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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 32-41, in the reply filed on 11/18/2025 is acknowledged. However, after further consideration and due to the amendment filed 11/18/2025, the restriction requirement mailed on 9/18/2025 has been withdrawn. Accordingly, claims 32-50 and 53-55 will be examined.
Claim Objections
Claim 42 is objected to because of the following informalities: claim 42, depends from claim 1 which has been cancelled. It is believed it should be corrected to depend from claim 32
Claim 50 is objected to because of the following informalities: the preamble is incorrect for claim 50 and should be corrected to recite “The black coating according to claim 42”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 37, 40 and 45-48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 37 recites the limitation "the weight ratio" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 40 recites the limitation "the coating film" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 45 recites the limitation "the total weight of the composition excluding solvent" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 46 recites the limitation "the viscosity" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 47 recites the limitations "the solids content" and “the rest” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Claim 48 recites the limitation "the total weight of the composition of a curing catalyst " in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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 44 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 44 recites the same limitation as in claim 36 and both depend from claim 32. Thus, claim 44 fails to further limit the subject matter of claim 32. 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 § 102
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.
Claims 32-50 and 53-55 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kariya et al. (WO 2019188851 A1) [hereinafter Kariya].
Regarding claim 32, Kariya disclose a black coating comprising, a film comprising a cured polymer mixed with nanoparticles and black pigment, the film having a refractive index of more than 1.6 (abstract; claims 1-11).
Regarding claim 33, Kariya discloses the film having a thickness of 1 to 200 µm (paragraph [0101].
Regarding claim 34, Kariya discloses the film, at a film thickness of 30 µm, has an optical density of more than 4 at wavelengths between 400 and 665 nm (paragraph [0013]).
Regarding claim 35, Kariya discloses the film has a refractive index of more than 1.75 (claim 11).
Regarding claims 36, 44 and 54, Kariya discloses the nanoparticles are metal oxide particles having a Z-average particle diameter of 1 to 200 nm (paragraph [0030]).
Regarding claim 37, Kariya discloses the weight ratio of nanoparticles to cured polymer amounts to 85:15 to 60:40 (paragraph [00332]).
Regarding claim 38, Kariya discloses the black pigment is carbon black (abstract).
Regarding claim 39, Kariya discloses the film is on an optical substrate (paragraph [0106]), and the refractive index of the film inherently differs no more than ± 0.4 units from that of the optical substrate, the refractive index being measured at 589 nm, since the optical substrate can be glass which is substantially identical to that of the claimed optical substrate and the film has a substantially identical composition to that of the claimed film.
Regarding claim 40, Kariya discloses the film is deposited on at least one optical substrate having a refractive index of more than 1.6 (claims 1-15; paragraph [0008]), and the reflection at an interface between the at least one optical substrate and the coating film is inherently less than 10% of the reflection at an interface between the at least one optical substrate and air at 400-665 nm, since the optical substrate can be glass which is substantially identical to that of the claimed optical substrate and the film has a substantially identical composition to that of the claimed film.
Regarding claim 41, Kariya discloses the cured polymer is a siloxane polymer (paragraph [0083]).
Regarding claim 42, Kariya discloses the film is formed from a composition comprising, 5 to 100 parts by weight of a curable polymer, 5 to 100 parts by weight of nanoparticles, and 0.1 to 20 parts by weight of black pigment, the nanoparticles and black pigment being mixed with the curable polymer (abstract; paragraphs [0025], [0032] and [0068]).
Regarding claim 43, Kariya discloses the curable polymer comprising one or more siloxane prepolymers having a molecular weight (Mw) of 500 to 100000 g/mol and exhibiting one or several reactive groups selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, hydride, thiol, methacrylate, and combinations thereof (paragraphs [0050-0067] and [0083].
Regarding claim 45, Kariya discloses the composition comprising black pigment in concentration of 1 to 20 %, calculated from the total weight of the composition excluding solvent (paragraph [0025]).
Regarding claim 46, Kariya discloses the composition comprising a solvent to modify the viscosity of the composition, the solvent optionally also being capable of dissolving the black pigment (paragraphs [0041-0048]).
Regarding claim 47, Kariya discloses wherein the solids content of the composition is 20 to 100 % by weight, the rest comprising a solvent (paragraphs [0025], [0032], [0041-0048] and [0078]).
Regarding claim 48, Kariya discloses wherein the composition further comprises 0.01 to 5 % of the total weight of the composition of a curing catalyst for curing of the curable polymer (paragraphs [0069-0074]).
Regarding claim 49, Kariya discloses the composition having a dynamic viscosity of 5 mPas - 1,000,000 mPas at 25°C using a rheometer at 10 s-¹ shear rate (paragraph [0086]).
Regarding claim 50, Kariya discloses the composition comprising, 10 to 60 parts by weight of a curable polymer, 20 to 50 parts by weight of nanoparticles, 1 to 20 parts by weight of black pigment; and optionally 10 to 40 parts by weight of a solvent capable of at least partially dissolving the curable polymer (abstract; paragraphs [0025], [0032], [0048] and [0068]).
Regarding claim 53, Kariya discloses an optical substrate comprising the black coating (paragraph [0106]; claims 14-15).
Regarding claim 55, Kariya discloses wherein the cured polymer has a molecular weight of from 3,000 to 200,000 g/mol (paragraph [0066]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781