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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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.
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.
Claims 1-4, 9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over to WO 2018212228 A1 to Shibamoto et al.
It is noted that when utilizing WO 2018212228 A1 in the above paragraph, the disclosures of the reference are based on US 20200079910 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2018212228 A1 are found in US 20200079910 A1.
Re claims 1, 2, 12, 13, and 14, Shibamoto discloses a hard coat film comprising a hard coat layer laminated on a substrate [53] and a surface protection film, i.e. anti-scratch layer, on the hard coat layer [56]. The hard coat film comprises a polyorganosilsesquioxane made from units of formula (1), (I), (II), and (4) where each unit has a polymerizable group [12-19]. The polymerizable group includes a radically polymerizable functional group which includes (meth)acryloxy group, i.e. corresponding to claimed unit (S2), and (meth)acrylamide group, i.e. corresponding to claimed unit (S1) a group containing a hydrogen capable of formula a hydrogen bond or to claimed unit (S2) [73, 84, 85]. Although there is no disclosure of the elastic modulus as presently claimed, given that Shibamoto discloses polyorganosilsesquioxane made from units (S1) and (S2) as presently claimed, it would necessarily inherently have elastic modulus as claimed.
In light of the overlap between the hard coat film presently claimed and the hard coat film disclosed by Shibamoto, it would have been obvious to one of ordinary skill in the art to use a hard coat film that is both disclosed by Shibamoto and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Re claims 3, 4, and 18, Shibamoto discloses that the substrate is polyimide [210]. Given that the substrate is identical to that presently claimed, it would inherently possess the elastic modulus as presently claimed.
Re claim 15, Shibamoto discloses the polyorganosilsesquioxane has number average molecular weight of 2,500-50,000 and molecular weight dispersity of 1-4 [22-23]. Therefore, it is calculated that the weight average molecular weight is 2500-200,000.
Note that overlapping ranges have this application: 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.
Re claim 16, Shibamoto discloses the hard coat layer has a thickness of 1-200 microns [54].
Re claim 17, Shibamoto discloses the thickness of the substrate is 2-250 micron [17].
Re claim 19, Shibamoto discloses the hard coat film is used to make a molded article [11].
Re claim 20, Shibamoto discloses the hard coat film is used in an image display device [0281] and therefore would necessarily function as a surface protection film.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
US 20180361719 to Kikuchi teaches a hard coat [153] where radically polymerizable groups include (meth)acryloyloxy and vinyl, of which (meth)acryloyloxy is generally employed.
Response to Arguments
Applicant's arguments have been fully considered.
Applicant’s arguments have been considered and new grounds of rejection are set forth above. All arguments except for those set forth below are moot in light of the new grounds of rejection.
Applicant argues that Shibamoto fails to disclose or suggest a polyorganosilsesquioxane which contains unit (S1) as claimed.
However, Shibamoto discloses a polyorganosilsesquioxane made from units of formula (1), (I), (II), and (4) where each unit has a polymerizable group [12-19]. The polymerizable group includes a radially polymerizable functional group which includes (meth)acryloxy group, i.e. corresponding to claimed unit (S2), and (meth)acrylamide group, i.e. corresponding to unit (S1) a group containing a hydrogen capable of formula a hydrogen bond [73, 84, 85].
Applicant argues that Shibamoto only discloses “epoxy-based” polyorganosilsesquioxanes that are not subject to radical polymerization.
However, while one embodiment of Shibamoto does disclose epoxy-based polyorganosilsesquioxanes, i.e. the polymerizable group is cationically polymerizable groups, in another embodiment, Shibamoto discloses that the polymerizable group is a radially polymerizable functional group which includes (meth)acryloxy group, i.e. corresponding to claimed unit (S2), and (meth)acrylamide group, i.e. corresponding to unit (S1) or (S2) [71-73].
Applicant argues that the comparative data in the present specification shows that epoxy-based polyorganosilsesquioxanes do not meet the claimed elastic modulus.
However, one would not expect the epoxy-based polyorganosilsesquioxanes to meet the claimed properties given that such polyorganosilsesquioxanes are outside the scope of the present claims. Further, the data is not persuasive in establishing evidence of unexpected results given that the data is not commensurate in scope with the scope of the present claims. Specifically while the data uses specific polyorganosilsesquioxanes having specific (S1) and (S2) units, the claims encompass polyorganosilsesquioxanes with any (S1) unit that has a group containing a hydrogen atom capable of forming a hydrogen bond and any (S2) unit that has a radically polymerizable crosslinkable group.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20200102456 discloses polyorganosilsesquioxane with different constituent groups.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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