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.
Claim 16 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 16 recites “A method of using the cured product according to claim 15 as an insulating coating layer” but does not positively recite any method steps. The scope of the claim is therefore indefinite. The examiner recommends that the claim be amended to recite a step of coating a substrate with the cured product.
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 (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 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 1, 5-6, 9, and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagai (U.S. PG Pub. No. 2011/0160330).
In paragraph 14 Nagai discloses a silsesquioxane having organic substituents, therefore constituting an organopolysiloxane as recited in claim 1. In paragraph 59 Nagai discloses compositions comprising the silsesquioxane and a photoinitiator which are UV-curable, indicating that the silsesquioxane of Nagai is UV-curable as recited in claim 1. In paragraph 14 Nagai discloses that the silsesquioxane contains an R1 group having one or more secondary hydroxyl groups and one (meth)acryloyloxy group, meeting the limitations of the monovalent functional group of claims 1 and 5-6 where the hydroxyl group is the hydrophilic group and the (meth)acryloyloxy group is the UV-curable group. While Nagai does not specifically disclose that the silsesquioxane has solubility in aqueous alkaline solutions, since it meets the structural limitations of the claimed organopolysiloxane it will possess at least some solubility as recited in claim 1. Similarly, since the silsesquioxane of Nagai meets the structural limitations of the claims it will have the solubility recited in claim 12 when present in a coating film.
In paragraph 14 Nagai discloses that the silsesquioxane compound comprises an (R3SiO3/2) unit, where R3 can be an unsubstituted monovalent hydrocarbon group, meeting the limitation of the siloxane unit recited in claim 9.
In paragraph 100 Nagai discloses that the composition comprises the photoinitiator in an amount of 0.5 to 10 parts by weight per 100 parts by weight of the non-volatile components of the composition, leading to a concentration relative to the silsesquioxane within the range recited for component (B) of claim 13. In paragraph 107 Nagai discloses that the composition can also comprise organic solvents, meeting the limitations of component (C) of claim 13. The composition of claim 13 therefore meets the limitations of the composition of claim 13, and since the insulating coating agent of claim 14 does not require any additional components, claim 14 is met as well.
In paragraphs 108-113 Nagai discloses a cured coating film prepared from the composition, meeting the limitations of claim 15.
In light of the above, claims 1, 5-6, 9, and 12-15 are anticipated by Nagai.
Claims 1, 5-6, and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchida (U.S. PG Pub. No. 2013/0085203).
In paragraphs 41 and 45 Tsuchida discloses a (meth)acrylic-modified organopolysiloxane having an R6 group which contains a (meth)acryloxy group, and which can also contain a hydroxyl group, as shown in several of the sample R6 groups disclosed in paragraphs 41 and 45 of Tsuchida. The R6 group in the organopolysiloxane of Tsuchida therefore meets the limitations of the monovalent functional group of claims 1 and 5-6. In paragraph 47 Tsuchida discloses that the organopolysiloxane is UV-curable, as recited in claim 1. While Tsuchida does not specifically disclose that the organopolysiloxane has solubility in aqueous alkaline solutions, since it meets the structural limitations of the claimed organopolysiloxane it will possess at least some solubility as recited in claim 1. Similarly, since the organopolysiloxane of Tsuchida meets the structural limitations of the claims it will have the solubility recited in claim 12 when present in a coating film.
In paragraph 46 Tsuchida discloses that the organopolysiloxane can be combined with a photoinitiator (photopolymerization initiator) and an organic solvent, as recited in claim 13. In paragraph 56 (Example 4) Tsuchida discloses that the photoinitiator can be added in an amount of 5 parts per 100 parts of the organopolysiloxane, within the range recited in claim 13. The composition of Tsuchida therefore meets the limitations of claim 13, and since the insulating coating agent of claim 14 does not require any additional components, claim 14 is met as well. In the examples Tsuchida discloses cured films prepared from the compositions, meeting the limitations of claim 15.
In light of the above, claims 1, 5-6, and 12-15 are anticipated by Tsuchida.
Claims 1, 5-6, 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Namekawa (JP 2011-209442 A).
An English-language machine translation of Namekawa, filed by applicant on 4/26/24, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation unless otherwise noted.
In paragraph 1 Namekawa discloses a UV-curable photosensitive resin composition and a cured product of the resin composition. In paragraph 8 Namekawa discloses that the resin is alkali-soluble, as recited in claim 1, and that it contains a carboxyl group and a polymerizable unsaturated group. In formula (1), depicted on page 4 of the original Japanese reference, Namekawa indicates that the resin is an organopolysiloxane, as recited in claim 1, having an X group. In paragraph 9 Namekawa discloses that the X group is preferably represented by a formula (3), depicted at the top of page 5 of the original Japanese reference, which contains a (meth)acryloyloxy group (bottom right of the formula) and a pair of L groups. In paragraph 9 Namekawa further discloses that the L group is represented by a formula (4), also depicted on page 5 of the original Japanese reference, which is a carboxyl group. The X group of Namekawa therefore meets the limitations of the monovalent substituent of claims 1, 5-6, and 11, where the (meth)acryloyloxy group is the UV-curable group and the carboxyl group is the hydrophilic group, and the alkali-soluble resin of Namekawa therefore meets the limitations of the UV-curable, alkali-soluble organopolysiloxane of claims 1, 5-6, and 11. Since the organopolysiloxane of Namekawa meets the structural limitations of the claims it will have the solubility recited in claim 12 when present in a coating film. Claims 1, 5-6, and 11-12 are therefore anticipated by Namekawa.
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.
The factual inquiries 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 2-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida.
The discussion of Tsuchida in paragraph 7 above is incorporated here by reference. Tsuchida discloses a UV-curable organopolysiloxane meeting the limitations of claim 1 but does not specifically disclose the repeat units of claims.
In paragraph 26 Tsuchida discloses that m+n in the formula of the organopolysiloxane is preferably from 0.6 to 2.5, in which case the subscript for the oxygen in the repeat units ranges from 1.5/2 to 3.4/2, encompassing the 2/2 recited for repeat unit (1) of claims 2-3 and the 3/2 repeated for repeat unit (5) of claim 9. The R6 group in the organopolysiloxane of Tsuchida corresponds to the R1 group in repeat unit (1) of claim 2 and the R group in repeat unit (5) of claim 9. In paragraphs 22 and 41 Tsuchida discloses that the R1 group of the organopolysiloxane, corresponding to the R group in repeat unit (1) of claim 2, can be an unsubstituted or substituted monovalent hydrocarbon group, where the substituents can be fluorine atoms, as recited for the R group of claim 2. The first two formulas in paragraph 45 of Tsuchida meet the limitations of claim 10 where R5 has 3 carbon atoms, Y is a (meth)acryloxy group, Z is a hydroxyl group, n is 1, X is an oxygen atom, and R4 has 3 carbon atoms. In paragraph 43 Tsuchida discloses that the R6 group can also be a substituent of formula (4), containing an UV-curable group but no hydrophilic group, corresponding to the R2 group of claim 4.
See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 2-4 and 9-10 are therefore rendered obvious by Tsuchida. Additionally, the 1.5/2 to 3.4/2 range for the oxygen subscript in the organopolysiloxane of Tsuchida and the R groups discussed above indicate that the organopolysiloxane of Tsuchida has an average formula encompassing the ranges recited in claim 7 and the proportion of b1 and b2 units encompassing the range recited in claim 8, rendering those claims obvious as well.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Namekawa.
The discussion of Namekawa in paragraph 8 above is incorporated here by reference. Namekawa discloses an organopolysiloxane meeting the limitations of claim 1. In paragraph 29 Namekawa discloses a composition comprising the photosensitive resin, as recited in component (A) of claim 13, a photoinitiator (photopolymerization initiator), as recited in component (B) of claim 13, and an organic solvent, as recited in component (C) of claim 13. The insulating coating agent of claim 14 does not require any additional components and the composition of Namekawa therefore comprises all the necessary components of claim 14. The cured product of Namekawa corresponds to that of claim 15.
Since the coating formed from the curing of the resin composition of Namekawa meets the compositional limitations of the claims, it will act as an insulating layer when adhered to the substrates disclosed in paragraph 69 of Namekawa, meeting the limitations of claim 16. In paragraph 69 Namekawa discloses that the photosensitive resin can be used as a protective layer for liquid crystal displays, meeting the limitations of the display device of claim 17.
The difference between Namekawa and the currently presented claims is that Namekawa does not disclose compositions having a photoinitiator content within the range recited for component (B) of claim 13.
In paragraph 28 Namekawa discloses that the amount of photoinitiator in the composition is preferably 2 to 50 parts by weight per 100 parts by weight of the photosensitive resin and a photopolymerizable monomer, and in paragraph 26 discloses that the ratio of the photosensitive resin to the photopolymerizable monomer is preferably 40/60 to 80/20, leading to a range of ratios of photoinitiator to photosensitive resin of 2/80 (2.5 parts of photoinitiator per 100 parts of photosensitive resin) to 50/40 (125 parts of photoinitiator per 100 parts of photosensitive resin), overlapping the range recited in claim 13. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 13-17 are therefore rendered obvious by Namekawa.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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