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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-8, 10-19, 22, 26-29, and 37-41 are rejected under 35 U.S.C. 102(a1/a2) as being anticipated or in the alterative obvious under 103 by CA 3110610 A1 to TAKANOHASHI et al.
It is noted that when utilizing CA 3110610 A1 in the above paragraph, the disclosures of the reference are based on US 20210324232 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to CA 3110610 A1 are found in US 20210324232 A1.
Re claims 1-8, 10-19, 22, 26-29, and 37-41, TAKANOHASHI teaches [0020-0025, 0081-0085, 113-158, 0168-0169, 223-25], Table 1, exact (A) (B), (C), (D), (F), (a) and (b) in the same structured order and ranges as claimed. See Examples 1-2 and 9-25. All properties including H1 to H2 comparison, the H2 being less than 5%, surface roughness, shape, etc. are inherent as the same materials and order is taught.
In the alternative, re claims 2, 4-5, 8, 10-11, 18, 26, 29, 37, 41, if the ranges are not exact, they would have been obvious to have modified for the ranges are exact or close enough to that claimed and thus expected to have the same properties. See Tables and Examples.
Response to Applicant’s Arguments
Applicant’s arguments have been considered but are not convincing. Applicant argues the Canadian reference needs a translation. However, it is already in English, and the English Canadian patent is included on the 892.
Applicant argues the same materials and structure area not inherent and that the overlapping ranges are not taught with a reason. Note, the exact same materials and structure of at least A-S and the lowercase alphabets as claimed of claim 1 (note there is not an E) are indeed taught by TAKANOHASHI ranges of claims, 2, 10 -11, and the like are overlapping as clearly taught. See the paragraphs as set forth prior. Further note, see MPEP 2141.02:
V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY
"In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
The applicant argues there is not a teaching of the light shielding agent. However, see at least [225] teaching the same light shielding agent as applicant’s instant specification see at least paragraph 5 (e.g. ultraviolet absorber).
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
WO 2014062652 A1 to Sugiyama Re claims 1- 3, and 28, Sugiyama teaches a laminate of a hardcoat (nanoparticle mixture and binder) /adhesive or primer/substrate (pg. 5, lines 11-35 and pg. 15, lines 30-38) vehicle mirror member (title, pg 15, lines 24-pg 16) that has excellent scratch resistance. Sugiyama teaches a siliane nanoparticle (page 10, lines 10-38) but is silent to a hydrolysable silicon compound.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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