractive index of 1.70 or more at a wavelength of 530 nm. Shustack teaches (Paragraphs [0039 and 0042]) a cured film having a film thickness of 600 nm, which is formed of the photocurable composition, has a haze value of 0.4% or less as measured in accordance with ASTM D100. Shustack teaches (Paragraphs [0039 and 0042]) the photocurable composition is used for optical imprint lithography. Herein, MPEP § 2112.01 states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).” Shustack teaches (Paragraphs [0047-0057]) the photopolymerizable compound having the sulfur atom has a diaryl sulfide skeleton, therein bis(4-methacryloylthiophenyl) sulfide. Shustack teaches (Paragraphs [0047-0057]) the diaryl sulfide skeleton comprises a compound represented by the formula (bs-1) of the present application, therein bis(4-methacryloylthiophenyl) sulfide. Shustack teaches (Paragraph [0024]) the metal oxide nanoparticles have a volume-average primary particle diameter of 5 nm.
11. However, the limitations of Claim 1 of the present application are not found in a single experimental example of the prior art. That said, the specification of Shustack teach each limitation and it would have been obvious to a person having ordinary skill in the art to combine the prior art elements taught by Shustack according to known methods taught by Shustack to yield predictable results.
Conclusion
12. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
13. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737
