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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 7/14/2026 is acknowledged.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/14/2026.
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.
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.
Claim(s) 1-3 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kidnie (US 2022/0373879 A1).
Regarding claim(s) 1, Kidnie teaches a relief image-forming assembly (50) comprising a mask element (36) formed from a mask precursor and a relief-forming assembly (55) formed from a relief-forming precursor (para 0029, 0040; Fig. (1C)), which said mask precursor (10) comprising transparent carrier sheet (15), light-to-heat converting (LTHC) layer (20), ablatable imaging layer (IL) (30) and particulate-treated protective topcoat layer (38) (para 0044; Fig. (1A));
which said sheet (15) comprises one or more “first” UV radiation absorbing compounds with an absorption spectrum of 150 to 450 nm (para 0049);
which said LTHC layer (20) (photothermal conversion layer) comprises “first” and second infrared (IR) absorbing materials having an absorption spectrum of 700 to 1500 nm such as, inter alia, carbon black, and is transparent to UV radiation (para 0051-0059);
and which said IL (30) comprises one or more UV light absorbing materials having an absorption spectrum of 300 to 450 nm, and one or more second (IR) absorbing materials having an absorption spectrum of 700 to 1500 nm (para 0067-0072).
The first IR absorbing material is also in the sheet (15) (para 0054) and in the IL (30) (para 0072. Therefore, both the LTHC layer (20) and the IL (30) comprise carbon black (i.e., a photothermal conversion compound), and thus the laminate of the LTHC layer (20)/IL (30)/ topcoat layer (38) teach a laminate (A) respectively comprising the IL (30) (first photothermal conversion layer) and the LTHC layer (20) (second photothermal conversion layer).
Kidnie continues to teach that the relief-forming precursor (55) of the relief image-forming assembly (50) comprises UV-sensitive layer (60) and substrate (65) (para 1054; Fig. (1C)), with said UV-sensitive layer (60) being a pressure-sensitive adhesive (PSA) (para 0163), which is in contact with topcoat layer (38) (PSA layer on one surface of laminate (A)) (para 0163; Fig. (1C)). Therefore, the relief image-forming assembly (50) teaches a PSA sheet.
Kidnie is silent to the relief image-forming assembly (50) having a transmittance of light with a wavelength of 1,032 nm of 75% or less, and having a transmittance of light with a wavelength of 355 nm of 50% or less.
However, as noted above, Kidnie teaches that the relief image-forming assembly (50) is formed of layers comprising one or both of UV light absorbing materials and one or more second (IR) absorbing materials with absorption spectra overlapping that presently claimed.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select UV light absorbing and (IR) absorbing materials with the presently claimed absorption spectra, and the adjust the proportions of the UV light absorbing and (IR) absorbing materials, for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the relief image-forming assembly (50) demonstrating the presently claimed light transmittance based on the degree of absorption and transmittance required of the prior art’s intended application as in the present invention.
The recitation in the claims that the PSA sheet is “for temporarily fixing an electronic part” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kidnie discloses relief image-forming assembly (50), which is identical to that presently claimed, it is clear that the relief image-forming assembly (50) of Kidnie would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, as noted above, Kidnie teaches that the IL (30) (i.e., the first photothermal conversion layer) comprises one or more UV light absorbing materials (capable of absorbing UV light).
Regarding claim 3, Kidnie teaches that the IL (30) (i.e., the first photothermal conversion layer) comprises polyesters (para 0077).
Regarding claim 5, as noted above, Kidnie teaches that the IL (30) (i.e., the first photothermal conversion layer) comprises and one or more second (IR) absorbing materials having an absorption spectrum of 700 to 1500 nm (capable of absorbing near IR light).
Regarding claim 6, as noted above, Kidnie teaches that the LTHC layer (i.e., the second photothermal conversion layer) comprises the one or more second (IR) absorbing materials having an absorption spectrum of 700 to 1500 nm (capable of absorbing near IR light).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kidnie (US 2022/0373879 A1) in view of Morokuma (JP 2020075387 A). The Examiner notes that citations from the ‘387 reference were taken from a machine translation, which is included with the current action.
Regarding claim(s) 7-8, Kidnie teaches the relief image-forming assembly (50) comprising the LTHC layer (20) (i.e., the second photothermal conversion layer) comprising the IR absorbing materials such as, inter alia, carbon black.
Kidnie is silent to the IR absorbing materials containing a tungsten and/or a cesium element, but does teach that, in addition to carbon black, the LTHC layer comprises metal oxides (para 0054).
In addition, Morokuma teaches a first photothermal conversion layer (50) comprising Near IR absorbers such as, inter alia, carbon black (para 0016) and tungsten cesium oxide, the latter of which has a low absorption rate in the visible region towards reducing color tint (para 0017).
Case law holds that the mere substitution of an equivalent (something equal in value or
meaning, as taught by analogous prior art) is not an act of invention; where equivalency
is known to the prior art, the substitution of one equivalent for another is not
patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ tungsten cesium oxide as the near IR absorber in the LTHC layer of Kidnie towards said LTHC layer minimizing color tint as in the present invention.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2012208145 A).
Regarding claim(s) 1-3 and 5-7, Hiyashi teaches an adhesive film (1) comprising first adhesive layer (11), first functional layer (12), second adhesive layer (13) and second functional layer (14) (para 0019; Fig. 1), which said first adhesive layer (11) and second adhesive layer (13) are pressure-sensitive adhesives (PSA) (PSA sheet) (para 0025) and which said first functional layer (12), second adhesive layer (13) and second functional layer (14) together teach a laminate (12)/(13)/(14) (laminate A).
Hiyashi also teaches that the first functional layer (12) comprises one or more of, inter alia, near-IR and UV absorption ability (para 0037), and comprises a polyester resin (para 0043, 0048) and a near-IR absorber (second photothermal conversion layer) that absorbs in a wavelength of 800 to 1100 nm towards reducing the transmittance of near-IR light to 20% or less (75% or less at 1,032 nm) (para 0046). The near-IR absorber includes, inter alia, tungsten oxide compounds (current claims 5-7) (para 0047).
Hiyashi further teaches that the second functional layer (14) comprises one or more of, inter alia, near-IR and UV absorption ability (capable of absorbing UV light, current claim 2) (para 0075-0076) and comprises a polyester (meth)acrylate (current claim 3) (para 0080). The Examiner notes that the second functional layer (14) demonstrates near-IR absorbance, and thus one skilled in the art would recognize that the same near-IR absorber employed in the first functional layer (12) (i.e., tungsten oxide compound) would be applicable for use in the second functional layer (14) (first photothermal conversion layer).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select UV light absorbing materials with the presently claimed absorption spectra, and the adjust the proportions of the UV light absorbing materials, for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the adhesive film (1) demonstrating the presently claimed light transmittance based on the degree of absorption and transmittance required of the prior art’s intended application as in the present invention.
Claim(s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiyashi (JP 2012208145 A) in view of Uchiyama et al. (US 2023/0383053 A1).
Regarding claim(s) 4 and 9, Hiyashi teaches the adhesive film (1) comprising the first functional layer (12) comprising the polyester resin and the near-IR absorber (i.e., second photothermal conversion layer); and the second functional layer (14) comprising the polyester (meth)acrylate (i.e., first photothermal conversion layer), but is silent to the layers (12) and (14) demonstrating the presently claimed %5 weight loss at 300 ℃ or more.
However, Uchiyama teaches a crosslinked aromatic polyesters demonstrating a 5% weight loss at not lower than 300 ℃, and is used an index of the heat resistance (para 0076).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the first functional layer (12) and the second functional layer (14) with the presently claimed weight loss based on the heat resistance required of the prior art’s intended application as in the present invention
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiyashi (US 2021/0326563 A1) in view of Morokuma (JP 2020075387 A).
Regarding claim(s) 8, Hiyashi teaches an adhesive film (1) comprising the first functional layer comprising tungsten oxide compounds as in the rejection of at least current claim 1 and 5-7 set forth above, but is silent to the tungsten oxide compounds further comprising cesium.
However, Morokuma teaches a first photothermal conversion layer (50) comprising Near IR absorbers such as, inter alia, tungsten cesium oxide, the latter of which has a low absorption rate in the visible region towards reducing color tint (para 0017).
Case law holds that the mere substitution of an equivalent (something equal in value or
meaning, as taught by analogous prior art) is not an act of invention; where equivalency
is known to the prior art, the substitution of one equivalent for another is not
patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ tungsten cesium oxide as the near IR absorber first functional layer (12) of Hiyashi towards said first functional layer (12) minimizing color tint as in the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/28/2026
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