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 .
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.
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.
Claim(s) 1-2 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (JP 2013-208897) (English machine translation for citation).
Regarding claim 1-2: Chung et al. (JP ‘897) discloses silicone release films [0001], wherein Example 3 [Ex. 3; 0050] prepares a 0.5 µm (500 nm) thick polydimethylsiloxane-based film containing 2 µm silicone particles from a composition containing 5 wt% polydimethylsiloxane having hexenyl groups, 0.2 wt% hydrogen siloxane, 350 ppm platinum catalyst, 0.02 wt% 2 µm silicone particles, and solvents [Ex. 3; 0048; 0050; Fig. 2]. Chung et al. (JP ‘897) discloses the silicone release films have mild release properties, high readhesion properties, stable release during storage, improved anti-blocking properties, good processability, and a slight increase in haze due to the roughened surface [0040].
Chung et al. (JP ‘897) does not specifically disclose an area portion where the coating layer is present being 80% or more in 100% of a total surface area of the silicone particles. However, it has been well established that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05]. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized an area portion where the coating layer is present being 80% or more in 100% of a total surface area, as taught by Chung et al. (JP ‘897), as commonly practiced in the art, and would have been motivated to do so since the release properties, anti-blocking and haze of the film is influenced by the coating layer contact area on the silicone particles.
The claimed effects and physical properties, i.e. an absolute value of a difference between a refractive index of the silicone particles and a refractive index of the coating particles or a refractive index of the coating layer being 0.03 or less [instant claim 1], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 8: Chung et al. (JP ‘897) discloses the polydimethylsiloxane-based film was prepared from polydimethylsiloxane having hexenyl groups, hydrogen siloxane, platinum catalyst, and 2 µm silicone particles [Ex. 3; 0048; 0050; Fig. 2].
Regarding claims 9-11: Chung et al. (JP ‘897) discloses the basic claimed adhesive [as set forth above with respect to claim 8].
The claimed effects and physical properties, i.e. a difference between a refractive index of a cured product obtained by curing the curable component at 23 °C for 1 hour and a refractive index of the silicone particles is 0.05 or less [instant claim 9]; an absolute value of a difference between a refractive index of a cured product obtained by curing the curable component at 23 °C for 1 hour and a refractive index of the coating particles or a refractive index of the coating layer is 0.03 or less [instant claim 10]; a ratio of a transmittance of a cured product obtained by curing the adhesive at 23 °C for 1 hour at a wavelength of 650 nm to a transmittance of a cured product obtained by curing the curable component at 23 °C for 1 hour at a wavelength of 650 nm is 0.94 or more [instant claim 11], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (JP 2013-208897) as applied to claim 1 above, and further in view of Tanaka et al. (JP 10-323944) (English machine translation for citation), when taken with Watanabe et al. (WO 2008/010553) (English machine translation for citation).
Regarding claim 5: Chung et al. (JP ‘897) discloses the basic claimed adhesive [as set forth above with respect to claim 1]; wherein Chung et al. (JP ‘897) discloses 2 µm silicone crosslinked particles [Ex. 3; 0048; 0050].
Chung et al. (JP ‘897) does not specifically disclose the 2 µm silicone crosslinked particles having a refractive index of 1.42. However, Tanaka et al. (JP ‘944) discloses release films [0001] comprising 2 µm silicone crosslinked particles having a refractive index of 1.42 (Tospearl 120) [Ex. 2; 0061-0062]. Chung et al. (JP ‘897) and Tanaka et al. (JP ‘944) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of release films. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 2 µm silicone particles having a refractive index of 1.42, as taught by Tanaka et al. (JP ‘944) in the invention of Chung et al. (JP ‘897), and would have been motivated to do so since Tanaka et al. (JP ‘944) suggests 2 µm silicone particles having a refractive index of 1.42 as the antiblocking agent [Ex. 2; 0061-0062].
The claimed effects and physical properties, a refractive index of the optical bonding particles of 1.40 or more or 1.43 or less [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Watanabe et al. (WO ‘553) provides evidence for Tospearl 120 having a particle size of 2 µm and a refractive index of 1.42 [0030].
Allowable Subject Matter
Claims 6-7 and 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Chung et al. (JP 2013-208897) discloses the inert particles having a diameter of 2 µm to 10 µm and the film having a thickness of 0.5 µm to 5.0 µm [0023]. A thickness greater than 5.0 µm will cause blocking problems [0025] and a particle diameter over 10 µm will cause excessive roughness [0026]. Chung et al. (JP ‘897) does not disclose inorganic particles inside the crosslinked silicone particles. Chung et al. (JP ‘897) does not disclose the display device of instant claims 12-13.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Chung et al. (JP 2013-208897) was relied on for disclosing silicone release films [0001], wherein Example 3 [Ex. 3; 0050] prepares a 0.5 µm (500 nm) thick polydimethylsiloxane-based film containing 2 µm silicone particles.
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767