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 07/16/2026.
3. Claims 1, 5-6, 8-14 are pending. Claims 1, 5-6, 8-14 are under examination on the merits. Claims 1, 5-6, 9-11, 13 are amended. Claims 2-4, 7 are cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1, 5-6, 8-14 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 5 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, Claim 5 is dependent upon cancelled claim 5, and is thus indefinite.
For the purpose of examination against the prior art, claim 5 is construed to depend on claim 1.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1, 5-6, 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shiono et al. (US Pub. No. 2017/0184765 A1 , hereinafter “’765”) in view of Pauluth et al.(US Pub. No. 2010/0271576 A1, hereinafter, “‘576”) or Ozawa et al. (US Pat. No. 6,836,383 B1, hereinafter, “‘383”).
Regarding claims 1,6,10: ‘765 teaches a composition for a camera module lens (Page 24, [0195]), the composition comprising: a resin, an ultraviolet (UV) absorbing dye, and a near infrared ray (NIR) absorbing dye (Page 13, [0155], Example 2), wherein the UV-absorbing dye and the NIR-absorbing dye are dispersed between polymer chains of the resin (Page 10, [0119]), wherein the resin is polycarbonate resin, polyolefin resin, cyclic olefin resin (Page 9, [0120]-[0121]). ‘765 teaches the dye (U) is a near ultraviolet absorbing dye of the methine series which is a compound represented by the formula (U) as set forth (Page 7, [0095]), and which has an absorption maximum at a wavelength of from 370 to 425 nm and has a molar absorptivity at the maximum absorption wavelength of at least 50,000 [L/(mol.cm)] (Page 8, [0096]), and the dye (A) as the NIR-absorbing dye is particularly preferably the squarylium dye (A1) (Page 9, [0103]). ‘765 teaches the total content of the UV-absorbing dye (U) and the NIR-absorbing dye (A) in the transparent resin is, as represented by the mass (PHR) of the dyes per 100 parts by mass of the transparent resin, preferably from 0.5 to 30, and with a view to reducing the film thickness, more preferably from 0.5 to 20. The content of the dye (U) is preferably from 0.1 to 20, more preferably from 0.5 to 15. The content of the dye (A) is preferably from 0.5 to 25, more preferably from 1.0 to 20 (Page 11, [0133]). ‘765 teaches in order that in the spectral transmittance curve of the near ultraviolet absorbing dye, the inclination in the vicinity of the visible region boundary is steeper, the maximum absorption wavelength is preferably from 375 to 420 nm, more preferably from 378 to 410 nm. Further, in order to obtain a high shielding effect by blending in a smaller amount with the transparent resin, the molar absorptivity at the maximum absorption wavelength is preferably at least 60,000 [L/(mol.cm)], more preferably from 65,000 to 90,000 [L/(mol.cm)] (Page 9, [0097]) with benefit of providing the dye (U) has a high heat resistance, and in its spectral transmittance curve, a change during the thermal process is small (Page 9 , [0098]). ‘765 does not expressly teach the composition comprises 0.002 wt% or more and less than 0.1 wt% of a UV- absorbing dye of the methine series and 0.002 wt% or more and less than 0.1 wt% of a NIR- absorbing dye of the squaraine series based on a total weight of the composition.
However, ‘576 teaches optical compensation film on a cellulose acrylate base for liquid crystal displays (Page 1, [0001]) including additive (Page 9, [0080] such as UV absorbers (Page 9, [0083]), and IR absorbers such as squarylium compounds, and methine compounds in a quantity of 0.01 to 5 weight percent, advantageously 0.02 to 2 weight percent, very preferred from 0.1 to 0.5 weight percent with respect to the mass of the compensation film (Page 9, [0085]) with benefit of providing to adapt the retardation values at certain wavelengths (Page 9, [0085]).
Alternately, ‘383 teaches a diphenylsquarylium compound which is suitable for a filter for display, particularly in a filter for plasma display panel, and a filter for display containing the diphenylsquarylium compound (Col. 1, lines12-15). ‘383 teaches it is essential that the filter for display contains the diphenylsquarylium compound, and in order to control color tone and improve color purity, or to improve color temperature and the like, it is desirable that a band-pass filter, particularly a filter for plasma display panel, further contains a dipyrazolyl methine compound (Col. 19, lines 26-33). In addition, amounts of the dipyrazolylmethine compound and dipyrazolylsquarylium compound to be contained are generally from 0.01 to 20 parts by weight, preferably from 0.05 to 10 parts by weight, as the total amount of both compounds, based on 100 parts by weight of the total amount of the binder resin, dispersing agent and diphenylsquarylium compound. In that case, when amount of the diphenylsquarylium compound is defined as 1, approximately from 0.2 to 1 of the dipyrazolylmethine compound and approximately from 0.1 to 1.5 of the dipyrazolylsquarylium compound are used. In general, a filter becomes greenish when amount of the dipyrazolylsquarylium compound is too small or becomes reddish when it is too large (Col. 26, lines 29-41; Col. 35, lines 1-51, Example 6).
In an analogous art of the composition for optical filter, 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 by the amount of the UV- absorbing dye and the NIR- absorbing dye by ‘765 , so as to include 0.002 wt% or more and less than 0.1 wt% of a UV- absorbing dye of the methine series and 0.002 wt% or more and less than 0.1 wt% of a NIR- absorbing dye of the squaraine series based on a total weight of the composition as taught by ‘576, and would have been motivated to do so with reasonable expectation that this would result in providing to adapt the retardation values at certain wavelengths as suggested by ‘576 (Page 9, [0085]).
In an analogous art of the composition for optical filter, 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 by the amount of the UV- absorbing dye and the NIR- absorbing dye by ‘765 , so as to include 0.002 wt% or more and less than 0.1 wt% of a UV- absorbing dye of the methine series and 0.002 wt% or more and less than 0.1 wt% of a NIR- absorbing dye of the squaraine series based on a total weight of the composition as taught by ‘383, and would have been motivated to do so with reasonable expectation that this would result in providing to control color tone and improve color purity, or to improve color temperature and the like as suggested by ‘383 (Col. 19, lines 26-33).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claims 5,11: The disclosure of ‘765 in view of ‘576 or ‘383 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 does not expressly teach the composition has an absorption range of 400 to 430 nm and another absorption range of 700 nm or more, and wherein the composition has a light transmittance of 20 to 60% at 400 to 430 nm and a light transmittance of 10 to 50% at 700 nm.
However, since the combination of ‘765 in view of ‘576 or ‘383 teaches identical or substantially identical composition comprises a cyclic olefin resin, UV-absorbing dye of the methine series and the NIR-absorbing dye of the squaraine series as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. light transmittance, would be expected to be the same as claimed (i.e., the composition has an absorption range of 400 to 430 nm and another absorption range of 700 nm or more, and wherein the composition has a light transmittance of 20 to 60% at 400 to 430 nm and a light transmittance of 10 to 50% at 700 nm). If there is any difference between the product of ‘765 in view of ‘576 or ‘383 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claims 8-9,12-13: The disclosure of ‘765 in view of ‘576 or ‘383 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 teaches the dye (A) is particularly preferably the squarylium dye (A1) represented by the following formula (A1) (Page 9, [0103]), wherein R24 is -CH(C2H5)-C4H9- as shown In Example (A1-8) (Page 10, [0114]) with benefit of providing the spectral transmittance curve will be steep, and excellent solubility and heat resistance will be obtained (Page 9, [0102]).
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Regarding claim 14: The disclosure of ‘765 in view of ‘576 or ‘383 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 reaches the optical filter is useful as an imaging device using a solid-state imaging element, such as a digital still camera or a mobile phone, and a display device using a light receiving element, such as an automatic exposure meter (Page 24, [01095]).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Response to Arguments
10. Applicant’s arguments with respect to claims 1, 5-6, 8-14 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
In response to the Applicant's argument that Shinohara’820 teaches away from the methine dye of shiono’765 because the two references specify mutually exclusive absorption maxima.
The examiner respectfully disagrees. The Applicant's argument is rendered moot since the claim rejection under Shinohara’820 is deemed withdrawn.
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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
12. 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
08/05/2026
bijan.ahvazi@uspto.gov
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