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
Newly submitted claim 21 is directed to a species that is independent or distinct from the invention originally claimed for the following reasons: The species are independent or distinct because the claims to the different species recite limitations disclosed for one species but not another; there being no overlap in scope, the species are mutually exclusive. In addition, these species are not obvious variants of each other based on the current record.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other 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 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.
Claim(s) 1-3, 5, 7-8 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089).
Regarding claims 1, 2, and 13, Takao et al. teaches a hard-coated film comprising a hard-coating layer is formed on at least one surface of a transparent plastic film substrate, wherein the hard-coating layer has a pencil hardness of at least 4H (See Abstract, paragraph [0046]). The hard-coated film can also include a pressure-sensitive adhesive or an adhesive (paragraphs [0071] and [0073]).
Takao et al. fails to teach an acrylate compound as claimed.
However, Pokorny et al. teaches an optical article comprising a hardcoat layer disposed on a substrate (See Abstract), wherein the hardcoat layer comprises a multifunctional (meth)acrylate monomer including 1,6-hexanediol diacrylate, which inherently has 2 alkenyl groups, in an amount of about 15 to 60 wt% (paragraphs [0024]-[0025]).
It would have been obvious to one of ordinary skill in the art to use an acrylate compound including in an amount as presently claimed in order to impart the desired integrity (Pokorny et al., paragraph [0025]).
The limitations regarding the hardening layer “is formed by curing a hardening solution” are considered product by process limitations. It is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Takao et al. in view of Pokorny et al. meets the requirements of the claimed hardening layer, Takao et al. in view of Pokorny et al. clearly meets the requirements of present claims.
Regarding claim 3, Takao et al. teaches wherein a thickness of the substrate is 1-500 µm (paragraph [0079]). 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); see MPEP 2144.05.
Regarding claim 5, the limitations regarding solvent are considered product by process limitations. It is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Takao et al. in view of Pokorny et al. meets the requirements of the claimed composite membrane, Takao et al. in view of Pokorny et al. clearly meets the requirements of present claims.
Regarding claims 7 and 8, Takao et al. teaches multifunctional urethane acrylate formed by reacting polyol and an acrylic containing monomer (paragraphs [0032] and [0034]) to form a hydroxy acrylate which then further reacts with an aromatic diisocyanate (paragraph [0035]), i.e. benzene ring. The polyol includes pentaerythritol, dipentaerythritol, etc. (paragraph [0034]) which would provide a multifunctional hydroxy acrylate containing up to 6 alkene functional groups.
Regarding claim 14, Takao et al. teaches the substrate comprising olefin type polymers including polypropylene (paragraph [0029]).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089) and further, in view of Chiu et al. (US 2021079254).
Takao et al. in view of Pokorny et al. is relied upon as disclosed above.
Regarding claim 4, Takao et al. in view of Pokorny et al. fails to teach a thickness of the hardening layer.
However, Chiu et al. teaches a high hardness flexible hard coating film having a thickness of 2 μm to 30 μm (paragraphs [0007] and [0011]).
It would have been obvious to one of ordinary skill in the art to choose a thickness of the hard coating including that presently claimed in order to achieve desired foldability (Chiu et al., paragraphs [0007]).
Claim(s) 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089) and further, in view of Watanabe et al. (KR 20140056072).
Takao et al. in view of Pokorny et al. is relied upon as disclosed above.
Regarding claim 9, Takao et al. teaches wherein the hard-coating material comprises photopolymerization initiator (paragraph [0052]), i.e. curing agent. Takao et al. teaches wherein the ratio of Component A to be added is, for example, 15 to 55% by weight, preferably 25 to 45% by weight, with respect to the entire resin components in the hard-coating material (paragraph [0036]), which overlaps the claimed range of 40% to 70%.
Takao et al. in view of Pokorny et al. fails to teach amount of curing agent.
However, Watanabe et al. teaches hard coating film comprising urethane acrylate (page 4) and a photopolymerization initiator (page 6, third paragraph), i.e. curing agent, such as 1-hydroxycyclohexyl phenyl ketone (page 15, preparation example 1) in an amount of 1 to 10 parts by mass (page 6, fifth paragraph) which would overlap the claimed range of 2 to 6%.
It would have been obvious to one ordinary skill in the art to use 1-hydroxycyclohexyl phenyl ketone of Watanabe et al. as the photopolymerization initiator of Takao et al. in view of Pokorny et al. and thereby arrive at the present invention. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07.
Regarding claim 10, the limitations regarding solvent are considered product by process limitations. It is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Takao et al. in view of Pokorny et al. meets the requirements of the claimed hardening layer, Takao et al. in view of Pokorny et al. clearly meets the requirements of present claims.
Regarding claim 11, Takao et al. teaches wherein the polyacrylate prepolymer comprises polyurethane acrylate (paragraph [0031]). Takao et al. in view of Watanabe et al. teaches curing agent such as 1-hydroxycyclohexyl phenyl ketone (page 15, preparation example 1).
The limitations regarding solvent are considered product by process limitations. It is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Takao et al. in view of Pokorny et al. meets the requirements of the claimed hardening layer, Takao et al. in view of Pokorny et al. clearly meets the requirements of present claims.
Claim(s) 15-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089) and further, in view of Dong et al. (CN 104073179).
Takao et al. in view of Pokorny et al. is relied upon as disclosed above.
Regarding claims 15, 16 and 20, Takao et al. teaches a hard-coated film comprising a hard-coating layer is formed on at least one surface of a transparent plastic film substrate, wherein the hard-coating layer has a pencil hardness of at least 4H (See Abstract, paragraph [0046]). The hard-coated film can also include a pressure-sensitive adhesive or an adhesive (paragraphs [0071] and [0073]).
Takao et al. in view of Pokorny et al. fails to teach an electrochemical apparatus.
However, Dong et al. teaches an adhesive tape for an electrochemical device (See Title and Abstract), i.e. electronic apparatus, comprising acrylate (page 5, “adhesive layer”), wherein the electrochemical device can be used for lithium ion battery, i.e. electrochemical apparatus, which would include an electrode assembly (page 9).
Therefore, it would have been obvious to one ordinary skill in the art to use the adhesive tape of Takao et al. in view of Pokorny et al. in an electronic apparatus comprising electrochemical apparatus comprising electrode assembly and thereby arrive at the present invention.
Regarding claim 17, Takao et al. teaches wherein a thickness of the substrate is 1-500 µm (paragraph [0079]). 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); see MPEP 2144.05.
Regarding claim 19, the limitations regarding solvent are considered product by process limitations. It is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Takao et al. in view of Pokorny et al. meets the requirements of the claimed composite membrane, Takao et al. in view of Pokorny et al. clearly meets the requirements of present claims.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089) and further, in view of Chiu et al. (US 2021079254).
Takao et al. in view of Pokorny et al. is relied upon as disclosed above.
Regarding claim 18, Takao et al. fails to teach a thickness of the hardening layer.
However, Chiu et al. teaches a high hardness flexible hard coating film having a thickness of 2 μm to 30 μm (paragraphs [0007] and [0011]).
It would have been obvious to one of ordinary skill in the art to choose a thickness of the hard coating including that presently claimed in order to achieve desired foldability (Chiu et al., paragraphs [0007]).
Claim(s) 22 is rejected under 35 U.S.C. 103 as being unpatentable over Takao et al. (US 20070237966) in view of Pokorny et al. (US 2007/0292089) and further, in view of Takada et al. (US 2006/0134400).
Takao et al. in view of Pokorny et al. is relied upon as disclosed above.
Regarding claim 22, Takao et al. discloses the pressure-sensitive adhesive or adhesive is used to bond the film substrate side of the hard-coated film to an optical component for use in a LCD or ELD (paragraph [0071]) but fails to disclose the adhesive layer as claimed.
However, Takada et al. teaches a hard-coated film comprising a transparent film substrate and a hard-coating layer on the film substrate, wherein the film substrate side of the hard-coated film is bonded to an optical component for use in a LCD or ELD via a pressure-sensitive adhesive or an adhesive (paragraph [0102]) which has a thickness of 10 to 100 µm (paragraph [0126]) and may include any adhesive including modified polyolefins (paragraph [0122]). Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art to choose a thickness for the adhesive of Takao et al. in view of Pokorny et al. in order to impart the desired adhesive force (Takada et al., paragraph [0126]).
Response to Arguments
Applicant’s arguments filed 08/1582025 have been considered but are moot because of the new ground of rejection which are necessitated by Applicant’s amendment.
Applicant amended claim 1 to recite “an acrylate compound having 1 or 2 alkenyl groups, wherein, based on a total mass of the hardening solution, a mass percentage of the acrylate compound is 10% to 30%” and limitation of canceled claim 6.
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 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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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