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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/24/2024 is considered by the examiner.
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.
Claims 22, 23, 24, 25 and 26 are 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.
Regarding claims 22, 23 and 24, the limitations in the claims all depend from claim 14 and recite various ways in which the ink composition is being used, and therefore, it is unclear how the claims are further limiting with respect to the structure of the ink composition itself. The claims appear to be intended use/method of using limitations, and could potentially be viewed as having an intermediate/final product relationship that is subject to restriction. The claims will be treated as intended use/method of using limitations in the rejections below until further clarification is provided by the Applicant.
Regarding claim 25, the entire claim is indefinite. The claim recites “The light-shielding member, which is manufactured by curing the ink composition according to claim 14”, however, there is not sufficient antecedent basis for “The light shielding member…”, as claim 14 is directed to an ink composition.
Regarding claim 26, is indefinite based upon its dependency from claim 25 as rejected above.
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.
Claims 14-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakao et al. (US 2021/0147352).
Regarding claims 14, 16, 17 and 20, Nakao et al. teaches a curable composition used for ink compositions including inkjet ink, comprising a photoacid generator of sulfonium salt (C) which has excellent curing properties under the action of ultraviolet light when used to cure a cationically polymerizable compound ([0022-25, 0028-0031, 0036-0039, 0087-0089, 0145]). The curable composition further comprises carbon black pigment (light shielding agent, A), a cationically polymerizable compound (B) and a sensitizer (D) such as anthracene ([0094-0110, 0113-0116, 0135-0138, 0332]). Nakao et al. teaches that the carbon black pigment is present in an amount of 0.5 to 400,000 parts by weight based on 100 parts by weight of the photoacid generator ([0116]).
Nakao et al. further teaches that the cationically polymerizable compound (B) comprises a polysiloxane compounds (metallic element containing compound), wherein the amount of sulfonium salt is 0.05-20 parts by weight of the curable composition ([0110]), wherein the cationically polymerizable compound (B) comprises a polysiloxane compounds would account for 80-99.95 party by weight, overlapping with the higher end of the claimed range recited by claim 14. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Nakao et al. teaches that the carbon black pigment (light shielding agent, A) is present in an amount of 0.5 to 400,000 parts by weight based on 100 parts by weight of the photoacid generator ([0116]). While the reference does not expressly teach that the carbon black pigment (light shielding agent, A) is present in a total volume of solid content of 0.3% or more and 12% or less, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of carbon black pigment (light shielding agent, A) to fall within the claimed range based upon the desired coloration of the curable composition.
Regarding claim 15, Nakao et al. teaches all the limitations of claim 14 above, and as previously stated, teaches that the carbon black pigment (light shielding agent, A) is present in an amount of 0.5 to 400,000 parts by weight based on 100 parts by weight of the photoacid generator ([0116]). While the reference does not expressly teach that the content of the carbon black pigment (light shielding agent, A) is 0.6 parts by mass or more and 18 parts by mass or less based on the entirety of the solid contents of the ink composition being 100 parts by mass , it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of carbon black pigment (light shielding agent, A) to fall within the claimed range based upon the desired coloration of the curable composition.
Regarding claim 18, Nakao et al. teaches all the limitations of claim 14 above, and further teaches that the cationically polymerizable compound can comprise and epoxide ([0094-0110, 0135-0138, 0332]).
Regarding claim 19, Nakao et al. teaches all the limitations of claim 14 above, and further teaches that the cationically polymerizable compound can comprise additional compounds such as epoxides, aromatic epoxides, alicyclic epoxides, aliphatic epoxides, oxetanes, aliphatic monovinyl ethers, polyfunctional vinyl ethers, styrene, bicycloorthoesters, spiroorthocarbonates and spiroorthoesters ([0094-0110]).
Regarding claim 21, Nakao et al. teaches all the limitations of claim 14 above.
The limitation reciting “wherein the ink composition being used for inkjet printing” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Furthermore, Nakao et al. teaches that the composition is an ink composition used with inkjet printing ([0145]).
Regarding claim 22, Nakao et al. teaches all the limitations of claim 14 above.
The limitation reciting “wherein the ink composition being used for forming a light-shielding member that is provided in an image display apparatus” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Additionally, the limitation is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Nakao et al. discloses the structure of claim 14 as described above, and teaches that the composition can be antireflection films used for optical members ([0145]).
Regarding claims 23 and 24, the limitation reciting “wherein the light-shielding member is provided in a display area in which images are displayed in the image display apparatus” in claim 23 and “wherein the image display apparatus includes plural kinds of light emitting devices, and the light-shielding member is provided between the plural kinds of light emitting devices” are considered functional language related to the intended use of the product and/or further limiting the process of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113.
Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Nakao et al. discloses the structure of claim 14 as described above, wherein claim 14 is directed to an ink composition, and the limitations in claims 23 and 24 further described and/or limit the intended use and method of using the ink composition, but do not further limit the structure of the ink composition itself.
Regarding claim 25, Nakao et al. teaches all the limitations of claim 14 above. Claim 25 is indefinite for the reasons presented above as lacking antecedent basis. The claim as written appears to be a process of using the ink composition of claim 14, and therefore, does not appear to further limit the structure of claim 14. Additionally, Nakao et al. teaches that the composition can be antireflection films used for optical members ([0145]), thus meeting the limitation of claim 25 until further clarification is provided by the Applicant.
Regarding claim 26, Nakao et al. teaches all the limitations of claim 14 above. Claim 26 is indefinite for the reasons expressed above, due to its dependency from claim 25. Nakao et al. teaches that the composition can be antireflection films used for optical members ([0145]), thus meeting the limitation of claim 26 until further clarification is provided by the Applicant.
Conclusion
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785