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.
Claim 19 is 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 18, line 19, discloses “the mixed layer does not contain inorganic particles”. While there is support in paragraphs 0054 and 0153 of the Specification that the substrate and the anti-scratch layer may comprise inorganic particles, there is no disclosure in the specification regarding the presence or absence of inorganic particles in the mixed layer.
The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
The insertion of the above phraseology as described above positively excludes inorganic particles in the mixed layer , however, there is no support in the present specification for such exclusions. While the present specification is silent with respect to the use of inorganic particles in the mixed layer, is noted that as stated in MPEP 2173.05(i), the “mere absence of a positive recitation is not the basis for an exclusion.”
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 1-2, 4, 8-9, 11-12, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2018/0230316 A1) in view of Kikuchi (US 2019/0292342) and De Keyser at al. (US 5,231,524 A).
Regarding Claims 1-2, 4, 9, and 14-15, Kim discloses a film for display devices such as LDCs (para 0003) comprising a hard coating layer and a low refractive layer (i.e. claimed mixed layer) (Abstract), applied to a substrate (para 0125). The low refractive layer comprises polysilsesquioxane substituted by one or more reactive functional groups such as epoxide groups (para 0056) and a photopolymerizable compound such as monomers or oligomers including two or more (meth)acrylate groups (para 0062) such as pentaerythritol tri(meth)acrylate or trimethylolpropane tri(meth)acrylate (para 0063). The low refractive layer is cured (para 0077).
Kim does not disclose the hard coating layer comprising polyorganosilsesquioxane as claimed, but the hard coating layer of Kim is not limited (para 0110).
Kikuchi discloses a hardcoat containing a polyorganosilsesquioxane and leveling agent applied to a substrate including polyimide (paras 0011-0012). The polyorganosilsesquioxane includes a unit of formula (I) which includes an alicyclic epoxy (paras 0028-0029 and 0033). The hardcoat has high surface hardness and excellent transparency while still providing elastic behavior, workability, and flexibility (para 0022).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kim to incorporate the teachings of Kikuchi to produce the film of Kim using the hardcoat of Kikuchi as the hard coating layer of Kim. Doing so would produce high surface hardness and excellent transparency while still providing elastic behavior, workability, and flexibility.
Kim further discloses that the low refractive layer comprises epoxycyclohexyl POSS (para 0059), which corresponds to the polyorganosilsesquioxane of Kikuchi. Therefore the polyorganosilsesquioxane of the low refractive layer (i.e. mixed layer) and the hardcoat layer may be the same.
Kim in view of Kikuchi does not disclose an anti-scratch layer of the surface of the low refractive layer as claimed.
De Keyser discloses a topcoat comprising multifunctional acrylate such as (Col 1, line 66-Col 2, line 2) such as trimethylol propane triacrylate or pentaerythritol triacrylate (col 2, lines 38-40) (i.e. the same as in the mixed layer), which has a thickness of 1-3 microns (col 4, lines 10-11) and is scratch resistant (Col 5, lines 13-14). De Keyser discloses the top coat may be used as a protective layer for an LCD device, and that the thickness may also prevent crosstalk between components below the top coat (Col 1, lines 12-19).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kim in view of Kikuchi to incorporate the teachings of De Keyser and produce the film further comprising the topcoat of De Keyser. Doing so would provide a protective layer to the final product and would reduce or prevent cross talk between components below the top coat.
Since the top coat has a thickness of 1-3 microns (De Keyser, col 4, lines 10-11), and the low refractive layer may have a thickness of 1 to 200 nm (0.001-0.2 microns) (Kim, para 0126), the total thickness of the low refractive layer (i.e. claimed mixed layer) and top coat (i.e. claimed anti-scratch layer) is 1.001-3.2 microns.
While Kim in view of Kikuchi and De Keyser does not disclose the claimed covalent bonds, given that the film of Kim in view of Kikuchi and De Keyser comprises materials as claimed, including hard coat layer comprising polyorganosilsesquioxane having an alicyclic epoxy group and low refractive layer (i.e. mixed layer) comprising polysilsesquioxane substituted by one or more epoxide groups, the film of Kim in view of Kikuchi and De Keyser would inherently have covalent bonds between the materials as claimed.
Regarding Claim 8, Kim in view of Kikuchi and De Keyser discloses all the limitations of the present invention according to Claim 1 above. Kim further discloses the low refractive layer comprises 10 to 80% photopolymerizable compound (para 0065) and 0.5 to 60% polysilsesquioxane (para 0060). Therefore the content of the photopolymerizable compound (comprising two or more (meth)acrylate groups) is 14 to 99% relative to the total of the photopolymerizable compound and polysilsesquioxane in the low refractive layer (10/(10+60) to 80/(80+0.5)).
Regarding Claims 11 and 12, Kim in view of Kikuchi and De Keyser discloses all the limitations of the present invention according to Claim 1 above. Kim further discloses the film may form a protective film for a display device (para 0019).
Regarding Claim 16, Kim in view of Kikuchi and De Keyser discloses all the limitations of the present invention according to Claim 1 above, including the low refractive layer (i.e. mixed layer) of Kim which comprises the binder resin, comprising monomer or oligomer having two or more (meth)acrylate groups (i.e. compound (b2)), and the epoxide-substituted polysilsesquioxane (i.e. compound (b1)) (para 0010, 0062, 0056), which are cured (para 0077).
Therefore the cured products of the binder resin and polysilsesquioxane would be interlaced in the mixed layer of the film.
Regarding Claim 17, Kim in view of Kikuchi and De Keyser discloses all the limitations of the present invention according to Claim 1 above.
Although Kim in view of Kikuchi and De Keyser does not disclose the mixed layer is formed by an infiltration of the anti-scratch layer into the hard coat layer, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kim in view of Kikuchi and De Keyser meets the requirements of the claimed film, Kim in view of Kikuchi and De Keyser clearly meet the requirements of present claims.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Kikuchi and De Keyser as applied to claim 1 above, and further in view of Goto (US 2016/0186009 A1).
Regarding Claim 10, Kim in view of Kikuchi and De Keyser discloses all the limitations of the present invention according to Claim 1 above. Kim in view of Kikuchi and De Keyser does not disclose the substrate contains an imide-based polymer as claimed, but Kim does not limit the substrate used (0125).
Goto is drawn to films for LCD devices (para 0003), where the film may comprise polysilsesquioxane (para 0073, 0075). Goto discloses it is preferable to use a polyimide as a heat resistant substrate, which makes it possible to heat at a higher temperature in the device fabricating process and increases operation efficiency of the device (para 0036).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kim in view of Kikuchi and De Keyser to incorporate the teachings of Goto to produce the film wherein the substrate comprises polyimide. Doing so would produce a heat resistant substrate, which makes it possible to heat at a higher temperature in the fabricating process of the final product and increases operation efficiency of the final product.
Response to Arguments
In light of applicant’s amendments filed 01/23/2026, the Claim Objections and 35 USC 112(a) Rejection of record are withdrawn.
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the low refractive layer of Kim is an outermost layer having scratch resistance and antifouling properties, and so there would not be motivation to teach in the top coat of De Keyzer. Applicant further argues that the top coat of De Keyzer being scratch resistant is not sufficient motivation to combine, because Kim already has a scratch resistant outermost layer and the top coat would only provide a “redundant advantage”.
However, there is no disclosure in Kim that requires the low refractive layer to be an outermost layer, and nothing that teaches away from additional layers. Kim also discloses its film “can be applied for a manufacturing process of a display device or a polarizing plate without specific limitations” (para 0019).
De Keyzer discloses the top coat is useful for display devices in order to prevent cross talk between the components of the display device (Col 1, lines 12-19). The top coat is also scratch-resistant (Col 5, lines 13-14).
Therefore, the scratch resistance De Keyzer is not a “redundant advantage”. Rather, it would be obvious to add the top coat of De Keyzer to the film of Kim, because it would provide the additional advantage of preventing cross talk between the components of the display device, and the scratch resistance of the top coat of De Keyzer ensures that the scratch resistance of the film of Kim is not reduced.
De Keyzer further discloses the topcoat may be applied to only portions of the substrate (in this case, the film of Kim) (Col 3), leaving room for other elements to be later attached to the other parts of the substrate. Therefore, it would be beneficial for the substrate itself to have good surface properties (i.e. the scratch resistance and antifouling of Kim). This is why the top coat of De Keyzer would be added as an additional layer to Kim, not as a replacement of the low refractive layer.
Applicant argues against the inherency statement in the rejection regarding covalent bonding, arguing that Examiner has presented no evidence that the covalent bonds would “necessarily” 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 properties are not positively stated by the reference. However, the reference teaches all of the claimed components. Therefore, the claimed properties 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 properties 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 “in the present application, a mixed layer is formed through a semi-curing process in which covalent bonds are formed between the materials. The cited prior art fails to disclose or suggest a mixed layer formed through a semi-curing process. As such, the combination of the cited prior art fails to arrive at the present claims.”
However, Examiner maintains that since the layers comprise the same materials as claimed and are in contact with one another, covalent bonds would necessarily form between the layers as claimed, absent evidence to the contrary.
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the criticality of a semi-curing process to form the claimed covalent bonds must be supported by a declaration or affidavit.
Applicant has provided no evidence that shows that the method is critical to achieving the claimed covalent bonds. Further, the semi-curing process is not recited in the claims, and there is no data showing the criticality of this process to achieve any unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fukuda et al. (US 2013/0083273 A1) discloses a surface film for image display device comprising multiple resin layers applied to a substrate (Abstract). A first resin composition is applied to the substrate and semi-cured, then a second resin composition is applied to the semi-cured first resin, then all layers are fully cured together (para 0244). Fukuda discloses that during this process, covalent bonds are formed at an interface between the two resin layers, and adhesion is enhanced (para 0247).
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.
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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.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787