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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/02/2026 has been entered.
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 both the first hard-coat layer and the second-hard coat layer are derived from the actinic radiation curable acrylic composition”. While there is support in the specification as originally filed to recite that “the first hard-coat layer can be obtained from polymerizing and curing the actinic radiation curable acrylic composition of the present disclosure without addition of the nanoparticles” and “the second-hard coat layer can be obtained from polymerizing and curing the actinic radiation curable acrylic composition of the present disclosure with addition of the nanoparticles”, there is no support to broadly recite that both the first hard-coat layer and the second-hard coat layer “are derived from the actinic radiation curable acrylic composition”.
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.
Claim 13 is 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 13 recites “wherein both the first hard-coat layer and the second-hard coat layer are derived from the actinic radiation curable acrylic composition”. The scope of the claim is confusing given that it is not clear what is meant by “derived from”. Does this mean that the first hard-coat layer and the second-hard coat layer must include all the components of the claimed actinic radiation curable acrylic composition or since it is “derived from” the actinic radiation curable acrylic composition, can it include less than the claimed components or more than the claimed components?
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 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Woody et al. (WO 2018/057774 A1) in view of Bu et al. (US 2019/0185602 A1 cited in IDS).
Regarding claims 1, 3-6 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 is the outermost layer of the display film (see Figure 2). That is, a top surface of the protective layer is a topmost exterior surface of the display film. 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) 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).
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 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 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 has an indentation elastic modulus higher than the first optically transparent polymeric 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 03/02/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All argument except as set forth below are moot in light of new grounds of rejections.
In light of amendment, 112(b) paragraph rejection is withdrawn.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kang et al. (US 2015/0203711 A1) disclose a hard coating film comprising a first hard coating layer having a first elastic modulus and a second hard coating layer being directly in contact with the first hard coating layer and having a second elastic modulus, wherein a difference between the first and second elastic moduli is 500 MPa or more (see paragraph 0013). A substrate can be laminated on the first or second hard coating layer (see paragraph 0020). The hard coating film is used in display devices (see paragraph 0021).
Conclusion
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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/KRUPA SHUKLA/Examiner, Art Unit 1787