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 .
DETAILED ACTION
Claim Objections
Claim 26 is objected to because of the following informalities: claim 26 requires components from claim 16 which apparently is a depend claim of claim 16, but it fails to include all the limitation of claim 16; thus claim 26 is deemed to be in an improper dependent form. Appropriate correction is required.
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.
Claim 23 is 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 pre-AIA the applicant regards as the invention.
Claim 23 is rejected as being vague and indefinite when the claim recites “a (meth)acrylate monomer represented by following chemical formula (I):
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However, when X1 and X2 each is an alkyl, aryl or an alkoxy group, and R1 and R2 each is a hydrogen, halogen, methyl, alkyl, aryl, alkoxy or carboxylic acid group, the formula does represent a (meth)acrylate monomer. The claim should be re-written to clearly define a (meth)acrylate monomer.
Claim 23 is rejected as being vague and indefinite when the claim recites "preferably…” to further limit a range or a species, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 23 is rejected as being vague and indefinite when the claim recites R9, R10 and R11 being represented by formulae (IV), (V) and (VI), and the claim also recites that at least one of R9, R10 and R11 is a (meth)acryl group, which include any (meth)acryl groups instead of being one of the (meth)acryl group represented by formulae (IV), (V) and (VI); thus render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim Rejections - 35 USC § 102
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 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 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.
Claims 16-18 and 20-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miki et al (TW 202124600, of record, ‘600 hereafter).
Regarding claims 16-18, 20-25 and 27, ‘600 discloses a composition and a methos of making the same ([0009]-[0017], [0219]-[0231]) comprising a reactive monomer being one of mono-(meth)acylate or/and di-(meth)acrylate ([0012]-[0013], [0089]-[0101], Examples ); a light emitting moiety being a luminescent nanocrystal ([0028]-[0045], Examples); an antioxidant being one of phenol derivatives or thiols in an amount of 0.01% to 10% by mass based on total composition, specifically 1 to 2 % by mass as in the examples ([0017], [0132]-[0137], Examples ); and polymerization initiator being one of the phosphine oxide or the like as in present claim 21 in an preferred amount range of 0.1 to 10 per 100 parts of reactive monomer ([0105]-[0109]); wherein the di-(meth)acrylate can be HDDMA or HDDA (Examples, Tables 1 and 3), satisfying chemical formula (I) or formula (III) as in present claim 23 and the viscosity of the composition is less than 20 cP at room temperature without solvent added satisfying present claims 24 and 25 ([0141]-[0142], it is also noted that adding a certain amount of solvent to adjust viscosity is a common practice in the art).
Regarding claims 26 and 28-29, ‘600 also discloses a layer and a method of making the same comprising a polymer derived from the reactive monomers and other components as claimed (Examples, [0244]).
Regarding claims 30 and 31, ‘600 also discloses that the composition can be used to make a color filter which satisfying all the limitations of present claims 30 and 31 ([0018]-[0022], [0158]-0170]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Miki et al (TW 202124600, of record, ‘600 hereafter).
Regarding claims 18 and 19, ‘600 teaches all the limitations of claim 16, .600 also discloses that the amount of the polymerization initiator in the composition generally can be in a preferred range of 0.1 to 10 parts per 100 parts of polymerizable monomers ([0109]), but does not specifically exemplify a composition having initiator being in the range of higher than 0 to less than 1 wt% based on total composition as presently claimed, which render the ratio of antioxidant to initiator being in the range of 1 to 100. However, it is known in the art that the amount of the polymerization initiator in the composition is an effective variable in terms of the polymerization rate of the composition. ‘600 also discloses that lower polymerization rate of the composition as disclosed provides better surface uniformity of the cured composition ([0027]). In view of this, it would have been obvious to one of ordinary skill in the art to use the amount of polymerization initiator in the lower end of the amount range as generally known in the art, which within the scope of the present claims, so as to produce a cured composition having better surface uniformity. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 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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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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