DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/11/2026 has been entered.
3. Claims 1-20 are pending. Claims 1-20 are under examination on the merits. Claims 1, 9, 17 are amended.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive, thus claims 1-20 stand rejected as set forth in Office action dated 03/11/2026 and further discussed in the Response to Arguments below.
Claim Objections
6. Claims 1, 9, 17 are objected to because of the following informalities: It is suggested that “range of 900nm" (all occurrences) be deleted and "range of 900 nm" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 1-8 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 applicant regards as the invention. Claim 1 recites “the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the infrared pass filter that the average transmittance is measured since the thickness of the infrared film is directly related to its transmittance spectrum, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2-8 being depended on claim 1 are rejected as well.
9. Claim 9-16 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 applicant regards as the invention. Claim 9 recites “the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the infrared pass filter that the average transmittance is measured since the thickness of the infrared film is directly related to its transmittance spectrum, thus claim 9 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 10-16 being depended on claim 9 are rejected as well.
10. Claim 17-20 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 applicant regards as the invention. Claim 17 recites “the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the infrared pass filter that the average transmittance is measured since the thickness of the infrared film is directly related to its transmittance spectrum, thus claim 17 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 18-20 being depended on claim 17 are rejected as well.
Claim Rejections - 35 USC § 102/103
11. 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.
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.
12. Claims 1-20 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hiki et al. (JP 2020-067552 A, machine translation, hereinafter “’552”).
Regarding claims 1,3,5: ‘552 discloses a photosensitive coloring composition for a color filter (Page 6/45, [0001]) comprising: 0.8 parts of a photopolymerizable monomer (D1) ("EBECRYL80" produced by Daicel-Allnex) which is a tetrafunctional acrylate having a pigment and a secondary or tertiary amino group (i.e., first (meth)acrylate; Page 37/45, [0140]), 0.9 parts of a photopolymerizable monomer (D4) ("Aronix M-350" produced by Toagosei Co., Ltd.; number of polymerizable functional groups: 3) which is a trimethylolpropane EO-modified triacrylate, 0.9 parts of a photopolymerizable monomer (D5) (i.e., D4 and/or D5 as second (meth)acrylate; "A-DPH" produced by Shin-Nakamura Chemical Co., Ltd.; number of polymerizable functional groups: 6) which is dipentaerythritol hexaacrylate (Page 37/45, [0140]), 0.3 parts of ethanone,1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazole-3-yl]-, 1-(O-acetyloxime) ("IRGACURE OXE 02" produced by BASF) as a photopolymerization initiator (C1), and 1.0 parts of a polymerization inhibitor solution (solution obtained by diluting 1 part of "MH" (non-volatile content of 100 mass%) produced by Seiko Chemical Co., Ltd. with 99 parts of propylene glycol monomethyl ether acetate) (Page 37/45, [0139]) and color filter pixels for a solid-state imaging element formed by applying and exposing said photosensitive coloring composition for a color filter (Page 37/45, [0140]; Page 38/45, [0142]; Page 39/45, Table 3, Example 10). ‘552 discloses the inorganic pigment such as titanium black, and synthetic iron black, wherein the inorganic pigment can be used in combination with the organic pigment in order to secure good coatability, sensitivity, developability, and the like while keeping a balance between chroma and lightness (Page 11/45, [0033]). The photopolymerizable monomer (D1) corresponds to the first (meth)acrylate, and photopolymerizable monomer (D4) and/or photopolymerizable monomer (D5) correspond to the second (meth)acrylate.
‘552 discloses the percentage of the mass of photopolymerizable monomer (D1) relative to the mass of the photopolymerization initiator (C1) is 267%, and the percentage of the mass of the polymerization inhibitor relative to the mass of the photopolymerization initiator (C1) is 3.3%, and satisfies the numerical range in claim 1. ‘552 is silent regarding the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm.
However, pertaining specifically to claim 1, since ‘522 discloses the identical or substantially identical photosensitive coloring composition for an infrared pass filter, comprising:
a colorant exhibiting a black color; a polymerizable compound; a photopolymerization initiator; and a polymerization inhibitor as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘522 (i.e., the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm). If there is any difference between the product of ‘522 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 2: ‘552 discloses the photosensitive coloring composition for a color filter (Page 6/45, [0001]), wherein a percentage of the first (meth)acrylate relative to a solid content mass of the photosensitive coloring composition for an infrared pass filter is in a range of 0.1% to 20% (Page 30/45, [0111]; Page 31/45, [0112]).
Regarding claims 4,6-8: ‘552 discloses the photosensitive coloring composition for a color filter (Page 6/45, [0001]), wherein the photopolymerization initiator includes an oxime ester photopolymerization initiator such as 1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazole-3-yl]-, 1-(O-acetyloxime) ("IRGACURE OXE 02" produced by BASF) (Page 37/45, [0140]).
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Regarding claims 9,11,13: ‘552 discloses a photosensitive coloring composition for a color filter (Page 6/45, [0001]) comprising: 0.8 parts of a photopolymerizable monomer (D1) ("EBECRYL80" produced by Daicel-Allnex) which is a tetrafunctional acrylate having a pigment and a secondary or tertiary amino group (i.e., first (meth)acrylate; Page 37/45, [0140]), 0.9 parts of a photopolymerizable monomer (D4) ("Aronix M-350" produced by Toagosei Co., Ltd.; number of polymerizable functional groups: 3) which is a trimethylolpropane EO-modified triacrylate, 0.9 parts of a photopolymerizable monomer (D5) (i.e., D4 and/or D5 as second (meth)acrylate; "A-DPH" produced by Shin-Nakamura Chemical Co., Ltd.; number of polymerizable functional groups: 6) which is dipentaerythritol hexaacrylate (Page 37/45, [0140]), 0.3 parts of ethanone,1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazole-3-yl]-, 1-(O-acetyloxime) ("IRGACURE OXE 02" produced by BASF) as a photopolymerization initiator (C1), and 1.0 parts of a polymerization inhibitor solution (solution obtained by diluting 1 part of "MH" (non-volatile content of 100 mass%) produced by Seiko Chemical Co., Ltd. with 99 parts of propylene glycol monomethyl ether acetate) (Page 37/45, [0139]) and color filter pixels for a solid-state imaging element formed by applying and exposing said photosensitive coloring composition for a color filter (Page 37/45, [0140]; Page 38/45, [0142]; Page 39/45, Table 3, Example 10).‘552 discloses the inorganic pigment such as titanium black, and synthetic iron black, wherein the inorganic pigment can be used in combination with the organic pigment in order to secure good coatability, sensitivity, developability, and the like while keeping a balance between chroma and lightness (Page11/45, [0033]).
‘522 discloses the photopolymerizable monomer (D1) corresponds to the first (meth)acrylate, and photopolymerizable monomer (D4) and/or photopolymerizable monomer (D5) correspond to the second (meth)acrylate. The percentage of the mass of photopolymerizable monomer (D1) relative to the mass of the photopolymerization initiator (C1) is 267%, and the percentage of the mass of the polymerization inhibitor relative to the mass of the photopolymerization initiator (C1) is 3.3%, and satisfies the numerical range in claim 1. ‘552 is silent regarding the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm.
However, pertaining specifically to claim 9, since ‘522 discloses the identical or substantially identical photosensitive coloring composition for an infrared pass filter, comprising:
a colorant exhibiting a black color; a polymerizable compound; a photopolymerization initiator; and a polymerization inhibitor as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘522 (i.e., the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm). If there is any difference between the product of ‘522 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
The recitation an infrared pass filter has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 10: ‘552 discloses the photosensitive coloring composition for a color filter (Page 6/45, [0001]), wherein a percentage of the first (meth)acrylate relative to a solid content mass of the photosensitive coloring composition for an infrared pass filter is in a range of 0.1% to 20% (Page 30/45, [0111]; Page 31/45, [0112]).
Regarding claims 12,14-16: ‘552 discloses the photosensitive coloring composition for a color filter (Page 6/45, [0001]), wherein the photopolymerization initiator includes an oxime ester photopolymerization initiator such as 1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazole-3-yl]-, 1-(O-acetyloxime) ("IRGACURE OXE 02" produced by BASF) (Page 37/45, [0140]).
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Regarding claims 17,19: ‘552 discloses a method of producing a photosensitive coloring composition for a color filter (Page 6/45, [0001]), comprising: mixing a colorant, a polymerizable compound, a photopolymerization initiator, and a polymerization inhibitor such as 0.8 parts of a photopolymerizable monomer (D1) ("EBECRYL80" produced by Daicel-Allnex) which is a tetrafunctional acrylate having a pigment and a secondary or tertiary amino group (i.e., first (meth)acrylate; Page 37/45, [0140]), 0.9 parts of a photopolymerizable monomer (D4) ("Aronix M-350" produced by Toagosei Co., Ltd.; number of polymerizable functional groups: 3) which is a trimethylolpropane EO-modified triacrylate, 0.9 parts of a photopolymerizable monomer (D5) (i.e., D4 and/or D5 as second (meth)acrylate; "A-DPH" produced by Shin-Nakamura Chemical Co., Ltd.; number of polymerizable functional groups: 6) which is dipentaerythritol hexaacrylate (Page 37/45, [0140]), 0.3 parts of ethanone,1-[9-ethyl-6-(2-methylbenzoyl)-9H-carbazole-3-yl]-, 1-(O-acetyloxime) ("IRGACURE OXE 02" produced by BASF) as a photopolymerization initiator (C1), and 1.0 parts of a polymerization inhibitor solution (solution obtained by diluting 1 part of "MH" (non-volatile content of 100 mass%) produced by Seiko Chemical Co., Ltd. with 99 parts of propylene glycol monomethyl ether acetate) (Page 37/45, [0139]) (Page 37/45, [0140]; Page 38/45, [0142]; Page 39/45, Table 3, Example 10). ‘552 discloses the inorganic pigment such as titanium black, and synthetic iron black, wherein the inorganic pigment can be used in combination with the organic pigment in order to secure good coatability, sensitivity, developability, and the like while keeping a balance between chroma and lightness (Page11/45, [0033]).
‘522 discloses the photopolymerizable monomer (D1) corresponds to the first (meth)acrylate, and photopolymerizable monomer (D4) and/or photopolymerizable monomer (D5) correspond to the second (meth)acrylate. The percentage of the mass of photopolymerizable monomer (D1) relative to the mass of the photopolymerization initiator (C1) is 267%, and the percentage of the mass of the polymerization inhibitor relative to the mass of the photopolymerization initiator (C1) is 3.3%, and satisfies the numerical range in claim 1. ‘552 is silent regarding the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm.
However, pertaining specifically to claim 17, since ‘522 discloses the identical or substantially identical photosensitive coloring composition for an infrared pass filter, comprising:
a colorant exhibiting a black color; a polymerizable compound; a photopolymerization initiator; and a polymerization inhibitor as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘522 (i.e., the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm). If there is any difference between the product of ‘522 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
The recitation an infrared pass filter has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 18: ‘552 discloses the method of producing a photosensitive coloring composition for a color filter (Page 6/45, [0001]), (Page 6/45, [0001]), wherein a percentage of the first (meth)acrylate relative to a solid content mass of the photosensitive coloring composition for an infrared pass filter is in a range of 0.1% to 20% (Page 30/45, [0111]; Page 31/45, [0112]).
Regarding claim 20: ‘552 discloses the method of producing a color filter (Page 6/45, [0001]), comprising: preparing a photosensitive coloring composition by the method; applying a coating liquid comprising the photosensitive coloring composition to an object such that a coating film comprising the coating liquid is formed on the object; and curing the coating film formed on the object (Page 30/45, [0107]).
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 1-20 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hiki et al. (JP 2020-067552 A, machine translation, hereinafter “’552”) as applied to claim 1 above, and further in view of Iwata et al. (US Pub. No. 2021/0358983 A1, hereinafter “’983”).
Regarding claims 1-20: The disclosure of ‘552 is adequately set forth in paragraph 12 above and is incorporated herein by reference. This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘552 does not expressly teach a photosensitive coloring composition for an infrared pass filter, comprising a colorant exhibiting a black color.
However, ‘983 teaches a solid-state image sensor filter includes: a light-incident surface on which light is incident; an infrared filter located on a side of a photoelectric conversion element on which the light-incident surface is disposed; and a barrier layer located on a side of the infrared filter on which the light-incident surface is disposed, the barrier layer being provided to suppress transmission of an oxidation source to thereby prevent the infrared filter from being oxidized (Page 1, [0012]). As shown in FIG. 11, the color filters 12R, 12G, and 12B have thicknesses T12 which may be different from that of the infrared pass filter 12P, or may be the same as that of the infrared pass filter 12P. The thickness T12 of the color filters 12R, 12G, and 12B is, for example, 0.5 µm or more and 5 µm or less (Page 8, [0123]). ‘983 teaches the infrared pass filter 12P cuts off visible light that may otherwise be detected by the infrared photoelectric conversion element 11P, to prevent it from reaching the infrared photoelectric conversion element 11P, to thereby improve the accuracy of detection of near-infrared light by the infrared photoelectric conversion element 11P. That is, the infrared pass filter 12P prevents the visible light that may be detected by the infrared photoelectric conversion element 11P from passing through to the infrared photoelectric conversion element 11P. The infrared pass filter 12P is a layer disposed only on the infrared photoelectric conversion element 11P (Page 8, [0125]). Materials constituting the infrared pass filter 12P include a black colorant or a black dye, and a transparent resin. The black colorant may be a single colorant having a black color, or a mixture of two or more colorants having a black color. Examples of the black dye include azo-based dye, anthraquinone-based dye, azine-based dye, quinoline-based dye, perinone-based dye, perylene-based dye, and methine-based dye. Examples of the transparent resin include acrylic resin, polyamide-based resin, polyimide-based resin, polyurethane-based resin, polyester-based resin, polyether-based resin, polyolefin-based resin, polycarbonate-based resin, polystyrene-based resin, and norbornene-based resin. The infrared pass filter 12P is formed by film formation using a liquid phase film formation method such as coating (Page 8, [0126]).
In an analogous art of the photosensitive coloring composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the photosensitive coloring composition by ‘552, so as to include photosensitive coloring composition for an infrared pass filter, comprising a colorant exhibiting a black color as taught by ‘983, and would have been motivated to do so with reasonable expectation that this would result in providing a solid-state image sensor filter for use with a photoelectric conversion element includes color microlenses which have a light-incident surface on which light is incident and collect the light incident on the light-incident surface toward a photoelectric conversion element to be combined with the solid-state image sensor filter, and an infrared filter positioned between the color microlenses and the photoelectric conversion element (Page 1, [0013]), and a barrier layer formed between the color microlenses and the infrared filter such that transmission of an oxidation source that oxidizes the infrared filter is suppressed as suggested ‘983 (Page 1, [0012]).
Thus the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate colorant exhibiting a black color of a known photosensitive coloring composition based on its suitability for its intended use is within the level ordinary skill in the art.
Response to Arguments
15. Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that one of ordinary skill in the art would understand that Hiki’552 specifically teaches having a region of high transmittance in the visible region and does not teach a filter having an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm as recited in the present claims, and further is entirely silent with respect to transmittance in the UV region of the spectrum.
The examiner respectfully disagrees. The disclosure of ‘552 is adequately set forth in paragraph 12 above and is incorporated herein by reference. ‘552 is silent regarding the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm.
However, since ‘522 discloses the identical or substantially identical photosensitive coloring composition for an infrared pass filter, comprising: a colorant exhibiting a black color; a polymerizable compound; a photopolymerization initiator; and a polymerization inhibitor as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘522 (i.e., the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm). If there is any difference between the product of ‘522 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
In response to the Applicant’s argument that Hiki’522 does not teach the use of a colorant exhibiting a black color in the photosensitive coloring composition. Applicant further submits that Hiki’522 does not teach the use of a colorant having the spectral properties recited in the present claims. While Hiki states that the colorant can include inorganic pigments such as titanium black and synthetic iron black, these inorganic pigments are used "in combination with the organic pigment in order to secure good coatability, sensitivity, developability and the like while balancing the saturation and lightness.
The examiner respectfully disagrees. ‘552 discloses the inorganic pigment such as titanium black, and synthetic iron black, wherein the inorganic pigment can be used in combination with the organic pigment in order to secure good coatability, sensitivity, developability, and the like while keeping a balance between chroma and lightness (Page 11/45, [0033]). ‘522 is silent regarding the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm.
However, since ‘522 discloses the identical or substantially identical photosensitive coloring composition for an infrared pass filter, comprising: a colorant exhibiting a black color; a polymerizable compound; a photopolymerization initiator; and a polymerization inhibitor as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would inherently/implicitly be achieved by ‘522 (i.e., the colorant has an average transmittance of less than 10% in a wavelength range of 280 nm to 400 nm, the infrared pass filter has an average transmittance of 30% or less in a wavelength range of 400 nm to 800 nm and an average transmittance of at least 75% in a wavelength range of 900 nm to 1,100 nm). If there is any difference between the product of ‘522 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Furthermore, the instant claim 1 “comprising” language does not necessarily exclude other pigments in the photosensitive coloring composition for an infrared pass filter. “Comprising” leaves the claim open for the inclusion of unspecified ingredients even in major amounts, see Ex parte Davis et al., 80 USPQ 448 (PTO Ed. App. 1948).
In response to the Applicant’s argument that Hiki’522 does provide any specific teaching regarding these ratios and also includes examples that have these ratios outside of the ranges recited in the present claims. For example, Examples 1-9 and 12 have a percentage of the mass of the polymerization inhibitor relative to the mass of the photopolymerization initiator (C1) of 2%, below the range recited in the present claims.
The examiner respectfully disagrees. It is axiomatic that a reference must be considered in its entirety, and it is well established that the disclosure of a reference is not limited to specific working examples contained therein. In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (C.C.P.A. 1982). A reference must be considered for everything it teaches by way of technology. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also > Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘552 discloses the percentage of the mass of photopolymerizable monomer (D1) relative to the mass of the photopolymerization initiator (C1) is 267%, and the percentage of the mass of the polymerization inhibitor relative to the mass of the photopolymerization initiator (C1) is 3.3% in Example 10, and satisfies the numerical range in claim 1 (Page 37/45, [0140]; Page 38/45, [0142]; Page 39/45, Table 3, Example 10).
Turning to Applicant’s last argument regarding unexpected results that when the composition does not have significant transmittance in the UV region or a region of the visible spectrum, poor curing of the composition to form a film results. Examiner agrees that Applicant’s proffered evidence of the Tables 7-8 in the Specification, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). It is submitted that the results of evaluating the controllability in the line width of the infrared pass filters and the absolute values of the difference values obtained by subtracting the second average value from the first average value for Test examples 2-1 to 2-16 are solely based on the infrared pass filters having a specific pixel sizes. Thus, Applicant’s argument lacks persuasive merit at least because the claims do not include language that requires the infrared pass filters with a specific pixel size. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]pplicant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”)
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., the photosensitive coloring composition for an infrared pass filter) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
Examiner Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
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/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/15/2026
bijan.ahvazi@uspto.gov
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