DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 5, 10, 14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 1-8, and 10-16 of copending Application No 16/964715 (‘715).
Claims 1-8, and 10-17of copending Application No. 17/059783 (‘783).
Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims differ only in the recitation of properties evident in the same.
The claims are indistinct as follows:
US Application No. 17270191 (‘191) US Application No. ‘715 / ‘783
Claim 1 peaks Claim 1 peaks / Claim 1 peaks
Claim 2 RH Claim 2 peaks/ Claim 2 peaks
Claims 3, 6 same Claims 3 and 9-10 same/ Claims 3 and 9-10 same
Claim 4 same Claim 4 same / Claim 4 same
Claim 7 Claim 5-7/ Claims 5-7
Claim 15 same Claim 11 same/ Claim 11 same
Claim 9 same Claim 12 same/Claim 12
Claims 11 same Claims 13-14 same/ Claim 13-14
Claims 14-16 same Claims 15-16 same /Claims 15-16 same
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pursuant to 37 CFR 1.78(f) or pre-AIA 37 CFR 1.78(b), when two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 5, 10, 14, and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yasahiro et al. (JP 2006/063147) in view of US 20070134459 A1, Hubert et al., in view of Shin et al. (US 20160062012) as evidenced by Journal of Polymer Science, https://onlinelibrary.wiley.com/doi/epdf/10.1002/pol.1958.1203112326 , in view of Takamiya (US 2012/0229423), in view US 20060052565 A1 (Yoshioka et al.) in view of US 20180194912 A1 (Kim et al.) and further in view of US 20190004214 A1 (Kim ‘219).
Re claims 1-5, 10, 14, and 16, Yasahiro et al. disclose anti-reflection film comprising base material 12, hard coat layer 14, and low refractive index layer 18 (0001, 0123 as in part per claim 1). The base material 12 includes polyester (0132). The hard coat layer comprises binder such as acrylic resin (i.e. photocurable resin) and inorganic particles (0130, 0146 as per claims 3 and 6). Yasahiro et al. disclose a composition for forming the low refractive index layer which comprises a ethylenically unsaturated group-containing fluoropolymer A that is crosslinked, a compound having a cage-like silsesquioxane skeleton B, i.e. polysilsesquioxane, and silica particles D (0011, 0015 as per claims 3, and 6). The fluoropolymer is made from a fluorine-containing compound with a reactive functional group (e.g., a radically polymerizable methacrylic group) which is photopolymerizable (0016-0018). The fluorine compound may be more specifically a compound including a polyether group (e.g., polyethylene oxide) as well as a fluorinated hydrocarbon group with one of the hydrogens of the hydrocarbon being substituted with fluorine as well as the above mentioned radically polymerizable methacrylic group (0016-0018, 0021, 0025, 0050). By including a methacrylic radically polymerizable group, a fluorine atom (substituted for a hydrogen atom), as well as a polyether group, the fluorinated compound is a polyether compound in which at least one photoreactive functional group (the methacrylic group) is substituted and at least on hydrogen is substituted with fluorine (as per claims 4 and 6). The polysilsesquioxane can include a functional group including epoxy, (meth)acrylate, and vinyl groups (0060-0063 as per claim 7 having the molecular weight claimed). The silica particles are hollow and have average particle diameter of 1-30 nm or 40-100 nm (0015, 0074 as per claim 3 and 6, fine). Yasahiro et al. discloses that is it known to provide an antireflection film on a polarizing plate of a display (0002 as per claims 12-16).
Further re claim 1, There is no disclosure in Yashiro to teach the binder resin hard coating composition.
Hubert, [50] hardcoat layers and discloses the dipentaerythritol hexaacrylate (0115), pentaerythritol triacrylate (0115), and urethane acrylate oligomer, i.e. corresponding to both the claimed urethane acrylate and urethane acrylate polymer, which is a reaction production of toluene diisocyanate and pentaerythritol triacrylate (0116). Hubert meets the “consisting of” language since the abrasion resistant layer includes monomers (i.e. the dipentaerythritol hexaacrylate and pentaerythritol triacrylate) and oligomer (urethane acrylate) which would correspond to the claimed binder resin and therefore does not require any components outside the “consisting of” language. The benefit is for improved optical films with effective abrasion resistant layers.[114], Hubert.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the hard coating to that disclosed by Hubert as interpreted above for improved optical films with effective abrasion resistant layers.
There is no disclosure in Yasahiro et al. of (a) of low moisture permeable polymer film as claimed, (b) specific hard coating layer construction as claimed, and (c) properties as claimed.
With respect to difference (a), Yasahiro et al. discloses base material that includes includes polyester. Shin et al. discloses a polyester film used on a polarizer where the polyester is polyethylene terephthalate (abstract, 0036 as per claim 9). The polyester film has a tensile strength ratio of 3 or greater (Abstract) where the tensile strength in one direction is larger than in another perpendicular direction (abstract, 0022). The polyester has a Rth retardation of 15000 or less at 550 nm (0030). The polyester film has high elongation, high retardation, and prevents or reduces deterioration in image quality (0029). Given that the film is identical to that used in the present invention, it would necessarily function as a low moisture permeable polymer film.
Therefore, it would have been obvious to one of ordinary skill in the art to use the polyethylene terephthalate film of Shin et al. as the polyester base material in Yasahiro et al. in order to produce a base material that has high elongation, high retardation, and prevents or reduces deterioration in image quality and thereby arrive at the claimed invention.
With respect to difference (b), Yoshioka discloses an antireflection film having [17, 56, 67, 72, 74], one surface of a single hard coating layer in contact with a [74] low moisture permeable polymer film, [67] low refractive index, and good adhesion (page 3, lines 96-113 as per claim 7 inherent property absent evidence to contrary) and where the binder resin of said layer has overlapping range [18, 39, 57] of number average molecular weight of 10,000 to 80,000 of acryl-based or styrene based polymer as claimed for exhibiting excellent light transmission and haze and essential transparency.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the hard coating sandwiched by low moisture permeable layer and low reflective layer of Yoshioka to have used, added, or substituted the construction in the hard coat of Yasahiro et al. in order to produce hard coat for exhibiting excellent transparency and to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 1-2, and 14: With respect to difference (c), given that Yasahiro et al. in view of Shin et al. disclose anti-reflection film as presently claimed including low moisture permeable polymer film with tensile strength ratio and thickness direction retardation identical to that claimed, it is clear that the anti-reflection film would necessarily inherently possess the same first peak, second peak, ratio of the intensity of the first peak to the second peak, diffraction pattern XRD, average reflectance, average reflectance deviation, and light transmittance deviation as claimed (as per claims 1-2, and 14-15). Further thickness (per claim 14) of the laminate is within the skilled artisan to have modified it would have been obvious to one of ordinary skill in the art to optimize and use polarizer, hard coating and anti-reflective layers with thickness, including that presently claimed, in order to produce polarizer, hard coating and anti-reflective layers with effective functionality.
Further re claim 1, Yoshida discloses that it is known to provide an antireflection film on a polarizer but is silent to a second hard coating layer on the side of the polarizer opposite to antireflection layer.
Takamiya discloses a second hard coating layer 41 on the outside of the polarizing plate 131 (0119, 0161, Fig 8). The second hard coating layer has a thickness of 1-20 microns (0122). The second hard coat layer would prevent glare and Newton ring formation (0012, 0120).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have added a second hard coating/polarizer to Yoshida’s polarizer/antireflection film as an outer coating for preventing glare.
Further Re claim 1, The combination does not disclose the organic and inorganic particles dispersed in a photocurable resin binder (note above inorganic and acrylic resins are disclosed as set forth above).
Kim teaches inorganic particles dispersed in a binder [111-114] such as methacrylate, photopolymerizeable crosslinked polysilsesquioxane and fluorine compounds [37-44] as claimed in low refractive index layer [48-56] for scratch resistance and transparency where all others such as silicones are optional materials in one example and in [108-111] only those exact claimed materials are included for a hard coating layer where 10,000 or more molecular weight overlaps applicant’s range up to 80,000.
Therefore, it would have been obvious to one of ordinary skill in the art to use only the photocurable resin binder with organic and inorganic particles mixed and thus dispersed in the acrylic binder of Kim in the low reflective layer and hard coat of the combination for antiglare properties and exclude others not claimed as they are optional, and aid in minimizing raw material costs.
Yashiro fails to disclose a biaxially drawn PET film with the recited ratio.
Shin discloses a biaxially drawn PET film wherein a ratio of transverse direction: machine direction tensile strength of greater than 3 [0007, 0017-0018, 0053] which overlaps the claimed range for the benefit of moisture permeability improvement, the same reason as applicant is concerned [0036, 0039]. See further the orientation degrees [007, 0017], Shin in both MD and TD. Shin also teaches evidence of biaxially drawn PET film in: [0029-0033], esp. [30 and 33]. In addition, in some embodiments, the polyester film 120 may have a degree of biaxiality (NZ) at a wavelength of 550 nm of about 1.8 or lower. See evidence of the PET of Shin is indeed biaxially drawn in the Journal of Polymer Science excerpt, at least pg. 511 under Synopsis heading teaching:
[a] biaxial orientation in which the plane of the molecules tends to be parallel to the plane of the film can be detected in the x-ray diffraction patterns and from the birefringence measurements. (emphasis added).
Thus, because the PET film has a degree of biaxialilty (NZ) at the wavelength recited, this degree of biaxiality is a birefringence measurement and evidence that the film is biaxially oriented.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05. It would have been obvious to one of ordinary skill in the art to substitute, add or use the biaxially oriented PET film of Shin with the overlapping tensile of 3 for the benefit of being able to produce polyethylene terephthalate with moisture permeability improvement.
Further re claim 1, the combination doesn’t teach the molecular weights as claimed.
Kim ‘219 teaches [19, 41-49, 65-71] binder layer. Kim ‘219 [60-61] teaches overlapping ranges of molecular weight a mixture of two or more thereof, or a urethane-modified acrylate oligomer and [132-133] number average molecular weight, it would have been obvious to choose both urethane and acrylic based polymers in the list for the copolymer over 13,000.
In the case where the claimed ranges “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). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of claimed molecular weights for improving film consistency and the binder for alkali resistance as taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Response to Arguments
Applicant’s arguments have been considered but are not convincing for the following reasons.
Regarding the properties not explicitly taught (i.e. interval peaks XRD) See MPEP 2141.02:
V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY
"In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
Regarding the Double Patenting, it still stands for reasons set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 9250371 B2 has in Fig. 6 an antireflective film 65, encapsulation substrate 50 may include glass, a metal or a polymer, and may cover or seal the lower electrode 20, an organic emission layer 30 and an upper electrode 40 to effectively prevent moisture and/or oxygen from flowing therein.
US 20200241173 A1 (16/756,333) - dissimilar material and lacks properties.
US 20200348450 A1 (16964715) – similar see ODP above.
US 20210223438 A1 (16967465) – same PET material, inorganic particles nanometer range and light transmittance in [47].
US 20210309863 A1 (17270191) -similar see ODP above.
US 20210206935 A1 (17059783) – Instant application.
US 20190004214 A1 (16064039) - lacks the low moisture permeable polymer film and properties.
US 20160077239 A1 – teaches most all but properties, lacks material and inherency.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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