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 § 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chisaka et al. (JP 2021-031669), wherein US Serial No. 2022/0325127 is used as the English equivalent for purpose of citation.
Regarding claims 1-3; Chisaka et al. teaches a photocurable ink composition comprising a photopolymerizable diaryl sulfide (A1) [0032-0037] and photopolymerizable compound (A2) [0044-], metal compound nanocrystals (e.g. zirconium oxide) having an average particle size of 100 nm or less [0050-0051]. Chisaka et al. teaches the composition may further comprise reactive diluents (e.g. 1-vinyl-2-pyrrolidone; acts/functions as a solvent), employed in an amount of 10-80% by mass [0094]. Chisaka et al. teaches the amount of the diaryl sulfide compound (A1) relative to the total of the ink composition is preferably 10-50% by mass [0048] and the amount of the metal oxide nanocrystals is 5%-70% by mass [0052]. Thus, in the instance the amount of the diaryl sulfide compound is employed in an amount of 40% by mass, the metal oxide particles is employed in an amount of 40% by mass, and the reactive diluent (i.e. solvent) is employed in an amount of 80% by mass, the content of the solvent is 100 parts by mass with respect to 100 parts by mass of a total of metal oxide nanoparticles and photopolymerizable sulfur compound. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have been motivated to employ each of the metal oxide nanoparticle, photopolymerizable compound, and reactive diluent (solvent), in each of the ranges set forth (40% by mass, 40% by mass, and 80% by mass, respectively); and would have been motivated to do so because Chisaka et al. teaches those ranges suitable for achieve the particulars of the present invention.
Regarding claim 4; in the instance the photopolymerizable sulfur compound is employed in an amount of 20% by mass and the metal oxide nanoparticles are employed in an amount of 50% by mass; the content of photopolymerizable sulfur compound would be 40 parts with respect to 100 parts by mass of the metal oxide nanoparticles.
Regarding claim 5; Chisaka et al. teaches the refractive index of the cured product at a wavelength of 550 nm is preferably 1.67 or higher, and more preferably 1.70 or higher [0072].
Regarding claim 6; “wherein the photocurable composition is used for photoimprint lithography” is an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09.
Regarding claim 8; Chisaka et al. teaches the composition may further comprise titanium oxide particles [0098].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767