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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-182435 or PCT/JP2022/039470, filed on Nov 9, 2021 and Oct 24, 2022, respectively.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: paragraph [0008] mentions of “red right” should be corrected to “red light”;
paragraph [0039] formula “J-1a” should be corrected to “F-1a”;
and an updated Table 1 of paragraph [0198] is requested as text is difficult to resolve.
Appropriate correction is required.
Claim Interpretation
For the purposes of examination, distinguishing between a resin (B) and a polymerizable compound (C) for claims 1 and 2 will read in light of definitions provided in the instant specification as compounds pertaining to a resin could classify as “polymerizable” to those of ordinary skill in the art and compounds that are “polymerizable” could classify as a “resin” to those of ordinary skill in the art. Per such distinction, compounds that direct to a resin will be those with a molecular weight more than 2900 (paragraph [0106]) while polymerizable compounds are those that can be polymerized and have a molecular weight under 2900 (paragraphs [0115] and [0117]).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hyung Joo et al (JP2019159326A).
Regarding claim 1, Hyung Joo describes a light converting resin composition which includes quantum dots (a semiconductor particle) and a binder resin (a resin) which can contain a thermosetting resin, alkali-soluble resin, epoxy-containing acrylic, and/or a cardo binder resin. The resins provided in synthesis examples 9, 11, 12, 13, 14, 15, 16, 17, and 18 all possess molecular weights >2900 (lowest disclosed is 3500 in example 11) and thus do not read as a polymerizable compound. Hyung Joo’s disclosed resin composition does not contain a polymerizable compound nor a polymerization initiator, thus has both components at mass% below 0.01% as claimed. Therefore, Hyung Joo teaches the claimed “A resin composition comprising a semiconductor particle (A) and a resin (B), wherein a content of a polymerizable compound (C) and a content of a polymerization initiator (D) are each 0.01 % by mass or less based on a total amount of a solid content of the resin composition”.
Regarding claim 2, Hyung Joo teaches the resin composition of claim 1. As described above, Hyung Joo does not include a polymerizable compound nor a polymerization initiator and thus the composition has each at a mass% of 0 based on the total amount of the solid content of the resin composition. Therefore, Hyung Joo teaches the claimed “The resin composition according to claim 1, wherein the content of the polymerizable compound (C) and the content of the polymerization initiator (D) are each 0 % by mass based on the total amount of the solid content of the resin composition”.
Regarding claim 3, Hyung Joo teaches the resin composition of claim 1. In examples 9, 11-15, and 18, Hyung Joo teaches included resins in the composition that have weight-average molecular weights to an acid value ratio ≤ 150. The ratios respectively are: 56.8 (5400/95), 23.3 (3500/150), 93.6 (46441/140), 114 (13110/115), 88.9 (11110/125), 82.6 (8090/98), and 74.2 (11874/160). Thus, Hyung Joo teaches the claimed “The resin composition according to claim 1, wherein a ratio of the weight-average molecular weight of the resin (B) to an acid value of the resin (B) is 150 or less”.
Regarding claim 4, Hyung Joo teaches the resin composition of claim 1. Hyung Joo also includes scattering particles which serve to impart a “sufficient scattering effect of the light emitted from the quantum dots” and thus are light scattering agents. The scattering particles are metal oxides such as Al2O3, SiO2, ZnO, ZrO2, TiO2, and Ti3O5 among others listed which are commonly utilized and well known light scattering particles in the art. Thus, Hyung Joo teaches the claimed “The resin composition according to claim 1, further comprising a light scattering agent (E)”.
Regarding claim 5, Hyung Joo teaches the resin composition of claim 1. Hyung Joo includes a polyethylene glycol-based ligand which is an organic ligand. Hyung Joo also discloses ligands such as oleic acid and oleylamine which are also organic. Thus, Hyung Joo teaches the claimed “The resin composition according to claim 1, further comprising an organic ligand (F)”.
Regarding claim 7, Hyung Joo teaches the resin composition of claim 1. In “Production of light converting resin composition: Examples 1 to 24 and Comparative Examples 1 to 7”, Hyung Joo teaches conversion of the light conversion resin composition into a coating layer, otherwise referred to by Hyung Joo as a “coating film”. Thus, Hyung Joo teaches the claimed “A resin film formed from the resin composition according to claim 1.”.
Regarding claim 8, Hyung Joo teaches the resin film of claim 7. Further, under the section “Image display device”, Hyung Joo teaches that an image display device according to their invention includes the light conversion laminated base material disclosed whereby the light conversion laminated base material is understood to be the light conversion resin film. Thus, Hyung Joo teaches the claimed “A display device comprising the resin film according to claim 7.”.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hyung Joo et al as applied to claim 1 above, and further in view of Samejima et al (US PGPub 20190196073).
Hyung Joo teaches the resin composition of claim 1 but is silent on the viscosity of the disclosed composition. In an analogous invention, Samejima discloses a resin composition for use as a film in a display device whereby the composition includes a light absorbing compound, an organic solvent, and a resin (paragraphs [0009-12]). Samejima teaches that when the film is formed by coating (as in the case of Hyung Joo), the viscosity of the composition at 23°C is preferably in a range of 1-3000 mPa*s or more preferably 5-1000 (or 5-2000, paragraph [0271]). Although Samejima teaches for a temperature of 23°C instead of 25°C, a small deviation in temperature would not be expected to drastically impact the viscosity to a degree such that the viscosity falls outside the overlapping portion of ranges. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the viscosity range as informed by Samejima as a known desirable viscosity for preparing a resin film in the composition of Hyung Joo to arrive at the invention as claimed. Thus, Hyung Joo and Samejima disclose the claimed “The resin composition according to claim 1, having a viscosity of 100 mPa-s or more and 30000 mPa-s or less at 25°C”.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hyung Joo et al in view of Samejima et al as applied to claim 6 above, and further in view of Hideyuki et al (JP2016065178A).
Hyung Joo and Samejima teach the resin composition according to claim 6. Although Samejima teaches a viscosity just outside the claimed temperature of 25°C, Samejima teaches a preferred viscosity range of 1-3000mPa*s which overlaps with the claimed range of 100-30000mPa*s. Hideyuki also discloses an analogous curable resin composition capable of forming a cured film for use in a display device. Hideyuki discloses the film contains a quantum dot (semiconductor particle) and a resin. Further, Hideyuki teaches that a content of an organic solvent in the resin composition can be “appropriately determined in consideration of viscosity and the like” and that the viscosity can be adjusted as a function of the organic solvent. The viscosity would be adjusted to improve applicability to a substrate, to improve operability, and improve moldability. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to adjust the viscosity of the composition disclosed by Hyung Joo such that it falls within the overlapping portion of the range disclosed by Samejima by including an amount of organic solvent in order to improve applicability to a substrate, improve operability, and improve moldability of the resin composition and arrive at the invention as claimed. Thus, Hyung Joo, Samejima, and Hideyuki teach the claimed “The resin composition according to claim 1, having a viscosity of 100 mPa-s or more and 30000 mPa-s or less at 25°C”.
Claims 1, 3, 5, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Joo Yeon et al (KR20180081002A).
Regarding claim 1, Joo Yeon teaches a photosensitive composition (understood to be a resin composition) which “based on the total weight of the composition” (thus solid content of resin composition based on disclosed components being all solid) contains: 0.01% to 50% by weight of a quantum dot polymer composite (semiconductor particle), 0.005 wt% to 50 wt% of a carboxyl group-containing binder (a resin with provided molecular weight of 8,000 per reference example 2 thus does not read as a polymerizable compound), 0.0005% to 30% by weight of photopolymerizable monomers (polymerizable compound), and 0.0001% to 10% by weight of a photoinitiator (polymerization initiator). The photoinitiator as disclosed by Joo Yeon is “a compound capable of initiating radical polymerization between the first and second monomers by forming a radical by light”, further supporting that the photoinitiator can be interpreted as a polymerization initiator. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the ranges of the polymerizable compounds and polymerization initiator to arrive at the invention as claimed. Thus, Joo Yeon teaches the claimed “A resin composition comprising a semiconductor particle (A) and a resin (B), wherein a content of a polymerizable compound (C) and a content of a polymerization initiator (D) are each 0.01 % by mass or less based on a total amount of a solid content of the resin composition”.
Regarding claim 3, Joo Yeon teaches the resin composition of claim 1. In reference example 2, Joo Yeon prepares a quantum-dot containing photosensitive resin composition whereby the binder polymer (resin) has a weight average molecular weight of 8000 and acid value of 130 mgKOH/g, thus a ratio of molecular weight to acid value of 61.5. Thus, Joo Yeon teaches the claimed “The resin composition according to claim 1, wherein a ratio of the weight-average molecular weight of the resin (B) to an acid value of the resin (B) is 150 or less”.
Regarding claim 5, Joo Yeon teaches the resin composition of claim 1. Joo Yeon discloses that the included quantum dots often have organic ligands coordinated on the surface to control crystal growth, thus the resin composition as a result would have an organic ligand present. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include an organic ligand coordinated to the quantum dots in order to control the crystal growth of the quantum dots in the provided resin composition and arrive at the invention as claimed. Thus, Joo Yeon teaches the claimed “The resin composition according to claim 1, further comprising an organic ligand (F).”.
Regarding claim 7, Joo Yeon teaches the resin composition of claim 1. Joo Yeon discloses that the composition can be applied on a transparent substrate to form a film for subsequent use in relevant devices. Further, in examples, Joo Yeon discloses quantifying efficiency of the resin composition as a composite film. Thus, Joo Yeon teaches the claimed “A resin film formed from the resin composition according to claim 1.”.
Regarding claim 8, Joo Yeon teaches the resin film of claim 7. Joo Yeon teaches that the resin film is to be implemented into an electronic device such as a display device. The quantum dot-polymer composite pattern (resin film) can be “advantageously used as a self-emissive color filter by replacing the absorptive color filter in a display”. The disclosed display may be a liquid crystal display device. Further, in the examples (see [3] conversion efficiency), Joo Yeon discloses inserting the resin film between the light guide plate and optical sheet of a TV (display device). Therefore, Joo Yeon discloses a display device comprising the resin film. Thus, Joo Yeon teaches the claimed “A display device comprising the resin film according to claim 7”.
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 1-4 and 6-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of copending Application No. 18/707783 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims pertain to a resin composition comprising identical contents of semiconductor particles, a resin, a polymerizable compound, and a polymerizable initiator. Claim 1 of the copending application further specifies a ratio of content of the semiconductor particle to the resin whereas claim 1 of the instant application does not possess a further limitation. Thus, claim 1 of the copending application is a more specific invention that encompasses the scope of claim 1 in the instant application and is not patentably distinct. Both claims in each application are independent claims whereby claims 2-4, 6-8 of the instant and claims 3-8 of the copending depend upon. Claims 2-4 and 6-8 of the instant map directly to claims 3-8 with identical further limitations, respectively in order i.e., claim 2 to claim 3, claim 3 to claim 4 and so on, and thus are not patentably distinct.
Claim 5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/707783 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims introduce an organic ligand into the composition of their respective independent claim 1 which also are not patentably distinct from one another (see nonstatutory provisional double patenting rejection of claim 1 above). Claim 5 of the instant application further comprises “an organic ligand (F)” while claim 2 of copending application No. 18/707783 may or may not further comprise an “organic ligand (F)” with a limiting mass ratio of total content of semiconductor nanoparticle and organic ligand to the resin. Thus, claim 2 of the copending application is a more specific invention that encompasses the scope of claim 5 in the instant application and is not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Arayama et al (US PGPub 20150166783), Kido et al (US PGPub 20150044451), and Idei et al (US PGPub 20150010856) describe similar resin compositions with relevant components as claimed in the instant application. Ju Ho et al (JP2019095792A) and Yoshihisa et al (JP2021067718A) both describe similar resin compositions within amounts similar to those as claimed in the instant application. Yoshihisa also teaches how to adjust viscosity of resin composition.
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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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