The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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 § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-4, 6-9, 11, and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over US 2019033192 to Suzuki et al.
Re claims 1-4, 6-7, Suzuki teaches [54-55] resin film with overlapping thickness 1 micron [192] parallelism (given the same raw materials, the parallelism as claimed is inherent) on a light guide plate [108] where the resin is PMMA [72, 108] (claim 7). Suzuki teaches the thickness is 1 micron [55] or 0.4 mm to 10 mm ([87]), overlapping claim 4. Suzuki teaches the refractive index of 1.48 [90] overlapping ranges (claim 6). 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Suzuki discloses the parallelism is in degrees not microns but is less than or equal to 2/60 to 1/60 degrees ([81, 295]) which is overlapping when 1 is microns. Suzuki doesn’t disclose the area while the overlapping range of thickness is taught. Suzuki doesn’t teach the exact surface roughness recitation but it is less than 3 nm ([287-288]), close to the value of claim 1.
While the ranges are close, they are not exact or overlapping.
It is apparent, however, that the instantly claimed ranges of parallelism and surface roughness and that taught by Suzuki et al., are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties".
In light of the case law cited above and given that there is only a "slight"difference between the parallelism, area and surface roughness as disclosed by Suzuki et al., and the ranges disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the ranges disclosed in the present claims is but an obvious variant of the properties as the materials and structure are taught; area is but a function of thickness disclosed in Suzuki et al effecting the overall functionality (e.g. transparency and light guide) and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Further regarding the formula, given the same materials are taught and overlapping ranges of surface roughness, the properties are inherent; further any process of measuring is not germane to patentability. See
Re claim 8, the “hard coat layer” is not taught per se; however, a hard vinyl chloride resin is a substrate material and the resin layer includes a second film [72-86] of acrylic, which functions as applicant’s hard coat layer as the material is the same.
Re claims 9 and 11, a display is taught [83, 119-120] as claimed including an anti-reflection film (AR).
Re claim 13, given all the raw materials are the same and when in sunlight, the functionality is inherent.
Response to Arguments
Applicant’s arguments have been considered and are moot in view of the new ground of rejection above. Further note, regarding the claims, Applicant has not submitted a declaration at this time and therefore the rejections are predicated with the following in mind: 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
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787