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 .
Response to Amendment
Applicant’s amendment filed on 06/10/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 5-10 and 13 are examined on the merits in this office action.
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 13 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 13 recites “wherein the second hard-coat layer has an indentation elastic modulus that is at least 50% higher than the first hard-coat layer”. According to the present specification, the ratio of an indentation elastic modulus of the second hard-coat layer to an indentation elastic modulus of the first hard-coat layer is 1.1 or more (see paragraph 0102). That is, the second hard-coat layer has an indentation elastic modulus of at least 52.4% higher than the first hard-coat layer (52.4 = 1.1/2.1 x 100). Accordingly, while there is support for the second hard-coat layer has an indentation elastic modulus that is at least 52.4% higher than the first hard-coat layer in the present specification, there is no support for the second hard-coat layer has an indentation elastic modulus that is at least 50% higher than the first hard-coat layer.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5-10 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 now requires both that the composition “comprises (a) one or more multifunctional (meth)acrylate diluents selected from…. and (a) the composition comprises from 9 to 70 wt.% of (a) two or more multifunctional multifunctional (meth)acrylate diluents selected from…“ The scope of the claim is confusing given that it is not clear what is required with respect to component (a) – one or more (meth)acrylate diluents or 9-70 wt.% of (two or more meth)acrylate diluents. It is suggested that lines 13-14 of claim 1 be amended to recite “….comprises (a) from 9 to 70 wt.% of (a) two or more multifunctional multifunctional (meth)acrylate diluents selected from…” and lines 24-28, i.e. “wherein the actinic radiation curable acrylic composition comprises from 9 to 70 wt.% in total, based on the total monomer solids, of (a) two or more multifunctional (meth)acrylate diluents selected from the group consisting of an aliphatic trifunctional (meth)acrylate monomer, an aliphatic tetrafunctional (meth)acrylate monomer, and an aliphatic pentafunctional (meth)acrylate monomer, and”, be deleted. This rejection affects all the dependent claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Woody et al. (WO 2018/057774 A1 cited in IDS) in view of Bu et al. (US 2019/0185602 A1 cited in IDS).
Regarding claims 1, 5, 6 and 8, Woody et al. disclose a display film 20 (glass article) comprising a protective layer 15 (corresponding to the claimed top optically transparent polymeric-hard coat layer) directly disposed on a transparent glass layer 12 (see Figure 2 and paragraphs 0027, 0028). The protective layer can be a hard coat layer having a thickness of less than 50 microns (see paragraphs 0068 and 0070). The hard coat layer can be made of cured (meth)acrylic-based composition (see paragraphs 0075, 0076). The transparent glass layer has a thickness of less than 500 microns (see paragraph 0039).
Woody et al. do not disclose curable acrylic composition as presently claimed.
Bu et al. disclose acrylic composition comprising (a) 9 to 70 wt% of aliphatic multifunctional (meth)acrylate such as aliphatic trifunctional (meth)acrylate monomer, aliphatic tetrafunctional (meth)acrylate monomer and aliphatic pentafunctional (meth)acrylate monomer, (b) 3 to 30 wt% of (meth)acrylate monomer containing isocyanurate groups, (c) 5 to 40 wt% of aliphatic urethane (meth)acrylate functional oligomer having 6 to 12 (meth)acrylate groups, 20 wt% or less of di-functional (meth)acrylates, 0.1 to 20 wt% of mercapto modified polyester polyacrylics such as Ebecryl LED 02 (i.e. sulfur containing polyol (meth)acrylate), (d) 2 to 10 wt% based on total monomer solids of UV radical initiator and (e) organic solvent (see Abstract and paragraphs 0010, 0011, 0013, 0026). The amount of organic solvent is 10 to 90 wt% based on the total weight of the composition (see paragraph 0014). The acrylic composition can be cured using ultraviolet (UV), i.e. actinic radiation curable acrylic composition (Abstract). The acrylic composition of Bu et al. is identical to that presently claimed. The acrylic composition produces colorless, transparent hard coatings exhibit hardness, thermoformability and flexibility (see paragraphs 0046, 0048). That is, the actinic radiation curable acrylic composition provides optically-transparent polymeric-hard coat layer.
In light of motivation for using actinic curable acrylic composition disclosed by Bu et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the actinic curable acrylic composition of Bu et al. as the acrylic resin composition in the protective layer of Woody et al. in order to provide hardness, thermoformability and flexibility, and thereby arrive at the claimed invention.
Accordingly, Woody et al. in view of Bu et al. disclose the top optically transparent polymeric hard-coat layer (protective layer) including actinic curable acrylic composition comprising multifunctional (meth)acrylate diluents, (meth)acrylate monomer containing an isocyanurate group, aliphatic urethane (meth)acrylate functional oligomer, radical initiator and organic solvent identical to that presently claimed, with their amounts overlapping with that presently claimed. Therefore, the top optically transparent hard coat layer (protective layer) of Woody et al. in view of Bu et al. is identical to that presently claimed, and within the overlapping ranges, it necessarily inherently has a pencil hardness as presently claimed and is formed of an optically transparent material exhibiting a minimum transmittance of 70% or more in the wavelength range of 400 nm to 700 nm. Further, Woody et al. in view of Bu et al. disclose the glass layer identical to that presently claimed. Accordingly, Woody et al. in view of Bu et al. disclose the glass article including the glass layer and the top optically transparent polymeric hard-coat layer (protective layer) identical to that presently claimed. Therefore, the glass article of Woody et al. in view of Bu et al. is identical to that presently claimed, and within the overlapping ranges, the glass article necessarily inherently would avoid ejection of glass shard particles as presently claimed.
Regarding claims 7 and 9, Woody et al. in view of Bu et al. disclose the glass layer identical to that presently claimed. Accordingly, Woody et al. in view of Bu et al. disclose the glass article including the glass layer and the top optically transparent polymeric hard-coat layer (protective layer) identical to that presently claimed. Therefore, within the overlapping ranges, the glass article of Woody et al. in view of Bu et al. would necessarily inherently have the same pen drop height as claimed and avoid failure during static two-point bend test or dynamic two-point bend test as claimed.
Regarding claim 10, Woody et al. in view of Bu et al. disclose the top optically transparent polymeric hard-coat layer (protective layer) including actinic curable acrylic composition comprising multifunctional (meth)acrylate diluents, (meth)acrylate monomer containing an isocyanurate group, aliphatic urethane (meth)acrylate functional oligomer, radical initiator and organic solvent identical to that presently claimed, with their amounts overlapping with that presently claimed. Therefore, the top optically transparent hard coat layer (protective layer) of Woody et al. in view of Bu et al. is identical to that presently claimed, and within the overlapping ranges, it would necessarily inherently have the same elongation and modulus of elasticity as claimed.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Woody et al. (WO 2018/057774 A1 cited in IDS) in view of Bu et al. (US 2019/0185602 A1 cited in IDS) as applied to claim 1 above, further in view of Washio et al. (US 2017/0056921 A1 cited in IDS).
Regarding claim 13, Woody et al. in view of Bu et al. disclose the glass article as set forth above. While Woody et al. disclose the top optically transparent polymeric hard-coat layer (i.e. claimed second hard coat) directly disposed on the glass layer, Woody et al. in view of Bu et al. do not disclose a multiple hard-coat layer comprising a first hard coat layer as presently claimed.
Washio et al. disclose a two-layer hard coat film comprising a first hard coat as outer hard coat and a second hard coat as inner hard coat on a transparent substrate film (see Abstract). The first hard coat comprises a polyfunctional (meth)acrylate (A) and no inorganic particles (see paragraph 0136) and the second hard coat comprises the polyfunctional (meth)acrylate (A) and inorganic particles (see paragraph 0166). The first hard coat without inorganic particles provides good abrasion resistance (see paragraph 0135). The second hard coat comprising inorganic particles enhances hardness (see paragraph 0137). However, inorganic particles in combination with the polyfunctional (meth)acrylate (A) results in insufficient abrasion resistance (see paragraph 0137). The first hard coat containing no inorganic particles retains abrasion resistance and on other hand the second hard coat containing inorganic particles enhances hardness (see paragraph 0137).
In light of motivation for using a first hard coat containing the polyfunctional (meth)acrylate (A) and no inorganic particles on the second hard coat containing the polyfunctional (meth)acrylate (A) and inorganic particles disclosed by Washio et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a first hard coat comprising the same actinic radiation curable acrylic composition used for the top optically transparent polymeric hard-coat layer (i.e. claimed second hard coat) without any inorganic particles on the top optically transparent polymeric hard-coat layer (i.e. claimed second hard coat) comprising the actinic radiation curable acrylic composition with inorganic particles in Woody et al. in view of Bu et al. in order to have both good abrasion resistance and enhanced hardness, and thereby arrive at the claimed invention.
Further, the second optically transparent polymeric hard coat layer containing inorganic particles has hardness greater than the first optically transparent polymeric hard coat layer not containing inorganic particles given that inorganic particles enhance hardness (see paragraph 0169). Given that the second optically transparent polymeric hard coat layer and the first optically transparent polymeric hard coat layer are identical to that utilized in the present invention (see paragraph 0103 of present specification) and given that the second optically transparent polymeric hard coat layer has hardness greater than the hardness of the first optically transparent polymeric hard coat layer, the second optically transparent polymeric hard coat layer necessarily is stiffer and therefore necessarily inherently has an indentation elastic modulus that is at least 50% higher than the first hard-coat layer. The second optically transparent polymeric hard coat layer and the first optically transparent polymeric hard coat layer together read on a multiple hard-coat layer.
Response to Arguments
Applicant's arguments filed 06/10/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicant respectfully submits that Bu does not teach, disclose or fairly suggest an actinic radiation curable acrylic composition comprising from 2 to 30 wt% sulfur- containing polyol (meth)acrylates, as claimed. Bu generally relates to compositions "for use in making thermoformable hard coats." Bu, Abstract (emphasis added). Applicant respectfully submits that the thermal-formable compositions in Bu do not include the claimed sulfur-containing (meth)acrylates in combination with the other cited features. Instead, the ratios of components with different functionalities are carefully controlled within a specific range to prevent excessive crosslinking during UV curing. If over-crosslinking occurs in the context of Bu, the coating becomes brittle and may crack during the thermal forming process. This completely contrasts with the claimed compositions, where thermal formability is not a requirement. The claimed thiol-containing monomers enable the coating to achieve very high scratch resistance, which facilitates functionality as a component for a cover a display device.
It is not clear why applicant argues that the composition of Bu does not include the claimed sulfur-containing (meth)acrylates in combination with the other cited features. As set forth above, Bu discloses a curable acrylic composition comprising 0.1 to 20 wt% sulfur containing polyol (meth)acrylate such as Ebecryl LED 02 (see paragraphs 0013, 0026). Given that Bu uses sulfur containing polyol (meth)acrylate similar to the present invention, the coating obtained from the curable acrylic composition of Bu would achieve very high scratch resistance. Further, while applicant argues that Bu controls ratios of components to prevent excessive or over-crosslinking, applicant does not point to, and the examiner cannot find, any disclosure in Bu regarding excessive or over-crosslinking.
Further, Bu discloses the curable acrylic composition (components and their amounts) identical to that presently claimed. In addition to thermoformability, the curable acrylic composition of Bu provides hardness and flexibility (see paragraphs 0046, 0048). Therefore, it would have been obvious to one of the ordinary skills in the art to use the curable acrylic composition of Bu as the outermost/protective layer in Woody et al. Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
In light of amendment, 112(b) paragraph rejection is withdrawn.
Conclusion
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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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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/KRUPA SHUKLA/Examiner, Art Unit 1787
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