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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 11/20/2025 have been entered. Claims 1-2, 4-5 and 11-13 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 11 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 11 set forth that the optically anisotropic layer is a layer formed by fixing a liquid crystal compound aligned homogeneously, which fails to further limit its base claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-2, 4-5 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Takahashi et al (WO 2021/033631, of record, English equivalent US US20220171109, of record, ‘109 hereafter is cited in this office action).
Regarding claims 1-2, 4-5 and 11-13, ‘109 discloses an optical film reading upon transfer film (Fig. 11, [0049]), comprising a substrate preferably being a cellulose acylate film or PET film ([0158]-[0165]) having an in-plane retardation at a wavelength of 550 nm being 0 to 10 nm ([0162]), which may function as a temporary support (the substrate can be peeled in case to obtain an optically anisotropic layer); and an optically anisotropic layer disposed on the temporary support (Fig. 11, [0049]), wherein the optically anisotropic layer is a layer formed of a liquid crystal compound and a chiral agent which is fixed by photopolymerization into a twisted aligned along helical axis extended in the thickness direction with a twisted angle in a preferred range of 70 to 110° ([0181]-[0194], [0203]-[0211], [0252], Examples 4 and 5). ‘109 also discloses that the temporary support further comprises an alignment film( Example 5). ‘109 does not expressly set forth that the optical film has a dimension change rate satisfying Expression (1) as recited in the present claim 1. However, as set forth above, ‘109 discloses an optical film comprising an optically anisotropic layer formed from a liquid crystal compound and a chiral agent, which is substantially identical to the optically anisotropic layer as claimed in present application (See examples of present application), thus it is reasonable to expect that the optically anisotropic layer of ‘109 would have the same properties including the dimension change rate as recited in the present claim 1, in absence of an objective showing to the contrary. "Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).( See MPEP 2112.01).
Claims 1-2, 4-5 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Takeda et al (US 2016/0342003, ‘003 hereafter).
Regarding claims 1-2, 4-5 and 11-13, ‘003 discloses an optical film reading upon transfer film (Fig. 11, [0049]), comprising a temporary substrate preferably being a unstretched cellulose acylate film or PET film ([0144], [0187], [0202], [0344], [0368]) inherently having an in-plane retardation at a wavelength of 550 nm close to 0; and an optically anisotropic layer disposed on the temporary support; wherein the optically anisotropic layer is a layer formed of a liquid crystal compound and a chiral agent which is fixed by photopolymerization into a twisted aligned along helical axis extended in the thickness direction ([0024], [0142]-[0148], [0151]-[0154], [0370], [0390]). ‘003 also discloses that the temporary support further comprises an alignment film( [0175]-[0185], [0192], [0202], [0346]-[0348]). ‘003 does not expressly set forth that the optical film has a dimension change rate satisfying Expression (1) as recited in the present claim 1 and a twisted angle as recited in the claims 4-5 and 12-13. However, as set forth above, ‘003 discloses an optical film comprising an optically anisotropic layer formed from a liquid crystal compound and a chiral agent, which is substantially identical to the optically anisotropic layer as claimed in present application (See examples of present application); thus it is reasonable to expect that the optically anisotropic layer of ‘003 would have the same properties including the dimension change rate and twisted angle as recited in the present claims 1, 4-5 and 12-13, in absence of an objective showing to the contrary. "Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).( See MPEP 2112.01).
Response to Arguments
Applicant's arguments filed on 11/20/2025 have been fully considered and they are not persuasive.
Applicant argues that the cited prior art Takahashi ‘109 teaches a two layer optically anisotropic layer instead of one layer optically anisotropic layer. However, ‘103 expressly set forth that the optically anisotropic layer is a layer having a plurality regions where the alignment states of a liquid crystal compound are different from one another, which does not have discrete layers ([0008], also see Examples, the optically anisotropic layer is formed from one LC composition).
Regarding prior art Takeda’003, applicant states that ‘003 discloses the cholesteric liquid crystal layer whose twisted angle is more than 360°. However, nowhere in ‘003 set forth a cholesteric liquid crystal layer having twisted angle is more than 360°. In addition, twisted angle being 0 to 360° includes all the twisted angles of a liquid crystal compound can be reached in a cholesteric liquid crystal layer, thus there is no way to render a twisted angle of a liquid crystal compound being more than 360° as argued.
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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