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 .
Election/Restrictions
Applicant's election with traverse of claims 1-5 of Group I, in the reply filed on April 14, 2026 is acknowledged.
Claim 6 of Group II, and claims 7-16 of Group III, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement.
The traversal is on the ground(s) that all claims of each of the Groups I-III require the composition specified in claim 1 of Group I, and such that there is no undue burden to maintain all claims of all the groups. This is not found persuasive for the reasons set forth below.
Regarding inventions I and II which are related as product and process of use, the product (composition) can be used in a materially different process of using such product, such as a method for forming an organic film used in an optical film manufacturing process, with a materially different step of forming the film by vapor deposition or dip coating instead of by spin-coating.
Regarding inventions I and III which are related as product and process of use,
the product (composition) can be used in a materially different process of using such product, such as binding nanoparticles in an in-situ reactive coating process, for forming an unpatterned planarizing organic film used in an unpatterned optical film manufacturing process, instead of the patterning process.
Regarding inventions II and III which are related as processes of use, invention III requires at least one step of patterning of the organic film, which is not required in invention II; and invention II requires a step of spin-coating which is not required in invention III.
There would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a)the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (Clarivate Analytics English translation of JP-2003221419-A) in view of Bae (US 2019/0317403).
Regarding claim 1, Fujita teaches a composition for forming an organic film (coating film, 6th last para of page 27, resin, 12th last para of page 27), comprising: a resin (12th last para of page 27) for forming an organic film (coating film, 6th last para of page 27); a polymer (12th last para of page 27, Fluoropolymer (a), 1st para of page 27 of translation; polymer (a), para [0072], page 12 of 14 of original document) shown below, having a structural unit represented by the general formula (I) of Applicant (1st unit shown below on the left), wherein R1 of Applicant = a hydrogen; R2 of Applicant = an organic group having a fluorine atom and 4 carbon atoms, and having no sulfonyl group and no amino group; and a structural unit represented by the general formula (II) of Applicant, (2nd unit shown below in the middle) wherein R3 of Applicant = a hydrogen atom, R4 of Applicant = an alkyl group having a divalent alkylene group having 1 carbon atom, m1 of Applicant = 3, n1 of Applicant = 0, and m1+n1 of Applicant = 3, wherein the structural unit represented by the general formula (I) of Applicant, and the structural unit represented by the general formula (II) of Applicant, form a random copolymer (5th para of page 13).
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In addition, Fujita teaches that the composition further comprises a solvent (resin liquid for coating materials, 11th last para of page 27, solvent-based, 11th para of page 16). Fujita fails to teach a mass% of the fluorine content of the polymer.
However, Fujita teaches that the polymer contains the fluorine to lower surface tension of the composition, for the purpose of providing the desired leveling effect (last 11 and 10 paras of page 15).
Bae teaches that a fluorine content of a compound can be between 5 mass% and 30 mass% (wt% of the fluoro (F) group relative to 100 wt% of additive, greater than 0 and less than 5: Additive 1 (F560), greater than 20 and less than 30: Additive 2 (R40), greater than 10 and less than 30: Additive 3 (F554), Table 1 [0137]) which contains the claimed range of 5 mass% to 16 mass%, to lower the surface tension of a composition (20% decrease, Additive 3 (F554), Table 2 [0145]), for the purpose of providing the desired leveling effect (planarity [0053]), thus establishing the fluorine content as a result-effective variable.
Therefore, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have varied and then optimized the mass% of the fluorine content of the polymer of the composition of Fujita, from a range of between 5 mass% and 30 mass%, to one that is within a range of 5 mass% to 16 mass%, to lower the surface tension of the composition, in order to obtain the desired leveling effect, as taught by Bae.
Regarding claim 2, Fujita teaches that R2 of Applicant in the structural unit represented by the general formula (I) of Applicant of the polymer, can have a structure represented by general formula (V) of Applicant, when the *-CH2-CF2-CF2-CF3 moiety of the structural unit represented by the general formula (I) of Applicant of the polymer shown above (Fluoropolymer (a), 1st para of page 27 of translation; polymer (a), para [0072], page 12 of 14 of original document), becomes *-CF2-CF2-CF3 in the alternative where m of formula (I) of Fujita representing the monomer of the structural unit of Fujita as shown below, is 0 instead of 1, R1 = hydrogen atom, X1 = O, and n = 3 (1st para of page 2 of 14 of original document).
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Regarding claim 3, Fujita teaches that the resin for forming an organic film is a resin having an aromatic skeleton (novolac resin, para 12 of page 19).
Regarding claim 4, Fujita teaches that a content of the polymer is 1 part by mass (mass part, paras 1-3 of page 25) which is within the claimed range of 0.01 part by mass to 5 parts by mass of the resin for forming an organic film.
Regarding claim 5, Fujita is silent regarding a content of the resin in the composition for forming an organic film.
However, Fujita teaches that the composition for forming an organic film is spin coated to form the organic film (2nd last para of page 28).
Bae teaches that a composition which is spin coated, has a resin content of 5 parts by mass relative to 100 parts by mass of the composition (5 wt% [0148]), which is just outside the claimed range of 10 parts by mass to 40 parts by mass, to form a film with a very low thickness (thin [0148]), thus establishing the content of the resin as a result-effective variable, for the purpose of providing the desired low film thickness.
Therefore, in the absence of a clear showing to the contrary, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have varied and then optimized the content of the resin in the composition for forming an organic film of Fujita, from 5 parts by mass, to one that is within a range of 10 parts by mass to 40 parts by mass, relative to 100 parts by mass of the composition for forming an organic film, in order to obtain the desired low film thickness, as taught by Bae.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
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