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 .
Withdrawn Objections/Rejections
The objection to claims 42 and 50 of record in the previous Office Action mailed on 1/28/2026 has been withdrawn due to Applicant's amendment filed on 4/28/2026.
The 35 U.S.C. 112(b) rejection of claims 37, 40 and 45-48 of record in the previous Office Action mailed on 1/28/2026 has been withdrawn due to Applicant's amendment filed on 4/28/2026.
The 35 U.S.C. 102(a)(1) rejection of claims 32-50 and 53-55 as anticipated by Kariya et al. of record in the previous Office Action mailed on 1/28/2026 has been withdrawn due to Applicant's amendment filed on 4/28/2026.
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 56 is 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 56 recites the limitations "the chemical formula I" and “the chemical formula II”. There is insufficient antecedent basis for these limitations in the claim.
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 32-40, 42-50, 53-55, 57 and 58 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishiyama et al. (CN105026963A) [hereinafter Nishiyama].
Regarding claim 32, Nishiyama discloses a black coating comprising, a film (light-shielding layer) comprising a cured siloxane polymer mixed with nanoparticles and black pigment, the film having a refractive index of more than 1.6 (paragraphs [0020], [0022], [0071], [0073], [0076-0079], [0083] and [0093-0099]).
Regarding claim 33, Nishiyama discloses the film having a thickness of 1 to 200 µm (paragraph [0112]).
Regarding claim 34, Nishiyama 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 (paragraphs [0062-0063] and [0112]).
Regarding claim 35, Nishiyama discloses the film has a refractive index of more than 1.75 (paragraphs [0043], [0071] and [0083]).
Regarding claims 36, 44 and 54, Nishiyama discloses the nanoparticles are metal oxide particles having a Z-average particle diameter of 1 to 200 nm and 2 to 100 nm (paragraphs [0022] and [0071-0073]).
Regarding claim 37, Nishiyama discloses a weight ratio of nanoparticles to cured polymer is from 85:15 to 60:40 (paragraphs [0081-0082]).
Regarding claim 38, Nishiyama discloses the black pigment is organic pigments, metal complex dyes, metal oxide particles, carbon black, and combinations thereof (paragraph [0077]).
Regarding claim 39, Nishiyama discloses the film is on an optical substrate (paragraph [0120]), 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, Nishiyama discloses the film is deposited on at least one optical substrate having a refractive index of more than 1.6 (paragraph [0120]), 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 42, Nishiyama discloses the film is formed from a composition comprising, 5 to 100 parts by weight of a curable siloxane 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 siloxane polymer (paragraphs [0080-0083]).
Regarding claim 43, Nishiyama discloses the curable siloxane 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 [0104-0109]).
Regarding claim 45, Nishiyama discloses the composition comprising the black pigment in a concentration of 1 to 20 %, calculated from a total weight of the composition excluding solvent, since solvent is optional (paragraph [0080]).
Regarding claim 46, Nishiyama discloses the composition comprising a solvent to modify a viscosity of the composition, the solvent optionally also being capable of dissolving the black pigment (paragraph [0133-0136]]).
Regarding claim 47, Nishiyama discloses wherein a solids content of the composition is 20 to 100 % by weight, a balance of the composition comprising a solvent (paragraphs [0080-0083] and [0136]).
Regarding claim 48, Nishiyama discloses wherein the composition further comprises 0.01 to 5 % of a curing catalyst for curing of the curable siloxane polymer, based on a total weight of the composition (paragraphs [0109-0110]).
Regarding claim 49, the composition disclosed in Nishiyama has a dynamic viscosity of 5 mPas-1,000,000 mPas at 25oC using a rheometer at 10s-1 shear rate, since the composition comprises 5 to 100 parts by weight of a curable siloxane 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 siloxane polymer (paragraphs [0080-0083]), which is substantially identical the composition as claimed.
Regarding claim 50, Nishiyama discloses the composition comprising, 10 to 60 parts by weight of a curable siloxane 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 siloxane polymer (paragraphs [0080-0083] and [0134-0136]).
Regarding claim 53, Nishiyama discloses an optical substrate comprising the black coating (paragraph [0157-0166]).
Regarding claim 55, Nishiyama discloses wherein the cured siloxane polymer has a molecular weight of from 3,000 to 200,000 g/mol (paragraph [0105]).
Regarding claim 57, Nishiyama discloses a composition comprising 5 to 100 parts by weight of a curable siloxane polymer, 5 to 100 parts by weight of nanoparticles, and 0.1 to 20 parts by weight of black pigment (paragraphs [0080-0083]).
Regarding claim 58, Nishiyama discloses 10 to 80 parts by weight of the curable siloxane polymer, 10 to 80 parts by weight of nanoparticles, and 1 to 20 parts by weight of black pigment (paragraphs [0080-0083]).
Allowable Subject Matter
Claim 56 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed 4/28/2026, with respect to the rejection(s) of claims 32-50 and 53-55 under 35 U.S.C. 102(a)(1) as anticipated by Kariya have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Nishiyama et al. (CN105026963A), which is presented above.
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.
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
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