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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-7, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shimano et al. (US 2012/0251778).
Considering Claims 1 and 3: Shimano et al. teaches a functional film comprising a hard coat layer (1) comprising a binder resin and a plurality of inorganic particles (¶0067-70) that are preferably silica (¶0108) and a anti-static layer/functional layer attached to the front surface of the hard coat layer (¶0290), where the anti-static layer is an inorganic layer of electroconductive metals or metal oxides (¶0291). Shimano et al. teaches a skin layer/first region that includes a layer zone (5) having a higher density (at least two times the density) of particles on the front surface of the hard coat layer, and a second zone having a lower density (¶0071-72) and comprising unaggregated particles/a maximum aggregation degree is 30% or less (¶0126). As the density of the inner layer is less than half the density of the skin layer, it would necessarily be less than 50%.
Shimano et al. does not measure the particle density in the same manner as the instant claims, and thus does not teach the claimed “denseness”. However, Shimano et al. teaches that the number of particles per area of the skin layer and the thickness of the skin layer control the hard coating property and film strength of the hard coating layer and teaches a preference for high denseness (at least 3,000 particles per micron squared) (¶0076-77; 0081-85). Shimano et al. does not teach the divide between the first region and second region as occurring at 100 nm. However, Shimano et al. teaches Dm as being the cutoff between the regions (¶0077) and thus recognizes the depth as being a result effective variable. As such, a person having ordinary skill in the art would consider the denseness and depth of the coating layer to be result effective variables, and the motivation to do so would have been, as Shimano et al. suggests, to improve the hardness and film strength of the hard coat layer (¶0076-77; 0081-85), while preventing a loss of adhesion due to a high filling ratio in the body of the hard coat layer (¶0178).
Shimano et al. teaches the density of the particles in the inner layer as being a result effective variable, controlling the hardness and film strength of the film (¶0080-82). It would have been obvious to a person of ordinary skill in the art to have optimized the density of the inner layer through routine experimentation, and the motivation do so would have been, as Shimano et al. suggests, to control the distribution of crosslinking points and to control the hardness and film strength of the film (¶0080-82).
As the skin layer comprises greater than 60% of the inorganic particles, and the inorganic particles are silicon dioxide, the skin layer would comprise greater than 60% silicon and oxygen. As the inner layer comprises less than 60% of the inorganic particles, and the inorganic particles are silicon dioxide, the skin layer would comprise less than 60% silicon and oxygen.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the total light transmittance would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 2: Shimano et al. teaches the inorganic particles as being reactive and present at the interface with the additional layers (Abstract), and thus would closely attached to the additional layers.
Considering Claim 5: Shimano et al. teaches the hard coat as having a thickness of 2 to 30 um (¶0102).
Considering Claim 6: Shimano et al. teaches a transparent substrate (2) opposite the functional layer (¶0067-72).
Considering Claim 7: Shimano et al. teaches attached a polarizer to the substrate side of the film (¶0009).
Considering Claims 15 and 16: Shimano et al. teaches an image display device comprising the film (¶0001).
Claims 8-10, 12-14, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Shimano et al. (US 2012/0251778).
Considering Claims 8 and 10: Shimano et al. teaches a functional film comprising a hard coat layer (1) comprising a binder resin and a plurality of inorganic particles (¶0067-70) that are preferably silica (¶0108) and a anti-static layer/functional layer attached to the front surface of the hard coat layer (¶0290), where the anti-static layer is an inorganic layer of electroconductive metals or metal oxides (¶0291). Shimano et al. teaches a skin layer/first region that includes a layer zone (5) having a higher density (at least two times the density) of particles on the front surface of the hard coat layer, and a second zone having a lower density (¶0071-72) and comprising unaggregated particles/a maximum aggregation degree is 30% or less (¶0126) and teaches the thickness of the skin layer as being up to twice the average particle diameter of the inorganic particles (¶0082). As the density of the inner layer is less than half the density of the skin layer, it would necessarily be less than 50%.
Shimano et al. does not measure the particle density in the same manner as the instant claims, and thus does not teach the claimed “denseness”. However, Shimano et al. teaches that the number of particles per area of the skin layer and the thickness of the skin layer control the hard coating property and film strength of the hard coating layer and teaches a preference for high denseness (at least 3,000 particles per micron squared) (¶0076-77; 0081-85). Shimano et al. does not teach the divide between the first region and second region as occurring at 100 nm. However, Shimano et al. teaches Dm as being the cutoff between the regions (¶0077) and thus recognizes the depth as being a result effective variable. As such, a person having ordinary skill in the art would consider the denseness and depth of the coating layer to be result effective variables, and the motivation to do so would have been, as Shimano et al. suggests, to improve the hardness and film strength of the hard coat layer (¶0076-77; 0081-85), while preventing a loss of adhesion due to a high filling ratio in the body of the hard coat layer (¶0178).
Shimano et al. teaches the density of the particles in the inner layer as being a result effective variable, controlling the hardness and film strength of the film (¶0080-82). It would have been obvious to a person of ordinary skill in the art to have optimized the density of the inner layer through routine experimentation, and the motivation do so would have been, as Shimano et al. suggests, to control the distribution of crosslinking points and to control the hardness and film strength of the film (¶0080-82).
As the skin layer comprises greater than 60% of the inorganic particles, and the inorganic particles are silicon dioxide, the skin layer would comprise greater than 60% silicon and oxygen. As the inner layer comprises less than 60% of the inorganic particles, and the inorganic particles are silicon dioxide, the skin layer would comprise less than 60% silicon and oxygen.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the total light transmittance would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Shimano et al. teaches the inorganic particles as preferably being silica (¶0108). Given the denseness discussed above, the composition of Shimano et al. would have the claimed sum of the silicon and oxygen atoms, as these are provide by the inorganic particles.
Considering Claim 12: Shimano et al. teaches the hard coat as having a thickness of 2 to 30 um (¶0102).
Considering Claim 13: Shimano et al. teaches a transparent substrate (2) opposite the functional layer (¶0067-72).
Considering Claim 14: Shimano et al. teaches attached a polarizer to the substrate side of the film (¶0009).
Considering Claims 17 and 18: Shimano et al. teaches an image display device comprising the film (¶0001).
Response to Arguments
Applicant's arguments filed October 23, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Shimano teaches a limited narrow region on the air interface side of the hard coat layer is not persuasive. Shimano teaches a preferred range of up to twice the particle size for the skin layer (¶0082). However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP § 2123.
Shimano et al. does not measure the particle density in the same manner as the instant claims, and thus does not teach the claimed “denseness”. However, Shimano et al. teaches that the number of particles per area of the skin layer and the thickness of the skin layer control the hard coating property and film strength of the hard coating layer and teaches a preference for high denseness (at least 3,000 particles per micron squared) (¶0076-77; 0081-85). Shimano et al. does not teach the divide between the first region and second region as occurring at 100 nm. However, Shimano et al. teaches Dm as being the cutoff between the regions (¶0077) and thus recognizes the depth as being a result effective variable. As such, a person having ordinary skill in the art would consider the denseness and depth of the coating layer to be result effective variables, and the motivation to do so would have been, as Shimano et al. suggests, to improve the hardness and film strength of the hard coat layer (¶0076-77; 0081-85), while preventing a loss of adhesion due to a high filling ratio in the body of the hard coat layer (¶0178).
B) The applicant’s argument that Shimano does not teach the claimed density within the core region is not persuasive. Shimano et al. teaches the density of the particles in the inner layer as being a result effective variable, controlling the hardness and film strength of the film (¶0080-82). It would have been obvious to a person of ordinary skill in the art to have optimized the density of the inner layer through routine experimentation, and the motivation do so would have been, as Shimano et al. suggests, to control the distribution of crosslinking points and to control the hardness and film strength of the film (¶0080-82).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767