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
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 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.
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Southwell et al (US 2006/0084756, ‘756 hereafter).
Regarding claims 1 and 4-5, ‘756 discloses a curable composition comprising a compound A having a polymerizable group and an oxyfluoroalkylene group ([0074]-[0083], [0144], Table 1, [0145], Table 4); a polymerization initiator being a photoinitiator such as Lucirin TPO and Irgacure 184 ([0094], Table 4); and a compound B having a polymerizable group ([0087]-[0090], Table 4, hexanediol diacrylate); wherein the polymerizable group as in compound (A) can be acrylate group or vinyloxy group (vinyl ether, [0080]), and the polymerizable group of compound B can be one or more (meth)acryloyl groups satisfying present claims 4 and 5 ([0088]-[0090]). ‘756 also discloses that the polymerizable compounds having different types polymerizable group such as one being vinyl ether group with another one being ethylenically unsaturated group in a composition provide rapid copolymerization to increase photocuring rate for the composition ([0095]). Therefore, one of ordinary skill in the art would have been motivated to use two compounds having different polymerizable groups as taught by the prior art, to render a curable composition having higher photocuring rate.
Regarding claims 2-3 and 12, ‘756 discloses that the content of compound A in the composition can be 80.7% by weight with respect to total amount of the composition (Table 4), the molecular weight of the compound A can be in a range of 1000 to 5000 ([0076]), and the composition does not contain organic solvent (Table 4); satisfying present claims 2-3 and 12.
Regarding claims 6-11, ‘756 discloses that the compound (A) has a polymerizable group being an acrylate group or a vinyloxy group (vinyl ether, [0080]), and an oxyfluoroalkylene group being a fluorinated polyether or a fluorinated co-polyether as listed in paragraph [0077], which has -Rf-(OX)m-O-Rf- segment as in Formula (1) of present claim 6, with OX being OCF2 to OC4F6; after being capped with an isocyanate group and an isocyanate reactive monomer ([0078]-[0080]), the fluorinated polyether or a fluorinated co-polyether forms into a compound with Y1 and Y2 being linking groups to the polymerizable groups; satisfying present claims 6-11.
Regarding claim 13, ‘756 also discloses that the composition further contains a silane coupling agent ([0092], Table 4).
Regarding claims 14-16 and 18-19, ‘756 also discloses a cured film and a method making the same([0114]-[0140]), wherein the film can be used to make an optical element comprising the cured film and a display device comprising the element ([0118]). It is also noted that the element recited in the present claim 18 is in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since the applied prior art discloses the cited intended use, the instant claim stands properly rejected.
Regarding claim 17, ‘756 teaches all the limitations of claim 16, but does not specifically set forth the element being used for a sensor. However, the element as claimed is in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since applied prior art discloses the element comprising the cured film in this claim, thus the prior art element will be capable of being used for a sensor, even if the prior art does not disclose element is for a sensor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782