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 § 112
Claim 14 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.
Regarding Claims 14, the claim recites the physical vapor deposition method (PVD) is sputtering or a chemical vapor deposition (CVD) method. CVD and PVD are considered different categories/families for thin film deposition. PVD uses a solid-state material source and applies the source to a surface of a substrate, like sputtering. CVD deposits liquid and/or gas precursors/reactants that react onto a surface of a substrate. Therefore, CVD is not PVD. Therefore, it is uncertain what actual process the claim seeks to limit to.
For purposes of examination, either PVD or CVD can be used to apply the metal oxide film.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (NPL)
Regarding Claim 14, Yang teaches coated glass, optical laminate, comprising a film layer of tin oxide (Abstract) formed through PVD (Page 1), where the emissivity of the optical laminate can be 0.38 (Table 1; Abstract; Page 5).
Claim Rejections - 35 USC § 103
Claims 1, 2, 4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (JP 2018-165837 A) in view of Shinohara et al. (US 2008/0096033 A1). [hereinafter Shinohara ‘033]
Regarding Claims 1, 2, 4 and 10, Fujita teaches an optical laminate (Paragraph 0001) comprising a plastic film of biaxially oriented polyethylene terephthalate (BOPET) (Paragraph 0031-0034, 0054) and an undercoat layer comprising a metal oxide on the plastic film. (Paragraph 0045). Fujita teaches the metal oxide containing layer can comprise indium tin oxide particles (Paragraph 0045) and a binder resin, a methacrylate resin. (Paragraph 0041, 0050).
Fujita does not teach the mass parts of the binder to ITO particle.
Shinohara ‘033 teaches a hard coat composition of ITO particles and methacrylate resin (Abstract; Claim 1 of Shinohara ‘033; Paragraph 0016), where ITO particles can comprise 30 to 80 wt% and the methacrylate binder can be 5 to 50 wt% (Claim 1 of Shinohara ‘033; Paragraph 0016). Shinohara teaches this weight range ensures the hard coat has sufficient high refractivity and hardness and mechanical strength (Paragraph 0040, 0050). Thus, it would have been obvious to one with ordinary skill in the art to use the composition taught by Shinohara ‘033 or the composition ranges in the metal oxide layer of Fujita to ensure proper refractivity and physical properties.
Fujita and Shinohara ‘033 do not specifically teach the emissivity and the luminous reflectance of the optical laminate or the average spectral transmittance of the layer comprising of the metal oxide. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. (MPEP §2112). Here, as Fujita and Shinohara ‘033 teach the same structure and composition as the claimed invention, then it would have been reasonable and obvious to one with ordinary skill in the art that the optical laminate taught by Fujita and Shinohara ‘033 would inherently have the same properties as the claimed invention, including the emissivity and the luminous reflectance of the optical laminate and the average spectral transmittance of the layer comprising the metal oxide.
Regarding Claim 7-9, Fujita teaches a low refractive index layer, functional layer β, on the layer on the side opposite to the plastic film. (Paragraph 0014, 0073). Fujita teaches the thickness of the low refractive index layer is 30 nm to 1 micron. (Paragraph 0074). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Claims 1, 2, and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara (JP 2011-145649 A) in view of Shinohara ‘033
Regarding Claim 1, 2, 4, and 10, Shinohara teaches an optical laminate (Abstract; Fig. 5) comprising a layer, second hard layer coat, comprising a metal oxide of indium tin oxide particles, and a methacrylate binder resin (Paragraph 0059-0064, 0067) on a plastic film of PET. (Paragraph 0045).
Shinohara does not teach the mass parts of the binder to ITO particle.
Shinohara ‘033 teaches a hard coat composition of ITO particles and methacrylate resin (Abstract; Claim 1 of Shinohara ‘033; Paragraph 0016), where ITO particles can comprise 30 to 80 wt% and the methacrylate binder can be 5 to 50 wt% (Claim 1 of Shinohara ‘033; Paragraph 0016). Shinohara teaches this weight range ensures the hard coat has sufficient high refractivity and hardness and mechanical strength (Paragraph 0040, 0050). Thus, it would have been obvious to one with ordinary skill in the art to use the composition taught by Shinohara ‘033 or the composition ranges in the metal oxide layer of Fujita to ensure proper refractivity and physical properties.
Shinohara and Shinohara ‘033 do not specifically teach the emissivity and the luminous reflectance of the optical laminate or the average spectral transmittance of the layer comprising the metal oxide. However, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. (MPEP §2112). Here, as and Shinohara ‘033 teaches the same structure and composition as the claimed invention, then it would have been reasonable and obvious to one with ordinary skill in the art that the optical laminate taught by Shinohara and Shinohara ‘033 would inherently have the same properties as the claimed invention, including the emissivity and the luminous reflectance of the optical laminate and the average spectral transmittance of the layer comprising the metal oxide.
Regarding Claim 5-6, Shinohara teaches functional layer α, a first hardcoat layer, formed between the plastic film and the layer. (Paragraph 0038, 0047).
Regarding Claims 7-9, Shinohara teaches functional layer β, a low refractive index layer, formed on the layer on the side opposite to the plastic film, where the functional layer β has a thickness of 10 to 300 nm. (Paragraph 077). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Response to Arguments
Applicant’s arguments have been fully considered.
The prior §112 rejections have been withdrawn, due to Applicant’s amendments.
New grounds of rejection have been made in view of Applicant’s amendments
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781