DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/27/26 has been entered.
Response to Amendment
Amendments to the claims, filed on 1/27/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 states the curable hardcoat layer is an active energy ray-curable layer, but this appears to be already stated in claim 1, e.g., the curable hardcoat layer contains an active energy ray-curable resin; so, claim 8 is rejected form for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1, 2, 6-9, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al (JP 2015-104883 A) in view of Kobayashi et al (US 2014/0315036 A1).
Regarding claims 1, 6-8, and 17, Kono teaches a film insert molded article (e.g., thermoformed body) comprising a shaped curable insert film comprising a base material layer (e.g., resin layer C) (15) and a curable hardcoat layer (e.g., resin layer B-2) (14) layered on the base material; and a thermoplastic resin layer (e.g., resin layer A)(13) layered on the base material side of said insert film and/or the surface of the insert film on the other side from the curable hardcoat layer, wherein, a curable hardcoat layer (e.g., resin layer B-2) of the insert film is in an uncured state (abstract; page 2, 4, 6, 13, 17, 29; fig 1b). Kono further teaches the curable hardcoat layer contains a leveling agent (page 16). Kono teaches resin layer B-2 is cured by ionizing radiation (i.e., an active energy ray-curable resin); and may comprise epoxy acrylates (i.e. having a (meth)acryloyl group and is a (meth)acrylate polymer) (page 3, 14, 16).
Kono teaches the hardcoat layer (e.g., resin layer B-2) comprising a resin (e.g., resin b-1) should have hardness and the resin may comprise fillers (page 16-17); wherein it was known in the art at the time of invention to use nanoparticles (e.g., 0.1 µm) as a hard dispersed phase (i.e., filler) to add hardness to resins (page 12).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to add and adjust the amount of nanoparticles in the hardcoat layer of Kono to optimize its hardness.
Kono fails to suggest the (meth)acrylate polymer has a (meth)acrylic equivalent weight of 360 to 750 and a weight average molecular weight of 4,500 to 50,000.
Kobayashi teaches an optical member (e.g., display device, fabricated by laminating at least two substrates together by means of a cured product layer of an ultraviolet-curable resin composition containing (A) a (meth)acrylic polymer having a weight average molecule weight of 1,500 to 30,000, (B) a (meth)acrylate compound having a (meth)acrylic equivalent of 200 g/eq. or more and 1,200 g/eq. or less, and having at least two (meth)acryloyl groups, and (C) a photopolymerization initiator; wherein the ultraviolet-curable resin composition may further comprise epoxy (meth)acrylate, wherein the ultraviolet-curable resin composition exhibits high curability, allows for lesser shrinkage during curing, and is excellent in transparency of the cured product as well adhesiveness to a substrate and flexibility (para 2, 8, 56, 72-74, 81-82).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the ultraviolet-curable resin composition of Kobayashi with the curable hardcoat layer of Kono for a curable hard coat resin that exhibits high curability, allows for lesser shrinkage during curing, and is excellent in transparency of the cured product as well adhesiveness to a substrate and flexibility.
Kobayashi teaches a (meth)acrylic polymer having a weight average molecule weight of 1,500 to 30,000, (B) a (meth)acrylate compound having a (meth)acrylic equivalent of 200 g/eq. or more and 1,200 g/eq. or less (para 56, 72-74). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kobayashi, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
In addition, Kobayashi teaches if the average molecular weight is too small, the cured product tends to have poor adhesiveness, whereas if the weight average molecular weight is too large, the polymer may disadvantageously become less dissolvable in other monomers or become white turbid (para 67); and, the (meth)acrylic equivalent is too high, this may affect the adhesiveness and the like (para 73).
Therefore, it would have been obvious to one of ordinary skill in the art to adjust both the average molecular weight and the (meth)acrylic equivalent of the ultraviolet-curable resin that forms the hardcoat layer of Kono as modified by Kobayashi to optimize its adhesiveness as well as its dissolvability in other monomers.
Kono as modified by Kobayashi teaches or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the composition of the hardcoat layer of the instant claims, so it is deemed to possess the same properties of the embodiment of the instant claims. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
The Examiner notes an Kono teaches an additional hardcoat layer (B-1) on the side of the thermoplastic resin layer (e.g., resin layer A)(13) (abstract; page 29; fig 1b); but due to its location and the metes and bounds of the instant claim structure it would not be considered part of the insert film (i.e., comprising a base material layer and a curable hardcoat layer).
Regarding claim 2, the limitation of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 2 and the product of Kono.
Regarding claim 9, Kono teaches a film insert molded article which is obtained by curing the curable hardcoat layer of the film insert molded article according to claim 1 (page 3).
Regarding claim 19, Kono teaches a protective film layered on the hardcoat layer in contact with the surface of the hardcoat layer on the other side of the base material layer (page 3, 22).
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of a new combination of prior art of record. The Applicant is directed to the 35 USC § 103 section above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783