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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Election/Restrictions
Applicant’s election of the specific species in the reply filed on 22 April 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 8 recites the limitation "the solvent" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 3-7 and 9-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima (JP05303003, cited in the IDS).
Claims 1, 3-7, 9, 11-13: Nakajima discloses a composition with inorganic pigments and a compound of formula (A1) (abs, ¶19-23, 27, 65-69, Table 1 with accompanying text and examples 2-7 and 12).
Claim 10: Nakajima discloses the cured product (examples).
Claim(s) 1-7 and 9-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Craciun (US20080200582A1, cited in the IDS).
Claims 1, 3-7, 9, 11-13: Craciun discloses a composition with inorganic particles and a compound of formula (A1) (abs, ¶53-58).
Claim 2: Craciun discloses the metal oxide feature (¶27, 65-69 and examples).
Claim 10: Craciun discloses the cured product (examples).
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoneyama (JP-2008151866-A, a translation is provided).
Claims 1, 3-7, 9, 11-13: Yoneyama discloses a composition with metal conductive microparticles and a photopolymerizable compound formulae (2) to (5) which meet the claimed formula (A1) (abs, pg. 7-16). The Yoneyama reference discloses the claimed invention with the feature of the compound of formula (A1) but does not disclose the claimed functional groups and/or elements with enough specificity to anticipate the claimed invention. Nevertheless, given that Yoneyama discloses all the variables of the claimed formula (A1), it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught functional groups and elements since Yoneyama teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many functional groups/elements are disclosed would not have made any of them, such as the claimed variables, less obvious. Here, Yoneyama discloses each of the claimed variables/functional groups and there is no evidence nor teaching that the selection of the claimed elements would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 2: Yoneyama discloses the metal microparticles (pg. 7 and 8).
Claim 8: Yoneyama discloses the solvent having a BP higher than 170 0C (pg. 16 and examples).
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujikawa (WO2014119424, cited in the IDS).
Claims 1, 3-7, 9, 11-13: Fujikawa discloses a composition with inorganic microparticles and a photopolymerizable compound formulae (a1), (a2), (b1) and (b2) which meet the claimed formula (A1) (abs, pg. 21 and examples). The Fujikawa reference discloses the claimed invention with the feature of the compound of formula (A1) but does not disclose the claimed functional groups and/or elements with enough specificity to anticipate the claimed invention. Nevertheless, given that Fujikawa discloses all the variables of the claimed formula (A1), it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught functional groups and elements since Fujikawa teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many functional groups/elements are disclosed would not have made any of them, such as the claimed variables, less obvious. Here, Fujikawa discloses each of the claimed variables/functional groups and there is no evidence nor teaching that the selection of the claimed elements would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 2: Fujikawa discloses the metal oxide microparticles (pg. 21).
Claim 8: Fujikawa discloses a solvent but does not explicitly the solvent having a BP higher than 170 0C (pg. 21). It is noted that the claimed BP is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Fujikawa reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as selecting the proper solvent for the composition, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable components involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. a workable solvent for the composition, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim Rejections - 35 USC § 103
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Craciun.
Craciun discloses the claimed invention with a solvent but does not explicitly the solvent having a BP higher than 170 0C (¶49-52 and claims). It is noted that the claimed BP is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Fujikawa reference discloses a similar composition and a solvent having a BP of 186.5 0C for N,N-dimethylbutyramide and 240 0C for N,N-dibutylacetamide , it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as selecting the proper solvent for the composition, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable components involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. a workable solvent for the composition, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Conclusion
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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