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 Arguments
Applicant’s arguments filed 10/8/2025 have been fully considered but they are not persuasive.
The applicant argues that none of the cited references teaches the limitation as amended in claim 1. The examiner respectfully disagrees. Yon et al. (figure 1) discloses a light modulating device as claimed including a liquid crystal alignment film (vertical alignment film 201) formed on the first surface of the second substrate (102); a liquid crystal layer (103) disposed between the first and second substrates; and a partition wall spacer (105), wherein the partition wall spacer maintains a distance between the first and second substrates, wherein the pressure-sensitive adhesive layer or an adhesive layer is a silicone-based pressure-sensitive adhesive or adhesive which imparts a vertical orientation force to an adjacent liquid crystal compound (see at least example 1) or adhesive which imparts a vertical orientation force to an adjacent liquid crystal compound (104 is an adhesive having a vertically oriented force). The examiner merely relies on Kim et al. (figures 4A-4B) for the teaching of a wherein the liquid crystal layer is capable of being configured in a twist orientation (see at least paragraph 0097), and wherein a ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation is more than 2.8 and 9 or less (a cell gap of guest-host liquid crystal layer 230 is 5 μm to 15 μm and the pitch P may be designed to be 253 nm or less, or 520 nm or more; therefore a ratio d/p = 5/0.6 = 8.333; in at least paragraphs 0091 and 0086); wherein the liquid crystal layer is configured in the twist orientation when no voltage is applied, and exists in a vertical orientation state when a voltage is applied (see at least paragraphs 0096-0106; figures 6A-6B). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liquid crystal layer as taught by Kim et al. in order to achieve a light controlling apparatus and a transparent display device having a transparent mode and a light-shielding mode. In addition, it would have been obvious to one having ordinary skill in the art art before the effective filing date of the claimed invention to have wherein a ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation being more than 2.8 and 9 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
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.
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 1-2, 8-9, 11, 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yon et al. (KR 10-2016-0100575) in view of Kim et al. (US 2015/0378205).
Regarding claim 1, Yon et al. (figure 1) discloses a light modulating device, comprising:
a first substrate having a first surface (101);
a pressure-sensitive adhesive layer or an adhesive layer formed on the first surface of the first substrate (104; see at least abstract and example 4);
a second substrate having a first surface (102),
wherein the first surface of the second substrate faces the first surface of the first substrate;
a liquid crystal alignment film (vertical alignment film 201) formed on the first surface of the second substrate (102);
a liquid crystal layer (103) disposed between the first and second substrates; and
a partition wall spacer (105), wherein the partition wall spacer maintains a distance between the first and second substrates,
wherein the pressure-sensitive adhesive layer or an adhesive layer is a silicone-based pressure-sensitive adhesive or adhesive which imparts a vertical orientation force to an adjacent liquid crystal compound (see at least example 1) or adhesive which imparts a vertical orientation force to an adjacent liquid crystal compound (104 is an adhesive having a vertically oriented force).
Yon et al. discloses the limitations as shown in the rejection of claim 1 above. However, Yon et al. is silent regarding the liquid crystal layer is capable of being configured in a twist orientation. Kim et al. (figures 4A-4B) teaches a wherein the liquid crystal layer is capable of being configured in a twist orientation (see at least paragraph 0097), and wherein a ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation is more than 2.8 and 9 or less (a cell gap of guest-host liquid crystal layer 230 is 5 μm to 15 μm and the pitch P may be designed to be 253 nm or less, or 520 nm or more; therefore a ratio d/p = 5/0.6 = 8.333; in at least paragraphs 0091 and 0086); wherein the liquid crystal layer is configured in the twist orientation when no voltage is applied, and exists in a vertical orientation state when a voltage is applied (see at least paragraphs 0096-0106; figures 6A-6B). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liquid crystal layer as taught by Kim et al. in order to achieve a light controlling apparatus and a transparent display device having a transparent mode and a light-shielding mode. In addition, it would have been obvious to one having ordinary skill in the art art before the effective filing date of the claimed invention to have wherein a ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation being more than 2.8 and 9 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Note that the ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation disclosed by Kim et al. is within the range of 2.8 and 10 or less as recited in claim 1. Therefore, the ratio of the thickness of the liquid crystal layer relative to a pitch of the liquid crystal layer in the twist orientation recited in claim 1 would have been obvious in view of the thickness disclosed by Kim et al. (See In re Malagari, 499 F.2d 197, 182 USPQ 549 (CCPA 1974)).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 2, Yon et al. (figure 1) discloses wherein an alignment film is not formed on the first substrate.
Regarding claim 8, Kim et al. (figures 4A-4B) discloses wherein the liquid crystal layer comprises a liquid crystal compound and a chiral dopant (see at least paragraph 0072).
Regarding claim 9, Kim et al. (figures 4A-4B) discloses wherein the liquid crystal layer further comprises a dichroic dye (see at least paragraph 0072).
Regarding claim 11, Yon et al. (figure 1) discloses wherein the liquid crystal alignment film is a vertical alignment film or a horizontal alignment film.
Regarding claim 14, Kim et al. (figures 4A-4B) discloses wherein the light modulating device exhibits a minimum transmittance when no voltage is applied.
The limitation, “wherein the light modulating device exhibits a minimum transmittance when no voltage is applied” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Kim et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 15, Yon et al. (figure 1) discloses a window, comprising: the light modulating device of claim 1.
Claims 3-7 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. in view of Yon et al.; further in view of O’Keeffe et al. (EP 2998786).
Regarding claim 3, Kim et al. discloses the limitations as shown in the rejection of claim 1 above. However, Kim et al. is silent regarding wherein the partition wall spacer is a honeycomb type spacer, a quadrangle spacer or a random type spacer. O’Keeffe et al. (figure 1) teaches wherein the partition wall spacer is a honeycomb type spacer, a quadrangle spacer or a random type spacer (figure 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacer as taught by O’Keeffe et al. in order to minimize haze in the transparent state of a polymer dispersed liquid crystal film and improve the viewing angle.
Regarding claim 4, O’Keeffe et al. (figure 1) teaches wherein the partition wall spacer has a pitch in a range of 100 µm to 1,000 µm (see at least page 4; 4th paragraph).
One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 5, O’Keeffe et al. (figure 1) teaches wherein the liquid crystal layer has a thickness in a range of 0.1 µm to 50 µm (see at least page 8; 5th paragraph).
One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 6, O’Keeffe et al. (figure 1) teaches wherein a ratio of the pitch of the partition wall spacer relative to the thickness of the liquid crystal layer is in a range of 10 to 100 (see at least page 5; 4th paragraph and page 4; 4th paragraph).
One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 7, O’Keeffe et al. (figure 1) teaches wherein a ratio of the pitch of the partition wall spacer relative to the pitch of the liquid crystal layer is in a range of 50 to 500 (see at least page 5; 4th paragraph and page 4; 4th paragraph).
One of ordinary skill in the art at the time of the invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871