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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/2/25 has been entered.
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.
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 1-8 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al. (WO 2017/135359, “Miyake,” for which English language equivalent US 2018/0346729 will be used as the citation copy) in view of Takegami et al. (JP 2015-134843, a machine translation of which has been provided, “Takegami”) in view of Auman et al. (US 2011/012379, “Auman”).
Regarding claims 1, 7, 8, and 16, Miyake teaches an optical filter and an imaging apparatus using the optical filter ([0008] – [0013]) comprising a dye ([0008] – [0015], [0113], [0143] and see dye of Chemical Formula 3, reproduced below and Chemical Formula 5) and a resin ([0147], [0143], may be, e.g., a polyimide). Miyake additionally teaches that the average transmittance in a range of from 430 to 500 nm is at or greater than 85% (see [0065], [0066], Fig. 4A, 4I).
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Miyake teaches that the resin should have a high glass transition temperature and may be, for example, a polyimide ([0148]), but fails to specifically teach the glass transition temperature of the resin. In the same field of endeavor of optical films for use in display devices or the like (e.g., p. 1, p. 7), Takegami teaches that high temperature polyimide composition (p. 1, pp. 5-7) are suitable for use as transparent resin display device layers (see p. 1, p. 7) in that they provide good transparency, flexibility, heat resistance, and low coefficient of linear expansion (p. 7). It therefore would have been obvious to have substituted the polyimide of Takegami for that of Miyake for its good transparency, flexibility, heat resistance, and low coefficient of linear expansion (p. 7). Additionally, the simple substitution of a known element or compound for another that would provide predictable results (in this case, functioning effectively as a resin in an optical film, see, e.g., Takegami, p. 7) would have been obvious to the person of ordinary skill in the art at the time of filing (please see MPEP 2143). While modified Miyake fails to specifically teach that the glass transition temperature is greater than 390C for the resin component, Auman teaches that polyimides having a Tg of greater than 390C or even 400C help to maintain mechanical properties at high temperatures and thus it would have been obvious to the person of ordinary skill in the art at the time of filing to have maintained a high Tg polyimide as described by Auman for the benefit of improving the mechanical properties at high temperatures (Auman, [0045]).
Regarding claims 2 and 3, because the squarylium dye taught by Miyake is substantially the same as the one described by the present specification as having the claimed properties (see, e.g., [0118], compounds A1-1 or A11, having the same structure as those described in claim 4 and the present specification at [0037]), the squarylium dye would be expected to possess the claimed transmittance properties under the claimed testing conditions. Additionally, see Figs. 2A-2D, showing high transmittances in the 400 to 500 nm range, high absorptions at from 650 to 750 nm, tight bands between 80% transmittance and 20% transmittance, and a 20% transmittance between 650 and 750 nm (Miyake, Figs. 2A-2D).
Regarding claim 4, Miyake additionally teaches a squarylium dye may be a compound reading on the claimed compound represented by the described Formula II (see, e.g., [0118], compounds A1-1 or A11, having the same structure as those described in claim 4 for at least Formula II).
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Regarding claims 5 and 6, Miyake additionally teaches the inclusion of an underlying glass substrate layer ([0167], [0059], Fig. 1C).
Regarding claim 12, Miyake additionally teaches the inclusion of a reflection layer (Fig. 3, [0064]), and that the reflection layer may have 20% and 50% transmittances in the range of from 680 to 800 nm and 700 to 820 nm, respectively (see Fig.3). Miyake additionally teaches that the difference between the transmittance at 50% at 30 degrees and 0 degrees incidence is on the order of greater than 11 nm (see Fig. 3, wherein the difference is approximately equal to 10% of the difference between 550 and 750 nm, and thus on the range of approximately 20 nm). Miyake additionally teaches that that the transmittance of light between 420 nm and 695 nm (and thus between the range of from 435 to 500 nm and from 650 to 660 nm) is greater than 90% ([0159]). Miyake additionally teaches that the transmittance of light from around 750 nm to 1100 nm is 1% or less (see [0160] and Fig. 3). The Examiner notes that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 13, Miyake additionally teaches that the 50% transmittance for the optical filter between 600 and 800 nm is in the range of from 640 to 760 nm (see e.g., Figs. 4, 4A, being approximately 650 nm), that the 20% transmittance for the optical filter between 600 and 800 nm is in the range of from 660 to 780 nm (see e.g., Figs. 4, 4A, being approximately 700 nm), and that the 50% transmittance for the optical filter between 380 and 440 nm is in the range of from 390 to 440 nm (see e.g., Figs. 4, 4A, being approximately 400 nm). Miyake additionally teaches that the average transmittance in a range of from 430 to 500 nm is at or greater than 85% (see [0066], Fig. 4A, 4I), the transmission of light in the range of from 600 to 700 is greater than 25% ([0068], and thus may be greater than 60%, see also Figs. 4), and that an average transmittance from 710 to 1100 is less than 2% ([0070], Figs, 4 and see generally [0065] – [0080]). The Examiner notes that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 14, Miyake additionally teaches that the difference between the 50% wavelength range at 30 degrees and 0 degrees of incidence in the infrared portion of the spectrum may be less than 11 nm (please see Fig. 4A, wherein at 50% transmittance the 0 and 30 degree lines are overlapping).
Regarding claim 15, Miyake fails to specifically teach that that the difference between the 50% wavelength range at 30 degrees and 0 degrees of incidence in the UV portion of the spectrum may be less than 3 nm, but does show that the differences should be narrow (please see Figs. 4A-4I, wherein at 50% transmittance the 0 and 30 degree lines are nearly overlapping). It therefore would have been obvious to have adjusted the transmittances at these angles of incidence so that they were to effectively overlap. The Examiner notes that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake in view of Takegami in view of Auman, as applied to claim 1, above, and further in view of Konishi et al. (US 2015/0146057, “Konishi”).
Regarding claim 9, Miyake fails to specifically teach the inclusion of a silane coupling agent, however, such agents are well known in the art. For example, in the same field of endeavor of optical filters (e.g. [0003] – [0005]), Konishi teaches that the inclusion of a silane coupling agent on a surface of a substrate may help to increase adhesion of an attached layer ([0061]) and that it should be included in an amount of 15% or less by mass ([0128]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have included a silane coupling agent in an amount of 15% or less by mass in order to increase the adhesion between a substrate or base layer and an attached layer ([0061])
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake in view of Takegami in view of Auman, as applied to claim 1, above, and further in view of Kakinuma et al. (US 2016/0304701, “Kakinuma”).
Regarding claim 10, while Miyake teaches that it is permissible to include additional dyes or absorbing compounds ([0142]), Miyake is silent as to the inclusion of a specific compound having a maximum absorption wavelength in the 350 to 450 nm range. However, in the same field of endeavor of dyes or wavelength absorbing compounds ([0002] – [0004]), Kakinuma teaches that it is known to include a UV absorbing compound that has a maximum absorption on the range of about 420 nm ([0019] – [0023]) in order to help suppress transmission of blue light in polymeric components ([0022], [0023], [0019]). It therefore would have been obvious to have included such a compound as described by Kakinuma in the resin of Miyake in order to help suppress transmission of blue light in polymeric components (Kakinuma, [0022], [0023], [0019]). It should be noted that claim 10 includes product-by-process limitations (i.e., the process of measuring the spectral transmittance). "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake in view of Takegami in view of Auman, as applied to claim 1, above, and further in view of Sasaki et al. (US 2017/0227690, “Sasaki”).
Regarding claim 11, while Miyake teaches that it is permissible to include additional dyes or absorbing compounds ([0142]), Miyake is silent as to the inclusion of a specific compound having a maximum absorption wavelength in the 800 to 1200 nm range. In the same field of endeavor of light blocking films ([0008]), Kawashima teaches that it is known to include a near-infrared absorbing compound that has a maximum absorption on the range of 700 to 1000 nm ([0130]) in order to provide good infrared light shielding properties to a film having high heat resistance ([0008] – [0010], [0130]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have included the near-infrared light absorbing compound described by Kawashima in order to provide good infrared light shielding properties to a film having high heat resistance ([0008] – [0010], [0130]). It should be noted that claim 11 includes product-by-process limitations (i.e., the process of measuring the spectral transmittance). "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake in view of Takegami in view of Auman, as applied to claim 1, above, and further in view of Shiono et al. (US 2017/0343710, “Shiono”).
Regarding claims 17 and 18, Miyake fails to specifically teach the squarylium dye has a structure reading on formula (I-11), however in the same field of endeavor of dyes for use in optical filters ([0003]), Shiono teaches the inclusion of such a squarylium dye (see formula D2-11, [0091], [0107]) and that such a dye has excellent heat resistance and weather resistance while maintaining good optical properties ([0087], and see [0086] – [0091], [0107]). Additionally Shiono teaches that the group corresponding to R29 may be an alkyl group ([0091], R24 group being -C(=O)-R29 wherein R29 may be an alkyl group having 1 to 20 carbon atoms). It therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have substituted the squarylium dye of Shiono for that of Miyake for the benefit of its excellent heat resistance and weather resistance while maintaining good optical properties ([0087], and see [0086] – [0091], [0107]). Additionally, the simple substitution of one known element or compound for another that would have provided predictable results (i.e., predictable absorption properties) would have been obvious to the person of ordinary skill in the art at the time of filing (please see MPEP 2143).
Response to Arguments
Applicant's arguments filed 12/2/25 have been fully considered but they are not persuasive.
Applicant argues that while Auman teaches to use a resin having a high Tg Auman is not directed to resins having optical properties. But Miyake teaches that the transparent resin is not particularly limited and should have a high Tg and may include, among other examples, polyimide ([0147], [0148]). Therefore, while the ordinarily skilled artisan may not have looked to Auman for a teaching regarding the optical properties of a resin he or she would have looked to it for teachings regarding useful glass transition temperature properties of, for example, a polyimide resin (see Auman, [0045]; Miayke [0147], [0148]). Therefore, the Examiner maintains that the ordinarily skilled artisan would have sought to have adjusted the glass transition temperature of the polyimide of Miyake to a suitably high temperature, including higher than 390C help to maintain mechanical properties at high temperatures based on the teachings of both Miyake (desiring high Tg resins, [0147], [0148]) and Auman (polyimides having Tg of greater than 390 provide good mechanical properties, [0045]).
Therefore, claims 1-18 are rejected as described above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782