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.
Claims 1-6, 8, 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai (JP06025599, herein Sakai, a machine translation is being used for citation purpose), in the view of Jang (US20180371189, herein Jang).
Regarding Claims 1-3, 5, Sakai teaches “example 1 forming hard coating” [P5; 0021] via “gamma-glycidyl xypropyltrimethoxysilane, 60 parts, gamma-glycidyl xypropylmethyldimethoxysilane, 75 parts, and beta-(3,4-epoxycyclohexyl) ethyltrimethoxysilane 15 parts, respectively” [P5; 0021], read on all claimed chemical structures, as evidenced by CAS Registry Number: 158519-47-2, [Scifinder], see below:
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The beta-(3,4-epoxycyclohexyl) ethyltrimethoxysilane reads on (RaSiO3/2)p Ra is group selected from a alicyclic group; gamma-glycidyl xypropyltrimethoxysilane reads on the (RbSiO3/2)q Rb is group selected from a glycidyl group; gamma-glycidyl xypropylmethyldimethoxysilane reads on (R2cSiO3/2)r Rc is methyl group and glycidyl group; wherein, the (R3dSiO1/2)s is excluded from the formula I therefore, s=0.
Sakai is silent on the flexible window cover film and the specific formula I with the p, q, r, s numbers, However, Jang teaches flexible window film [0008]; Jang further teaches formula 2: (R1SiO3/2)x(R2SiO3/2)y(R3R4SiO2/2)z(R5R6R7SiO1/2)w(SiO4/2)u [0058], matches the claimed formula I, wherein, 0<x≤1, 0≤y<1, 0≤z<1; w, u=0, wherein, the 0<x+y≤2, which encompasses the claimed ranges, p, r, r, s individually and the range of p+q; R1 and R2 are epoxy groups, R3, R4, are each independently an epoxy group, unsubstituted C1 to C20 alkyl group. [0060-61], collectively read on the forma I and its limitations. Sakai and Jang are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composites for optical application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and adding the flexible window film [0008]; and formula 2: (R1SiO3/2)x(R2SiO3/2)y(R3R4SiO2/2)z(R5R6R7SiO1/2)w(SiO4/2)u [0058], wherein, 0<x≤1, 0≤y<1, 0≤z<1; w, u=0, R1 and R2 are epoxy groups, R3, R4, are each independently an epoxy group, unsubstituted C1 to C20 alkyl group. [0060-61], because doing so would further lead to the product of flexible window film having high hardness and good flexibility [0006].
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 4, Sakai and Jang teach the hard coating composition for a flexible window cover film as set forth above in claim 1. Sakai is silent on the wherein the epoxy polysiloxane resin has a weight average molecular weight (Mw) of 2,000 to 40,000 g/mol. However, Jang teaches the epoxy group-containing siloxane resin may have a weight average molecular weight of about 2,000 to about 20,000 [0070], lies in the claimed range. Sakai and Jang are considered to be analogous to the claimed invention because they are in the same field of the functional epoxy polysiloxane resin composites development for coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Sakai and adding the teaching of the epoxy group-containing siloxane resin may have a weight average molecular weight of about 2,000 to about 20,000 [0070] into the composition formation, because doing so would further lead to the product of flexible window film having high hardness and good flexibility [0006].
Regarding Claim 6, Sakai and Jang teach the hard coating composition for a flexible window cover film as set forth above in claim 5. Sakai is silent on the wherein the epoxy compound has an epoxy equivalent of 150 g/eq or less. However, Jang teaches epoxy equivalent weight of about 0.1 mol/100 g to about 1.0 mol/100 g [0070], which is 0.1x100=10 to 1x100=100 g/eq, overlaps the claimed range. Sakai and Jang are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composites for optical application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and adding the epoxy equivalent weight of about 0.1 mol/100 g to about 1.0 mol/100 g [0070] into the composition formation, because doing so would further lead to the product of flexible window film having high hardness and good flexibility [0006].
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 8, Sakai teaches “60 parts by weight of gamma-glycidyl xypropyltrimethoxysilane, 75 parts by weight of gamma-glycidyl xypropylmethyldimethoxysilane, and 15 parts by weight of beta-(3,4-epoxycyclohexyl) ethyltrimethoxysilane” [P5; 0021], respect to the formulation of example 1, wherein the epoxy compound concentration is (60+75+15)/(0.18x60+60+0.19x75+15+1.5+2+35+35+35+35+35+375)=140/653.55=21.42%, lies in the claimed range.
Regarding Claims 10-13, Sakai teaches the hard coating composition for a flexible window cover film as set forth above in claim 1. Sakai is silent on the nanoparticle component. However, Jang teaches the nanoparticles may include at least one of silica, aluminum oxide, about 10 nm to about 50 nm [0084] lies in the claimed range; 0.1 parts by weight to about 60 parts by weight [0084] overlaps the claimed range; the nanoparticles may be partially or entirely subjected to surface treatment [0084].
Sakai and Jang are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composites for optical application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and add the nanoparticles may include at least one of silica, aluminum oxide, about 10 nm to about 50 nm [0084] lies in the claimed range; 0.1 parts by weight to about 60 parts by weight [0084]; the nanoparticles may be partially or entirely subjected to surface treatment [0084] into the hard coating composition, because doing so would further achieve the desired property of the nanoparticles can further improve hardness of a window film [0084] as taught by Jang.
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)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sakai (JP06025599, herein Sakai, a machine translation is being used for citation purpose) and Jang (US20180371189, herein Jang) applied to claim 5 as set forth above, in the view of Soo (WO2016089089, herein Soo, a machine translation is being used for citation purpose).
Regarding Claim 7, Sakai and Jang teach the hard coating composition for a flexible window cover film as set forth above in claim 5. Sakai is silent on the wherein the epoxy compound is a compound represented by the following Chemical Formula 2 or 3. However, Soo teaches “(3,4-epoxycyclohexyl) methyl-3 ', 4'-epoxycyclohexanecarboxylate” [P15; L646], reads on the formula 2 and evidenced by CAS Registry Number: 25085-98-7, structure see below, wherein, R1 and R2 are hydrogen; X is ester group having 2 carbons.
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Sakai and Soo are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composites for optical application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and add “(3,4-epoxycyclohexyl) methyl-3 ', 4'-epoxycyclohexanecarboxylate” [P15; L646] into the composition, because doing so would further achieve the desired property of “flexible window film having excellent hardness and flexibility and excellent optical reliability such as light resistance reliability” [P2; L47] as taught by Soo.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sakai (JP06025599, herein Sakai, a machine translation is being used for citation purpose) and Jang (US20180371189, herein Jang) applied to claim 5 as set forth above, in the view of Shimizu (US20220017776, herein Shimizu).
Regarding Claim 9, Sakai and Jang teach the hard coating composition for a flexible window cover film as set forth above in claim 5. Sakai is silent on the photoinitiator and a thermal initiator including a compound represented by the following Chemical Formula 6. However, Shimizu teaches polymerization initiator of sulfonium salt and a salt of a transition metal complex ion and an anion. One of these compounds can be used in combination [00194], wherein, the two salts are: the 4-hydroxyphenylmethylbenzylsulfonium salt [0195], and Hexafluoroantimonate [0197], structure see below, collectively match the formula 6 and read on the photoinitiator and a thermal initiator, wherein, the R3 is hydrogen, R4 is hydrogen, R5 is aralkyl group with 6 carbon atoms, R6 is methyl with 1 carbon atom; X is SbF6.
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Sakai and Shimizu are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composite for transparent materials application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and add the polymerization initiator of sulfonium salt and a salt of a transition metal complex ion and an anion. One of these compounds can be used in combination [00194], wherein, the two salts are: the 4-hydroxyphenylmethylbenzylsulfonium salt [0195], and Hexafluoroantimonate [0197], into the composition formation, because doing so would lead to the desired property of excelling in weather resistance, scratch resistance, and toughness [0012] as taught by Shimizu.
Claims 14, 16, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai (JP06025599, herein Sakai, a machine translation is being used for citation purpose), in the view of Jang (US20180371189, herein Jang) and Soo (WO2016089089, herein Soo, a machine translation is being used for citation purpose).
Regarding Claims 14, 16, 17, Sakai and Jang collectively teach all the composition limitations of the hard coating layer for a flexible window cover film as disclosed in the specification. Sakai is silent on the wherein the hard coating layer is obtained by photocuring and thermal curing of the hard coating composition for a flexible window cover film and coating geometry. However, Soo teaches “photocured and then heat-cured” [P18, L764], and “coating layer (120) formed on one surface of the substrate layer” [P18; L784]. Sakai and Soo are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy polysiloxane resin composites for optical application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Sakai and add “photocured and then heat-cured” [P18, L764] and “coating layer (120) formed on one surface of the substrate layer” [P18; L784] into the product formation, because doing so would further achieve the desired property of “results in higher hardness of the coating layer.” [P18; L771] toward product formation as taught by Soo.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Sakai, Jang and Soo teach all of the claimed ingredients, in the claimed amounts, and Soo further teaches “photocured and then heat-cured” [P18, L764], and “coating layer (120) formed on one surface of the substrate layer” [P18; L784], as the composition being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., hardness; elastic recovery; crack occurrence, would necessarily arise from a composition with all the claimed ingredients and the amounts. "Products 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant’s arguments, filed 8/6/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sakai (JP06025599, herein Sakai, a machine translation is being used for citation purpose), and Jang (US20180371189, herein Jang).
In this case, Sakai and Jang collectively teach all the composition as set forth above in the new rejection above.
In response to the applicant’s argument that “unexpected results”, the argument is not persuasive.
In fact, when Examples 1-3 and Comp. Examples 1-4 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to the content of 0.5≦p <1; 0<q ≦ 0.49, 0<r≦ 0.1, 0≦s≦ 0.05. However, i) Examples 1, 2 and Comp. Example 3 only has the single p value of 0.9; ii) Examples 1, 2 and Comp. Example 3 only has the single q value of 0.05; iii) Examples 1, 3 and Comp. Example 2 only has the single r value of 0.05; iv) Example 1 and Comp. Examples 1, 2, 4 only has the single s value of 0, Hence, The Examples 1-3 and Comp. Examples 1-4 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767