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 .
Response to Arguments
In view of the amendments filed on 4/14/2025, all rejections presented in the office action mailed 1/15/2025 have been withdrawn and new rejections presented below.
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.
New Rejections - 35 USC § 103
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable Takeda et al. (US 2018/0335659 A1, published 8/22/2018), in view of over Mitsuhashi et al. (US2015/0118502 A1, published 4/30/2015).
Regarding claim 1, Takeda teaches a transparent substrate with an antifouling film [0002]. Takeda further teaches that the configuration of the transparent substrate with an antifouling film is not limited so long as the transparent substrate and the antifouling film provided as the outermost layer on one main surface of the transparent substrate, and various embodiments may comprise additional functional layers in order to attain additional characteristics [0025]. The Accordingly, Takeda teaches a transparent substrate with an antifouling film further comprising an antiglare layer between the transparent substrate and the antifouling film [claims 1 and 3]. This reads on the instantly claimed “antiglare layer disposed between the transparent substrate and antifouling layer.”
The antifouling film of Takeda preferably has a mean width Rsm of the elements of 10 to 18 µm [0034] and an arithmetic mean roughness Ra of 0.01 µm or more [0007], wherein the Ra is preferably less than 0.1 µm [0027]. Values within these ranges satisfy the limitations of instantly claimed formula (I), for example, if Rsm = 10 and Ra = 0.01, then 10 ≥ 0.01 x 100 + 5. Takeda further teaches that the Rsm and Ra values of the antifouling film are not determined by the antifouling film itself, but rather determined by the surface shape of the antifouling film side of the member located more on the transparent substrate side [0046]. Thus, it is possible to adjust the Rsm and Ra values by, for example, disposing an antiglare layer between the antifouling layer and the transparent substrate, and adjusting the shape of the antifouling film-side main surface of the antiglare layer [0046]. Takeda teaches that adjusting the Ra value to be preferably less than 0.1 µm will minimize haziness [0027], and that a Rsm value between 10 and 18 µm will optimize antiglare properties [0034]. 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). Furthermore, a skilled artisan would be motivated to adjust the parameters of the antifouling layer to impart advantageous properties as taught by Takeda.
Takeda does not explicitly teach an antifouling layer comprising a divalent group divalent group represented by the formula -(OCF2)v(OCF2CF2)w-, where v and w are each independently an integer of at least 1. Mitsuhashi teaches “a surface-treating layer” “formed on the surface of the base material” [0130, Example 2] with the following formula below, wherein p = 40 and q = 40.
PNG
media_image1.png
81
414
media_image1.png
Greyscale
Examiner has labeled the divalent group which meets the instant limitations. Mitsuhashi’s composition layer has “water-repellency, oil-repellency, antifouling repellency and high friction durability” [Abstract]. It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Mitsuhashi with that of Takeda to arrive at the instantly claimed invention. It would be prima facie obvious to substitute the surface-treating layer of Mitsuhashi taught to have antifouling properties for the antifouling film in Takeda as they are functional equivalents known for the same purpose.
Regarding claim 2, Takeda teaches that the skewness Rsk of the antifouling film is preferably -1.5 to 1.5 [0032]. 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).
Regarding claim 3, it is noted that the instant invention is directed to a product. "[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." MPEP 2113 I. Thus, the instantly claimed method of measuring fluorine content surplus of the antifouling layer need not be met by Mitsuhashi.
Regarding the limitation, “wherein the fluorine content surplus of the antifouling layer calculated by the following method is from 10 to 150”, Mitsuhashi is silent as to the fluorine content surplus. However, "[p]roducts 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. MPEP 2112.01 II. The composition of Mitsuhashi composition meets all of the instantly claimed structural/chemical limitations, thus, absent evidence to the contrary, would also have a fluorine content surplus of from 10 to 150.
Regarding claim 4, as discussed above, Mitsuhashi teaches “wherein, p is 40, and q is 40” [0131], which results in a ratio of 1. This is within the instantly claimed range of 0.1 to 10 and is prima facie obvious.
Regarding claim 5, as discussed above, Takeda teaches an arithmetic mean roughness Ra of 0.01 µm or more [0007].
Regarding claim 6, Takeda teaches that the haze of the transparent substrate with antifouling film is preferably 0.1 to 15% [0038].
Regarding claim 7, Takeda teaches that the 60° specular gloss measured on the surface of the antifouling layer is preferably 140% or less [0038].
Regarding claim 8, Takeda teaches that the antiglare index value on the surface of the is preferably greater than 0.1 [0040].
Regarding claim 9, Takeda teaches that the substrate may comprise of glass [0035].
Regarding claim 10, Mitsuhashi teaches a reactive silyl group which is evidenced by the structure provided in the rejection of claim 1 above (right bottom sily portion).
Regarding claims 11-12, Takeda teaches that the transparent substrate with antifouling film may be used in vehicles, for example, in liquid crystal display devices with touch panel function [0003]. Under BRI, an instrument panel as instantly claimed may be interpreted as any panel used to achieve an action, thus a touch screen display device used to input commands in a vehicle would meet the instant limitations.
Conclusion
No claims are allowed.
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 AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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, Brian-Yong Kwon can be reached at 571-272-0581. 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.
/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
Prosecution Insights