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.
Claims 1-19 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "X1 to X14" in section 9. There is insufficient antecedent basis for this limitation in the claim. The structure of the claim on contains X1 to X12, and thus X13 and X14 lack antecedent basis.
Claim Rejections - 35 USC § 103
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 1-19 are rejected under 35 U.S.C. 103 as being obvious over Seo et al. (US 2025/0197643) in view of Changmin et al. (KR 20220045693). Note: A machine translation is being used for KR 20220045693.
The applied reference has a common assignee and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Considering Claims 1 and 15: Seo et al. teaches a composition comprising an alkali-soluble resin, a reactive unsaturated compound, a photoinitator, a reactive dye and a solvent (¶0008), where the reactive dye comprises a compound that has the formula
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where at least one of X1-X4 is
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, and the other variables are the same as the instant claims; and a protecting group of the formula
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where the variables have the same definitions as the instant claims (¶0061-77).
Seo et al. does not teach the photoinitiator as having the claimed properties. However, Changmin et al. teaches a photosensitive composition comprising a photoinitiator having a maximum molar absorption of 10,000 or more in a region of 320 to 380 nm and a loss of 5% by weight at 200 ºC or less (pg. 7). Changmin et al. teaches the photoinitiator as having the structure of
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with the variables being the same as claimed (Formula 3). Seo et al. and Changmin et al. are analogous art as they are concerned with the same field of endeavor, namely photosensitive compositions. It would have been obvious to a person of ordinary skill in the art to have used the photoinitiator of Changmin et al. in the composition of Seo et al., and the motivation to do so would have been, as Changmin et al. suggests, to produce a composition with excellent patternability due to the high sensitivity (pg. 15).
Considering Claims 2-3: Seo et al. teaches at least of X1 and X2 having formula A and at least one of X3 and X4 having formula A, with remainder having the recited substituents (¶0079).
Considering Claim 4: Seo et al. teaches the chromopohore having a maximum absorption peak between 520 and 680 nm (¶0082).
Considering Claim 5: Seo et al. teaches the cage width of the protecting ropu is 6.5 to 7.5 A and the volume is 10 to 16 A (¶0085).
Considering Claim 6: Seo et al. teaches the chromophore and protecting group as being in a 1:1 molar ratio (¶0086).
Considering Claim 7: Seo et al. teaches the dye as being present in an amount of 0.1 to 50 weight percent (¶0089).
Considering Claim 8: Seo et al. teaches the alkalie soluble resin as having a structure of
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, with the variables being the same as currently claimed (¶0118-0147).
Considering Claim 9: Seo et al. teaches the molecular weight of the alkali soluble resin as being 1,000 to 100,000 g/mol (¶0156).
Considering Claim 10: Seo et al. does not teach the claimed ratio. However, Changmin et al. teaches an alkali soluble resin with the claimed formula, and a ratio of units E to F of 2:0 to 1:1 (pg. 10). It would have been obvious to a person of ordinary skill in the art to have used the claimed ratio of units E and F, and the motivation to do so would have been, as Changmin et al. suggests, to reduce residue and outgas from the rein (pg. 10).
Considering Claim 11: Seo et al. teaches the amount of resin as being 1 to 50 weight percent (¶0157).
Considering Claim 12: Seo et al. teaches the amount of reactive unsaturated compound as being 1 to 50 weight percent (¶0167).
Considering Claim 13: Seo et al. teaches the unsaturated compound as preferably being ethylene glycol diacrylate (¶0162).
Considering Claim 14: Seo et al. teaches the amount of photoinitiator as being 0.01 to 10 weight percent (¶0181).
Considering Claim 16: Seo et al. teaches a pattern or film made from the composition (¶0194).
Considering Claim 17: Seo et al. teaches the difference in transmittance at 450 to 620 before and after immersion in propylene glycol methyl ether as being 0.05 to 1.2 % in an example (Table 6).
Considering Claim 18: Seo et al. teaches an organic light emitting display device comprising the pattern or film (¶0194).
Considering Claim 19: Seo et al. teaches a electronic device comprising the display device and a control unit for operating the display device (¶0012).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5-9, 16-23, and 25 of copending Application No. 18/707,680 in view of Changmin et al. (KR 20220045693). Note: A machine translation is being used for KR 20220045693.
Considering Claims 1 and 15: Claim 8 of Application ‘680 teaches a composition comprising an alkali-soluble resin, a reactive unsaturated compound, a photoinitator, a reactive dye and a solvent, where the reactive dye comprises a compound that has the formula
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where at least one of X1-X4 is
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, and the other variables are the same as the instant claims; and a protecting group of the formula
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where the variables have the same definitions as the instant claims.
Application ‘680 does not teach the photoinitiator as having the claimed properties. However, Changmin et al. teaches a photosensitive composition comprising a photoinitiator having a maximum molar absorption of 10,000 or more in a region of 320 to 380 nm and a loss of 5% by weight at 200 ºC or less (pg. 7). Changmin et al. teaches the photoinitiator as having the structure of
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with the variables being the same as claimed (Formula 3). Application ‘680 and Changmin et al. are analogous art as they are concerned with the same field of endeavor, namely photosensitive compositions. It would have been obvious to a person of ordinary skill in the art to have used the photoinitiator of Changmin et al. in the composition of Application ‘680, and the motivation to do so would have been, as Changmin et al. suggests, to produce a composition with excellent patternability due to the high sensitivity (pg. 15).
Considering Claims 2-9, 11, 12, 14 and 16-19: Claims 2, 3, 5-7, 9, 16-23, and 25 of Application ‘680 correspond to instant claims 2-10, 12, 14, and 16-19.
Considering Claim 10: Application ‘680 does not teach the claimed ratio. However, Changmin et al. teaches an alkali soluble resin with the claimed formula, and a ratio of units E to F of 2:0 to 1:1 (pg. 10). It would have been obvious to a person of ordinary skill in the art to have used the claimed ratio of units E and F, and the motivation to do so would have been, as Changmin et al. suggests, to reduce residue and outgas from the rein (pg. 10).
Considering Claim 13: Application ‘680 is silent towards the structure of the unsaturated compound. However, Changmin et al. teaches the claimed structure for the unsaturated compound (Formula 2). It would have been obvious to a person of ordinary skill in the art to have used the compound of Changmin et al. as the unsaturated compound of Application ‘680, and the motivation to do so would have been, as Changmin et al. suggests, they provide excellent heat resistance, light resistance, and chemical resistance (pg. 12).
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim et al. (US 20220204775) teaches a photosensitive composition comprising a protected squarylium core having at least three methacrylate groups and a shell (Abstract). The closest disclosed species is
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(pg. 7). However, there is no suggestion in the art to add the carbamate or amide linkage of the instant claims to arrive at the claimed structure.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
