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 .
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.
Claims 1-11 are pending.
Response to Amendment
Applicant’s amendment of 07/10/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 11 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claim 11 recites an eraser property that is only achieved in the present examples with specific types and amounts of UV curable resin, antistatic agent, compound with three or more reactive functional groups, elastic oligomer, initiator and modified inorganic nanoparticles. The specification only provides guidance (i.e., broader teachings than the specific examples) for achieving the eraser properties for certain types of these ingredients and certain ranges of amounts of these ingredients and yet claim 11 is much broader than the scope of guidance provided in the present disclosure. The much broader scope of the claim (relative to the guidance in the disclosure) in terms of the types and amount of ingredients constitutes an unreasonable scope of experimentation for one having ordinary skill in the art to have to experiment with in order to arrive at the claimed property. The present specification is thus not commensurately enabling for claim scope.
Upon applying the Wands factors to claim 11, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of ingredients relative to the much narrower guidance provided in the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the property as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of ingredients without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain types and amounts of ingredients, without any corresponding direction provided for achieving the claimed property with the broader types and amounts of ingredients as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
Claim Rejections - 35 USC § 103
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.
If 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.
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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (WO2020199086, see U.S. 2021/0165132) in view of Sakano (U.S. 2010/0024685) in view of Lim et al. (U.S. 2021/0206933).
Regarding claims 1-11, Lai teaches a flexible laminate of a polyimide substrate with a hard coating thereon formed of a UV cured hard coating composition that is intended to be hydrophobic and includes a multifunctional acrylate compound (as in claim 6), an elastic urethane acrylate oligomer (via reaction of the polyol and isocyanate compounds, as in claim 7) with a ratio between the two that overlaps the claimed ratio, (based on their respective ranges of amounts), as well as initators and silane coupling agent treated inorganic nanoparticles (as in claim 8) (see abstract, [0024]-[0039]). The disclosed amounts of ingredients in Lai results in a combined amount that overlaps claim 9.
Lai does not disclose the UV curable hydrophobic resin however Sakano is also directed to hydrophobic hard coatings (as generally sought by Lai) and teaches that a UV curable fluorine polysiloxane (as in claim 2) can provide hydrophobic and stain resistance properties as well as being easily mixed with acrylate compounds (like those in Lai) (see abstract, [0025], [0051], [0053]-[0054]), such that it would have been obvious to have added such compound to Lai to provide hydrophobic and stain resistance properties as taught by Sakano. Although the amount of claim 3 is overlapped ([0055]), given that the fluorine compound provides hydrophobic and stain resistance properties, the amount would have been additionally obvious to adjust, including to values within the claimed range, as part of the optimization of the hydrophobic and stain resistance properties.
Lai does not disclose the claimed antistatic compound, however, Lim is also directed to hard coatings and teaches that organic salts (as in claim 4) may be added to provide antistatic properties to prevent inconvenience to user (see abstract, [0005], [0028]-[0039]) with amounts that overlap claim 5, such that it would have been obvious to have added the antistatic compound from Lim to the hard coating of Lai in order to provide antistatic properties to prevent inconvenience to user. Although the claimed amount is overlapped by the prior art, it is also obvious to adjust to within the claimed range based on the art-recognized effect of providing antistatic properties.
To the extent the amounts as claimed as based on the composition instead of the final hard coating layer, this is a product by process limitation (e.g., the composition may include solvent, which would affect amounts of other ingredients in the composition, but this would be immaterial to the amounts of ingredients in the final coating because the solvent is not present in the final coating). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
The properties of claim 10 appears to be achieved by fluorine compound from Sakano in modified Lai (Table 2, page 8), but even if they were not disclosed (arguendo), hydrophobic properties and more specifically water repellent properties are sought in the coating of the combined references such that it would have been obvious to have adjusted the degree of hydrophobic properties, as represented by the water contact angle as claimed, as part of the process of optimizing the degree of water repellency.
The “eraser” limitation of claim 11 is inherent based on the overlapping type and amount of ingredient in modified Lai as explained above compared to the amount and type of ingredients used in the present disclosure to achieve this property.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Please note that the Lai reference cited above is different from the one previously cited. This renders moot the new limitation regarding blue infrared absorber in the polyimide film because the new Lai reference does not require any infrared absorber in the polyimide.
Applicant then argues that the hydrophobic and wear resistant properties as claimed would not have been expected by the prior art. This is not persuasive as an argument against the prima facie obviousness because the prior art does not need to arrive at the claimed invention for the same reasons as applicant and the claimed properties are inherent as explained above. As an unexpected results argument to rebut the prima facie obviousness of the prior art, the claims are not commensurate in scope with the type and amount of ingredients used in the examples (i.e., claims are much broader) and thus the unexpected results argument is not persuasive.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787