DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 03/31/2026.
3. Claims 1-10 are pending. Claims 1-10 are under examination on the merits. Claims 4, 6-9 are amended.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive, thus claims 1-10 stand rejected as set forth in Office action dated 01/14/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-4, 6-10 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Yokoyama et al. (US Pub. No. 2019/0085199 A1, hereinafter “’199”) in view of Shigekazu Suzuki (US Pub. No. 2008/0268354 A1, hereinafter “’354”).
Regarding claims 1-3: ‘199 teaches a nonlinear optically active copolymer-containing composition (Page 1, [0011]) comprising a nonlinear optically active copolymer (Page 10, [0178], Production Example 1), wherein the nonlinear optically active copolymer-containing composition, comprising 10% by mass or more of the nonlinear optically active copolymer, and a solvent (Page 11, [0192[, production of Core). ‘199 does not expressly teach a benzoate,
wherein the benzoate is at least one selected from the group consisting of methyl benzoate, ethyl benzoate, propyl benzoate, and isopropyl benzoate.
However, ‘354 teaches a colored photopolymerizable composition including a pigment, a dispersant, a solvent, a polymerizable compound and a photopolymerization initiator, the solvent further including a solvent (B) having a boiling temperature of from 150°C to 330°C and an SP value (solubility parameter) from 9.5 (cal/cm3)1/2 to 11(cal/cm3)1/2 (Page 1, [0018]) such as methyl benzoate, ethyl benzoate, propyl benzoate, and isopropyl benzoate (Page 2, [0021]) with benefit of providing a colored photopolymerizable composition with extremely favorable dispersion stability can be obtained. Further, if this kind of colored photopolymerizable composition is used, a smooth pattern with superior coating film uniformity (uniform film thickness) and without irregularities and without residue when exposing and developing, can be obtained (Page 2, [0027]).
In an analogous art of the nonlinear optically active copolymer-containing composition and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the solvent by ‘199, so as to include a benzoate, wherein the benzoate is at least one selected from the group consisting of methyl benzoate, ethyl benzoate, propyl benzoate, and isopropyl benzoate as taught by ‘354, and would have been motivated to do so with reasonable expectation that this would result in providing a composition with extremely favorable dispersion stability can be obtained (i.e., high SP value). Further, if this kind of photopolymerizable composition is used, a smooth pattern with superior coating film uniformity (uniform film thickness) and without irregularities and without residue when exposing and developing, can be obtained as suggested by ‘354 (Page 2, [0027]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
solvents) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claims 4,6: ‘199 teaches the nonlinear optically active copolymer-containing composition (Page 1, [0011]), wherein the nonlinear optically active copolymer contains, in the same molecule, at least one a repeating unit A1 of Formula (1), and a repeating unit B of Formula (3) having a nonlinear optically active moiety (Page 10, [0181], Production of PMC).
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Regarding claim 7: ‘199 teaches the nonlinear optically active copolymer-containing composition (Page 1, [0011]) containing composition, wherein Z is an atomic group having a furan ring group of Formula (3), wherein R9 and R10 are each independently a hydrogen atom, a C1-5 alkyl group, a C1-5 haloalkyl group, or a C6-10 aryl group, and the black dot is a bond to the remaining structure of the atomic group Z exhibiting nonlinear optical activity (Page 3, [0050]; Page 12, Claim 2).
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Regarding claims 8-9: ‘199 teaches the nonlinear optically active copolymer-containing composition (Page 1, [0011]), wherein the Z is an atomic group resulting from removal of one hydrogen atom from any of R3 to R8 and R11 to R16 of a compound represented by formula [4], and Ar is a divalent aromatic group represented by formula [5] or formula [6] as set forth (Page 4, [0052]; Page 4, [0070]; Page 13. Claim 3).
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Regarding claim 10: ‘199 teaches an electro-optic element comprising a thin film obtained from the nonlinear optically active copolymer-containing composition Page 5, [0085]; Page 6, [0089]; Page 6, [0098]; Page 13, Claims 6-8).
8. Claim 5 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Yokoyama et al. (US Pub. No. 2019/0085199 A1, hereinafter “’199”) in view of Shigekazu Suzuki (US Pub. No. 2008/0268354 A1, hereinafter “’354”) as applied to claim 1 above, and further in view of Shi et al. (Achieving excellent electro-optic activity and thermal stability in poled polymers through an expeditious crosslinking process, J. Mater. Chem., 2012, 22, 951–959, hereinafter “Shi”).
Regarding claim 5: The disclosure of ‘199 in view of ‘354 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘199 in view of ‘354 does not expressly teach a repeating unit A2 of Formula (2) as set forth.
However, Shi teaches a series of highly efficient and thermally stable electro-optic (EO) polymers that have been developed by poling and crosslinking in situ the blend of high glass-transition temperature (Tg) anthracene containing polymers and acrylate-functionalized dendritic nonlinear optical (NLO) chromophores (Page 953, Scheme 2, containing substituted maleimide; Page 952, Scheme 1). Shi teaches by molecular engineering of the shape nonlinearity, Tg, and crosslinking moieties of the chromophores and polymers, the resultant materials shows significantly enhanced EO activities, and alignment stability. Poling efficiency of these EO polymers could be improved by 35–50% by using simplified lattice hardening and poling protocols. The combined good processability, large EO activities, and high temperature stability endow these materials as promising candidates for device exploration in the CMOS-based photonics (Page 951, Abstract, lines 1-9).
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In an analogous art of the nonlinear optically active copolymer-containing composition and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the nonlinear optically active copolymer by ‘199, so as to include the repeating unit A2 of Formula (2) as taught by Shi, and would have been motivated to do so with reasonable expectation that this would result in providing a crosslinking moieties of the chromophores and polymers which shows significantly enhanced EO activities, and alignment stability. Poling efficiency of these EO polymers could be improved by 35–50% by using simplified lattice hardening and poling protocols. The combined good processability, large EO activities, and high temperature stability endow these materials as promising candidates for device exploration in the CMOS-based photonics as suggested by Shi
(Page 951, Abstract, lines 1-9).
Response to Arguments
9. Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Yokoyama ’199 does not describe or suggest use of a benzoate.
The examiner respectfully disagrees. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is submitted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). In this case ‘199 teaches a nonlinear optically active copolymer-containing composition (Page 1, [0011]) comprising a nonlinear optically active copolymer (Page 10, [0178], Production Example 1), wherein the nonlinear optically active copolymer-containing composition, comprising 10% by mass or more of the nonlinear optically active copolymer, and a solvent (Page 11, [0192[, production of Core). ‘199 teaches the use of any solvent which is capable of dissolving the nonlinear optically active copolymer including at least the repeating unit A represented by formula [1] and the repeating unit B represented by formula [2] as set forth and also capable of dissolving the additive which may be added if desired. As long as the solvent has such dissolving ability, the type and structure of the solvent are not particularly limited (Page 6, [0091]). The disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). ‘199 does not expressly teach a benzoate, wherein the benzoate is at least one selected from the group consisting of methyl benzoate, ethyl benzoate, propyl benzoate, and isopropyl benzoate.
However, ‘354 teaches a colored photopolymerizable composition including a pigment, a dispersant, a solvent, a polymerizable compound and a photopolymerization initiator, the solvent further including a solvent (B) having a boiling temperature of from 150°C to 330°C and an SP value (solubility parameter) from 9.5 (cal/cm3)1/2 to 11(cal/cm3)1/2 (Page 1, [0018]) such as methyl benzoate, ethyl benzoate, propyl benzoate, and isopropyl benzoate (Page 2, [0021]) with benefit of providing a colored photopolymerizable composition with extremely favorable dispersion stability can be obtained (Page 2, [0027]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
solvents) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., a nonlinear composition) and show the product is actually different from and unexpectedly better than the teachings of the references.
10. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Examiner Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
04/14/2026
bijan.ahvazi@uspto.gov
Prosecution Insights