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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 6, 9-12, 19-20, 25, 65-67, and 69-72 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, line 16, reads “ligaments within the polysiloxane form and confine the nanoparticles”, but there is not support in the present disclosure for this limitation. While paragraph 0150 of the published application pointed to by applicant specifically discloses PDMS nanoscale ligaments confine silica nanoparticles, there appears to be no support to broadly recite polysiloxane ligaments form and confine nanoparticles as presently claimed.
Claims 4, 6, 9-12, 19-20, 25, 65-67, and 69-72 are rejected as dependent on rejected Claim 1.
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 1, 4, 6, 9-12, 19-20, 25, 65-67, and 69-72 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.
Claim 1 is indefinite because it is unclear what is meant in line 16, that the “ligaments within the polysiloxane form and confine the nanoparticles”. It is not clear how the ligaments both form the nanoparticles and confine the nanoparticles.
Claims 4, 6, 9-12, 19-20, 25, 65-67, and 69-72 are rejected as dependent on rejected Claim 1.
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.
Claims 1, 6, 9-11, 19-20, 25, 65-67, and 71 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 20150054425, Guschl et al (hereinafter “Guschl”) in view of JP 2012-102221, Fudoji evidenced by: 1) Silica - Silicon Dioxide (SiO2), https://www.azom.com/properties.aspx?ArticleID=1114, 2021, (hereinafter Azom); 2) the article entitled “Crosslinking Effect on Polydimethylsiloxane Elastic Modulus Measured by Custom-Built Compression Instrument”, Zhixin Wang et al. J. Appl. Polym. Sci. pages 41050-(1-4), 2014 DOI: 10.1002/APP.41050 (hereinafter “Wang”); and 3) JP 2008-145506, Haga et al. Below the symbol “{ }” indicates the examiner’s comments contained therein.
Regarding JP 2012-102221 and JP 2008-145506, the English machine translations were retrieved from the National Center for Industrial Property Information and Training (INPIT) J-PlatPat website of https://www.j-platpat.inpit.go.jp/, which will be referenced throughout this Office Action for disclosures and is hereafter referred to as “Fudoji” and “Haga”, respectively.
In the rejection under 35 U.S.C. 103 any reference to "overlapping" for ranges of materials includes a reference to MPEP § 2144.05, for in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prim a facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In accordance with MPEP 2144.05 Ill Applicants can rebut a prima facie case of obviousness by showing the criticality of the ranges.
Regarding claims 1, 6, 9-11, 19-20, 25, 65-67, and 71, Guschl discloses in the entire document, particularly in the abstract and at ¶s 0008-0009, 0031-0032, 0037-0048, 0050-0051, 0054-0059, 0068-0069, 0071, 0080, 0100, 0102; tables 1-3; Figs. 1A and 1B and its claims 8- 9 a nanocomposite composition as curable coating, film, layer or shape with a combination of desirable optical and mechanical properties of coupling agents capable of dispersing a high loading of nanoparticles into a polymer matrix.
The ¶s 0037-0048, 0054 and 0057-0059 discloses a first layer of poly(dimethylsiloxane) and a second layer of poly(dimethylsiloxane) , where the curable silicone matrix is a 1 or 2 part curable formulation comprising precursor compounds cured to set for a coating. From ¶s 0037-0049 the silicone nanocomposite can comprise nanoparticles of organometallic compounds, and 0058-0059) disclose nanocomposite with nanoparticles of silica nanoparticles and nanoparticles used including silicon dioxide, and fused or fumed silica as light diffusing nanoparticles; {reading on nanocomposite with polysiloxane and embedded nanoparticles used in the nanocomposite for the pending claims and on poly(dimethylsiloxane for pending Claim 6 and silica particles for pending Claim 9). Also the nanoparticle can include zinc oxide from ¶s 0037, 0047 and as evidenced by Haga in the abstract and its claim 1 zinc oxide has piezoelectric properties {reading on pending Claim 25}.
From table 2 and ¶s 0097 and 0100 molded specimens of silicone-ligand blends of methylphenyl ligands with methylphenyl silicones were prepared with a thickness of 1 mm {reading on composite film} and the percent transmission(% T) was measured at 450 nm using a UV-Vis spectrometer. The film transmits the light at a wavelength of about 400 nm to about 1000 nm at 0 percent strain as high as 89.64 +/- 1.68 percent light transmission at 450 nm; table 2; paragraph 0100).
Such a range at least overlaps the at least 90 percent of light in a wavelength of about 400 to about 1000 nm in unstretched condition as does the thickness at 1 mm for about 1 mm of the pending claims. In accordance with MPEP § 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990){reading on pending Claim 1 and 19 for at least 90 percent of light and light in a range of 400 to 1000nm} .
From Figs 1A and 1B and ¶s 0008-0009, and 0031 agglomerations of nanoparticles without coupling agent, and a dispersion of nanoparticles with coupling agent are shown. An agglomeration of nanoparticles in polymer matrices can have attach chemical ligands onto the nanoparticles such that they can maintain a certain degree of separation when dispersed within the polymer matrix. Also coupling agent 5 (which can form a "shell" around or couple to at least a portion of surface 50a of nanoparticle 50 and provide favorable interaction with the molecules/polymer chains of polymer matrix 7. Coupling agents 5 also promote favorable dispersion of suspended nanoparticles and deter clustering and agglomeration with neighboring nanoparticles {reading on three dimensional array with voids for the pending claims with voids shown in the Figs and spaces between the particles}.
From ¶s 0035 and 0045 and claim 9 with the silicone matrix having a refractive index “Rf” of 1.5 or 1.57 and from claim 9 nanoparticles having a Rf of 1.7 the difference in percent in the Rf of the is nanoparticle and the silicone matrix is 1.7- 1.5 or 1.7-1.5/1.5 X 100% = 0.2/1.5 x 100 %=13.3% or 1.7-1.57/1.57 x 100 = 0.13/1.57 X 100% =8.3 for a range from 8.3% to 13.3 %. This range overlaps that of pending Claim 1 of not more than about 10%.
From ¶ 0058 the cured or set coatings or films or shapes prepared from the precursor components includes, sol-gels, gels, glasses, cross-linked polymers, and combinations thereof. From ¶ 0048 the average particle size of the nanoparticles can be between about 0.001 nanometer to about 750 nanometers. Such range overlaps that of pending Claims 20, 66 and 67.
From ¶s 0051-0052 coupling agents are physically and/or chemically incorporated to at least a portion of the nanoparticle. An example of a multi-functional coupling agent includes, for example, reactive groups, such as acrylate, methacrylate, acrylamide, methacrylamide, fumarate, maleate, norbornenyl and styrene functional groups, { the latter two as hydrophobic groups for pending Claim 10} Si-H (silicon hydride), hydroxy, alkoxy, amine, chlorine, epoxide, isocyanate, isothiocyanate, nitrile, vinyl, and thiol functional groups. In one example, the coupling agent comprises an organosilane moiety with one, two or three chemical leaving groups (for example, alkoxyl, (methoxy, ethoxy, etc.) halogen (e.g. chloro, etc.) that can interact and/or covalently bond with polar surface groups of the nanoparticles (for example hydroxyl, amino, thiol, carboxyl, etc.), the remainder of the organosilane moiety having one or more ligand groups being nonreactive or non-interactive with the nanoparticle surface.
In one aspect, the coupling agent comprises one or more chemical functional groups and one or more ligands to promote dispersion of the nanoparticles into polymer matrix and are described herein by way of example using organosilane moieties. The ligands of the organosilane moiety should contain specific chemical groups that are chemically similar to those present in the silicone polymer matrix. For example with methylsiloxane polymers, methyl-based siloxane ligands would work best due to chemical similarity {reading on Claim 11 as derived from methyltri(m)ethoxysilane as homopolymers of this alkyltri(m)ethoxysilane}. Methylphenyl-based siloxanes can contain methylphenyl-based siloxane ligands.
From ¶ 0102 the composite composition can have nanoparticles, alone or in combination with microparticles, that increase the elastic modulus.
However Guschl does not expressly disclose: 1) that the polysiloxane and voids between nanoparticles of a three-dimensional array of nanoparticles, 2) that the composite film is stretchable with less light transmission in a stretched state, 3) that the composite film is stretched where voids are formed between nanoparticles and ligaments form and confine the nanoparticles, and 4) that the Young’s modulus of the nanoparticle and the polysiloxane differ by at least one order of magnitude.
Fudoji is directed as is Guschl to a plurality of nanoparticles coated with a coating material like silicon shell layer with light-transmissive elastomer, like silicone oligomer polymerized to polydimethylsiloxane or PDMS, disclosed in its abstract and claims and ¶ 0035. Also disclosed is that the light transmissive elastomer is filled between the coated nanoparticles as shown in Figs 1-5 and 7(a-c) for an optical material which can vary the peak wavelength of an extinction spectrum due to localized surface plasmon resonance (LSPR) of an aggregate comprising nanoparticles. Fig. 2 shows
PNG
media_image1.png
200
400
media_image1.png
Greyscale
4 as the light transmitting elastomer like polymerized silicone oligomer, coated nanoparticles 1 and 2 arranged in a three dimensional array with the polymerized polysiloxane infiltrated into the spaces or voids between the nanoparticles {reading on polysiloxane film with voids between embedded nanoparticles of a three-dimensional array of nanoparticles for the pending claims}.
Fig. 7(b) shows the method for producing the optical material includes the steps of: preparing a colloidal suspension solution by coating metal or alloy nanoparticles with the coating material and dispersing the resulting nanoparticles in a solvent; forming the aggregate composed of the nanoparticles by applying the colloidal suspension solution onto substrate to form a liquid film layer of the colloidal suspension solution, then volatilizing the solvent in the liquid film layer; and forming the light transmissive elastomer by filling a precursor of the light transmissive elastomer between the nanoparticles and polymerizing the precursor of the light transmissive elastomer {reading on polysiloxane film for a composite film for the pending claims} as shown in Fig. 7(b):
PNG
media_image2.png
200
400
media_image2.png
Greyscale
with 17 as the film of the liquid membrane layer.}
From ¶s 0017-0018 the optical material has an aggregate in which a plurality of nanoparticles of a metal or an alloy coated with a coating material of silicon shell layer are integrated and a light-transmitting elastomer filled between the nanoparticles of the aggregate {reading on polysiloxane with embedded nanoparticles of a three dimensional array.} By reversibly changing the volume or shape of the light-transmissive elastomer to reversibly change the gap distance of each nanoparticle of the aggregate {reading on voids of the pending claims}. The peak wavelength of the extinction spectrum due to the localized surface plasmon resonance (LSPR) of the aggregate is made variable, and the optical material is made of an optical material capable of visually recognizing the variation of the peak wavelength from the outside through the transparent elastomer.
From ¶ 0019, 0042-0043, Fig.4 (a) is a schematic diagram showing a change in shape due to an external stress of an optical material showing s a change in shape due to a pressing stress.
PNG
media_image3.png
200
400
media_image3.png
Greyscale
FIG. 4 b is a schematic view showing a change in shape due to an external stress of an optical material showing a change in shape due to tensile stress.
PNG
media_image4.png
200
400
media_image4.png
Greyscale
As shown in FIG. 4 a, when the pressing stress F1 is applied to the optical material 10, the distance in the applying direction of the pressing stress F1 between the nanoparticles 1 becomes m2 (m 2 0), and the distance in the direction perpendicular to the applying direction of the pressing stress F1 between the nanoparticles 1 becomes m 3 (m 3> m 0). In addition, a distance in the direction of applying the pressing stress F1 between the centers of the nanoparticles 1 is set to l 2 (l 2 0), and a distance perpendicular to the direction of application of the pressing stress F1 between the centers of the nanoparticles 1 is set to l 3 (l 3> l 0). Similarly, as shown in FIG. 4 b, when the tensile stress F2 is applied to the optical material 10, the distance in the direction in which the tensile stress F2 is applied between the nanoparticles 1 is m 4 (m 4> m 0), and the distance in the direction perpendicular to the direction in which the tensile stress F2 is applied between the nanoparticles 1 is m 5 (m 0). In addition, a distance in the direction of applying the tensile stress F2 between the centers of the nanoparticles 1 is defined as l 4 (l 4> l 0), and a distance in the direction perpendicular to the direction of applying the tensile stress F2 between the centers of the nanoparticles 1 is defined as l 5 (l 5 0) {reading the composite film being convertible between an unstretched state and a stretched state giving rise to formation of voids between the embedded nanoparticles of the three dimensional array in that the gap between the nanoparticles of the agglomeration is larger after tensile stress is applied for pending Claim 1 and for a stretched state of pending Claim 65}.
From ¶s 0033-0034 the light transmissive elastomer is filled between the nanoparticles of the aggregate. The light-transmitting elastomer is preferably a material having a high transmittance of light in the visible region, and is preferably 50% or more of the wavelength range of the 360nm-680nm. As a result, it is possible to easily visualize the change in the local surface plasmon resonance (LSPR) absorption / scattering of the integrated body from the outside of the optical material. In other words, it becomes easy to confirm a change in the extinction spectrum due to the plasmon, I. e., a change in color {reading on transmit less of the light for the pending claims}. When there is a region having a light transmittance of less than 50% in the wavelength range of the 360nm-680nm , it may become difficult to visually recognize a change in the local surface plasmon resonance (LSPR) absorption / scattering of the integrated body, that is, a change in color in the wavelength region. The reason why the wavelength range of light to be measured is used as a 360nm-680nm is that the plasmon resonance of typical metallic nanoparticles (gold, silver, etc.) is used.
It is preferable that the elastic modulus of the light transmissive elastomer is 105Pa-107Pa at normal temperature and pressure. Thus, the light-transmitting elastomer can be reversibly made of a material having variable volume and / or variable shape. By reversibly varying the volume and / or shape of the light transmissive elastomer, the gap distance of nanoparticles of the aggregate can be reversibly varied to change the peak wavelength of localized surface plasmon resonance (LSPR) absorption / scattering of the aggregate. In this specification, "normal temperature" means 25 ° C. and normal pressure indicates 1 atm.
In accordance with MPEP § 2144.06 “ “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). Here Guschl describes a nanocomposite composition as curable coating, film, layer or shape film with nanoparticles like silica in a polymer matrix like poly(dimethyl)siloxane for the purpose of transmitting light when at least at 0 percent strain as high as 89.64 +/- 1.68 percent light transmission at 450 nm. Fudoji describes a nanocomposite of a plurality of nanoparticles coated with a coating material like silicon shell layer with light-transmissive elastomer, like polymerized to polydimethylsiloxane or PDMS which by reversibly changing the volume or shape of the light-transmissive elastomer reversibly changes the gap distance {i.e. reading on void of pending claims} of each nanoparticle of the aggregate {i.e. reading on array of pending claims} so that the peak wavelength of the extinction spectrum due to the localized surface plasmon resonance (LSPR) of the aggregate is made variable, and the optical material is made of an optical material capable of visually recognizing the variation of the peak wavelength from the outside through the transparent elastomer for the purpose of a transmittance of light in the visible region, and is preferably 50% or more of the wavelength range of the 360nm-680nm. Given this similarity of purpose the nanoparticles with a silica shell layer and transparent elastomer of PDMS can be combined with the silica particles and poly(dimethyl)siloxane of Guschl.
Given that Young’s modulus is an intrinsic property of a material, Azom evidences silica has a Young’s modulus ranging from 66.3 to 74.8 GPa, while Wang evidences in the abstract that for PDMS samples with varying crosslinking density prepared with the elastomer base to the curing agent ratio ranging from 5:1 to 33:1 the Young’s modulus varied linearly with the amount of crosslinker, ranging from 0.57 MPa to 3.7 MPa. This shows that there is at least one order of magnitude between the Young’s modulus for silica and PDMS for the coating film. It has been held that where claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established and the burden of proof is shifted to Applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC 102 or on prima facie obviousness under 35 USC 103, jointly or alternatively. Therefore, the prime facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112 and analogous burden of proof in MPEP 2113.
One of ordinary skill in the art before the effective filing of the pending patent application would have considered it prima facie obvious as for example at least under rationale G of MPEP § 2141 III and 2143 I G to have from Guschl nanocomposite composition as curable coating, film, layer or shape film with embedded nanoparticles like silica in a polymer matrix like poly(dimethyl)siloxane {i.e. film} for the purpose of transmitting light when at least at 0 percent strain as high as 89.64 +/- 1.68 percent light transmission at 450 nm., as afore-described, where from Fudoji the nanoparticles silicon shell layer in a three dimensional array with PDMS in gaps or voids between the nanoparticles are combined with the silica nanoparticles embedded in PDMS of Guschl given the same purpose of a light transmission of 50 % or more not only at 0 percent strain but also under tensile stress as stretched with a lower transmission in the range of 50% or more with expanded gaps between the nanoparticles as formed voids for 1-3 above with a difference in Young’s Modulus of at least one order of magnitude between cured polysiloxane and nanoparticle motivated to provide an optical material which can vary the peak wavelength of an extinction spectrum due to localized surface plasmon resonance (LSPR) of an aggregate comprising nanoparticles or nanoparticle array as for the composite film of pending Claims 1, 6, 9-11, 19-20, 25, and 65-67. The combination of Fudoji with Guschl has a reasonable expectation of success to one skilled in the art because both have the same components of nanoparticles and polydimethylsiloxane for a light transmissive film up 50% or more.
While Guschl in view of Fudoji do not explicitly disclose the presence of stretched state voids or that ligaments within the polysiloxane confine the nanoparticles as claimed, given that Guschl in view of Fudoji discloses the composite film as claimed including materials as claimed which may be stretched as claimed, the composite film would necessarily have stretched state voids and ligaments as claimed.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Guschl in view of Fudoji evidenced by: Azom); 2) Wang”); and 3) Haga and further in view of Wang
Regarding claim 4, Guschl in view of Fudoji is applied as to Claim 1 where Guschl discloses at ¶s 0023, 0057, and 0071 that the silicone matrix can be a cross-linked polymer and Fudoji discloses at ¶s 0064 that (a silicone oligomer is converted into a poly ( dimethylsiloxane ) : PDMS elastomeric. Thus, a PDMS elastomer can be filled in a gap between the nanoparticles 1 of the aggregate 5 {reading on array}., but does not specify the degree of crosslinking.
Wang discloses in the abstract that polydimethylsiloxane (PDMS) with varying crosslinking density of the elastomer base to the curing agent {crosslinking} ratio ranging from 5:1 to 33:1 varied linearly the PDMS network elastic modulus with the linear variation of the amount of crosslinker {reading on no more than about 20 mol% of crosslinking for pending claim 4 which is a 4:1 ratio so Wang has less crosslink density with a smaller amount of curing agent}. The PDMS network elastic modulus varied linearly with the amount of crosslinker, ranging from 0.57 MPa to 3.7 MPa for the samples tested {an order of magnitude difference from 0.57 to 3.7}. PDMS elastic modulus in MPa can be expressed as 20 MPa/PDMS base to curing agent ratio. From the first page in the left column varying the degree of crosslinking in the polymer network allows tuning its mechanical properties where the lower the degree of PDMS network’s crosslinking, the lower its stiffness, and conversely, where the higher the degree of crosslinking, the stiffer the sample will be.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for example at least under rationale G of MPEP § 2141 III and 2143 I G to adjust the type and amount of crosslinking agent of Guschl modified by Fudoji, as afore-described in Claim 1, in the manner as taught by Wang, because Wang teaches this as part of forming polysiloxanes motivated to obtain a tunable elastic modulus for lower or higher stiffness as for pending Claim 4. The combination of Wang with Guschl as modified would have a reasonable expectation of success for one skilled in the art given the similarity of components of Wang and Guschl of polysiloxane and crosslinking or curing agents.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Guschl in view of Fudoji evidenced by: 1) Azom); 2) Wang); and 3) Haga and further in view of US 2010/0040867 Manca et al. (hereinafter “Manca”).
Regarding claim 12, Guschl in view of Fudoji is applied as to Claim 1, however Guschl as modified does not expressly disclose the composite film has two surfaces with the nanoparticles concentrated closer to one surface.
Manca discloses in the abstract and Figures and ¶s 0016-0017, 0028, Example 3, and Fig. 1 a coating comprising a first resin layer which adheres perfectly to the substrate or lower layer and a second layer superimposed thereto (upper layer) which comprises the hydrophobic microparticles fixed by the addition of said resin, same as the lower layer such as silicon based polymer of polyvinylsiloxane, polydimethylsiloxane, polydiphenylsiloxane, polyphenylmethylsiloxane and polyvinylmethoxysilane (See ¶ 0017) in which at least a part of said microparticles of the upper layer are at least partially incorporated in the lower layer {reading on composite film}. At least a part of the microparticles are at least partially incorporated in the lower layer (¶0016). As shown in Fig. 1 the nanoparticles are incorporated at the surface of the layer {reading on pending Claim 12 as particles concentrated closer to a surface}. The microparticles can have a diameter between 5 nm and 5 microns (¶ 0020). This range is considered to be nanoparticles in the instant application. Thus, given the above description of the dispersion and incorporation of the particles in the resin, this layer comprises a mixture of resin and nanoparticles. Still further, Manca (¶ 0044) teaches the formation of a layer containing both PDMS and functionalized silica. The resin of the layer can be a polysiloxane, such as polydimethylsiloxane (PDMS) (¶s 0016-0017 and 0024-0026). The particles can be silica particles grafted with an organic shell where of the R groups can be a linear or branched halogen-substituted C1-C30 alkyl chain (encompasses fluorinated aliphatic groups) or aliphatic or aromatic groups (¶s 0020-0021). The transmittance of Example 3 (¶s 0043-0045) is shown in Figure 5 and has a transmittance value above 90% for all of the visible spectrum. This example includes hydrophobic functionalized silica in PDMS.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for example at least under rationale G of MPEP § 2141 III and 2143 I G to have the nanoparticles of Guschl modified by Fudoji, as afore-described in Claim 1, in the manner as taught by Manca, because Manca teaches this as part of forming polysiloxanes for transparent coatings containing silica the silica can be incorporated at the surface of the layer so there would be a reasonable expectation of success for one skilled in the art given the similarity of components.
Claims 1, 4, 6, 9, 19-20, 66-67, 69, and 71 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (US 2017/0297058).
Regarding Claim 1, 6, 19-20, 66-67, 69, and 71, Jiang discloses a composite light regulating film (para 0004) comprising particles such as silica and matrix such as polydimethylsiloxane (para 0005). The particles are embedded into the matrix (para 0035) (i.e. three dimensional array). The silica particles have a size of 5-500 nm or 500 nm- 10 microns (0034) (i.e. silica nanoparticles).
The silica has a refractive index of ~1.42 while polydimethylsiloxane has a refractive index of ~1.4 (para 0063) (i.e. there is a difference of about 1.4%).
The silica has a Young’s modulus of ~ 76 GPa while polydimethylsiloxane has a Young’s modulus of about ~ 1MPa (para 0063) (i.e. there is a greater than one order of magnitude difference).
The composite film has a thickness of 10 nm to 10 mm (para 0039).
In light of the overlap between the claimed film thickness and that disclosed by Jiang, it would have been obvious to one of ordinary skill in the art to use a film thickness that is both disclosed by Jiang and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention
Given that the composite film is identical to that presently claimed, it would inherently be convertible between an unstretched state and a stretched state which would inherently give rise to the formation of voids between the nanoparticles and the polydimethylsiloxane. Further, the film would inherently have ligaments within the polysiloxane that confine the nanoparticles as claimed, and would inherently transmit light in the stretched and unstretched state as claimed.
Regarding Claim 4, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang does not disclose that the polydimethylsiloxane is crosslinked (i.e. the polydimethylsiloxane has 0 mol% crosslinking).
Response to Arguments
In light of applicant’s amendments filed 09/09/2025, the 35 USC 112(a) and 112(b) rejections of record are withdrawn.
Applicant's arguments filed 09/09/2025 have been fully considered but they are not persuasive.
Applicant argues that stretched state voids would not necessarily be present in the stretched film. They argue that not every stretched material has voids, giving the example of a metal spring.
However, while it is agreed that not every stretched material has voids, given that the prior art discloses film comprising the materials as claimed, which is stretched as claimed, it would necessarily have stretched state voids as claimed absent evidence to the contrary.
Applicant further cites Par Pharma., 773 F.3d as 1195-96, and argues that there is no disclosure or evidence in Guschl in view of Fudoji that the stretched state voids “necessarily must be present”.
However, the basis for inherency is not based on mere possibility or probability but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed property is not positively stated by the reference. However, the reference teaches all of the claimed components. Therefore, the claimed property would be inherently necessarily be capable of being achieved by the prior art. If it is applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the applicant and the prior art are the same, one would expect the claimed property to necessarily be present (i.e. naturally flow from the prior art), and thus, the burden is properly shifted back to applicant to show that they are not.
Applicant argues that Jiang does not disclose a “three-dimensional array of nanoparticles” as claimed, but only teaches a “particle layer”.
However, given that the present claims only broadly require a “three-dimensional array” and given that there is no definition of a “three-dimensional array” in the present specification, the examiner maintains that the particle layer of Jiang would read on “three-dimensional array”.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY M MILLER/ Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights