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, claims 1-10, in the reply filed on 1/6/2026 is acknowledged.
Claims 11-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/6/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claims 8 and 10 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.
In claims 8 and 10, the limitations that C represents an “aromatic ring” render the metes and bounds of the claim indefinite as there is only 1 possible option for an aromatic ring having 6 carbon atoms, which is how the structure is drawn. The specification at [0080] states that the ring can be a heterocyclic ring, but this does make sense in how the structure is drawn as a 6-membered carbon ring; hence, there cannot be a heterocyclic atom in the ring. This rejection can be overcome by requiring ring ‘C’ to be a benzene ring.
Claim Rejections - 35 USC § 102
Claims 1-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakagawa et al. (JP 2008-233476), machine translation included.
With regard to claims 1-3, Nakagawa et al. photosensitive resin composition for forming a black matrix, which reads on applicants’ photosensitive composition [0001]. The composition includes a compound having chromism property, such as a leuco dye, which reads on applicants’ coloring material precursor that will color black by heat [0033], [0045] and [0054].
With regard to claims 4-7 and 9, the photosensitive resin composition can be a negative photosensitive resin composition that includes a polymer binder, which reads on applicants’ alkali-soluble resin as the composition is developed by using an alkaline aqueous solution, a photopolymerizable monomer and a photopolymerization initiator [0014], [0021] and [0053].
Given the fact that the composition is the same as claimed and preferentially disclosed, and the composition is used for the same purpose as a black matrix material, the photosensitive resin composition of Nakagawa et al. will inherently possess the absorbance at 365 nm in the colored or uncolored state or the average absorbance in the range of from 400 to 700 nm when formed into a film with the thickness claimed absent objective evidence to the contrary.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 6 of copending Application No. 18/985034 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a composition including a compound according to formula (1). The copending claims are a species of the pending claims, and therefore this means the copending claims render obvious pending claim 1 via the anticipation type analysis (see MPEP 804(II)(B)(2)). The copending composition may also contains a resin; however, the copending claims do not specifically teach the composition according to pending claims 4 and 9.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to [0128] of the specification of copending Application No. 18/985034, which defines what is meant resin in that it may be a negative-tone resin composition having a resin, polymerizable monomer and polymerization initiator; therefore, it would have been obvious to one of ordinary skill in the art to made the composition of the copending include a resin composition as presently claimed.
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. The Examiner notes that the other references on the Written opinion of the ISA are considered cumulative to the present rejection. Also, the Examiner has cited WO 2021/095784 and US 2004/0197703, which may have 2-anilino-3-methyl-6-dibutylaminofluorane leuco dye in negative or positive photoresist compositions, respectively, and are cumulative to the above rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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