DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 06/08/2026.
3. Claims 1-5, 7-13 are pending. Claims 1-5, 7-13 are under examination on the merits. Claim 1 is amended. Claim 6 is previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive, thus claims 1-5, 7-13 stand rejected as set forth in Office action dated 03/11/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-5, 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shiono et al. (US Pub. No. 2017/0184765 A1, hereinafter “’765”) in view of Shiono et al. (US Pub. No. 2021/0191012 A1, hereinafter “’012”) or Ikuhara et al. (US Pub. No. 2001/0053034 A1, hereinafter “’034”).
Regarding claims 1,8-9: ‘765 teaches an optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a dye (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, a squarylium dye (A1-1) (Page 10, [0113], Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 (Page 14, [0157], Example 3; Table 3-2). ‘765 does not expressly teach the resin film further comprises a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, and the optical filter satisfies all of spectral characteristics (i-1) to (i-5) as set forth.
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However, ‘012 teaches an optical filter (Page 1, [0017]) comprising a resin substrate having a thickness of 20 µm or more and 110 µm or less (Page 1, [0018]), an absorption layer having a thickness of 0.25 µm or more and 12 µm or less and being disposed on at least one principal surface of the resin substrate (Page 1, [0019]) and dielectric multilayer films disposed as an outermost layer on both principal surfaces of the resin substrate (Page 1, [0020]). ‘012 teaches the absorption layer contains NIR dye (A) (Page 6, [0077]; Page 8, [0101]; Page 10, [0113], Table 1), and a UV dyes (Page 6, [0079]; Page 13, [0143]-[0144]; Page 14, [0161], Table 6), wherein the UV dye (U) may be composed of one kind of a compound or may be composed of two or more kinds of compounds. In the case where the UV dye (U) is composed of two or more kinds of compounds, individual compounds need not have the properties of the UV dye (U) as long as a mixture thereof has the properties of the UV dye (U) (Page 15, [0163]) with benefit of providing high visible light transmittance and good NIR-shielding and UV-shielding properties can be achieved in the color filter (Page 13, [0143]).
Alternatively, ‘034 teaches an optical filter comprises a transparent support and at least one filter layer. The optical filter has an absorption maximum in the wavelength region of 560 to 620 nm (Page 1, [0001]). ‘034 teaches a dye having an absorption maximum in the wavelength region of 350 to 450 nm or 470 to 530 nm is also preferably used for adjusting color tone of the filter layer. Examples of that dye include squarylium dyes, azomethine dyes, cyanine dyes, merocyanine dyes, oxonol dyes, anthraquinone dyes, azo dyes, benzylidene dyes and metal chelate compounds thereof (Page 21, [0116]), and the filter layer can contain two or more dyes (Page 21, [0117]).
In an analogous art the optical, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the resin film comprising the dye by ‘765 , so as to include the resin film further comprises a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less as taught by ‘012, and would have been motivated to do so with reasonable expectation that this would result in providing high visible light transmittance and good NIR-shielding and UV-shielding properties can be achieved in the color filter as suggested by ‘012 (Page 13, [0143]).
In an analogous art the optical, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the resin film comprising the dye by ‘765, so as to include the resin film further comprises a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less as taught by ‘034, and would have been motivated to do so with reasonable expectation that this would result in providing to adjust color tone of the filter layer.
Pertaining specifically to claim 1, since ‘765 in view of ‘012 or ‘034 discloses the identical or substantially identical optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a mixture of UV dye such as (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, a squarylium dye (A1-1) (Page 10, [0113, Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., the optical filter satisfies all of the spectral characteristics (i-1) to (i-5) as set forth). If there is any difference between the product of ‘765 in view of ‘012 or ‘034 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 2: The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 in view of ‘012 or ‘034 does not expressly teach optical filter further satisfies all of the spectral characteristic (i-6) as set forth.
However, since ‘765 in view of ‘012 or ‘034 discloses the identical or substantially identical optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a mixture of UV dye such as (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, a squarylium dye (A1-1) (Page 10, [0113, Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., the optical filter satisfies all of the spectral characteristic (i-6) as set forth). If there is any difference between the product of ‘765 in view of ‘012 or ‘034 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 3: The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 teaches the dye (U-8) (i.e., the same as compound 9 of instant application), in a spectral transmittance curve of a coated film formed by coating an alkali glass plate with a solution obtained by dissolving the dye (U) in the resin (Page 14, [0157], Example 3, Table 3-2). ‘765 in view of ‘012 or ‘034 does not expressly teach the optical filter further satisfies all of the spectral characteristics (ii-1) to (ii-6) as set forth.
However, since ‘765 in view of ‘012 or ‘034 discloses the identical or substantially identical optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a mixture of UV dye such as (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, a squarylium dye (A1-1) (Page 10, [0113, Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., the optical filter further satisfies all of the spectral characteristics (ii-1) to (ii-6) as set forth). If there is any difference between the product of ‘765 in view of ‘012 or ‘034 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 4: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 in view of ‘012 or ‘034 does not expressly teach the optical filter further satisfies all of the spectral characteristic (iii-1) as set forth.
However, since ‘765 in view of ‘012 or ‘034 discloses the identical or substantially identical optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a mixture of UV dye such as (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, a squarylium dye (A1-1) (Page 10, [0113, Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., the optical filter further satisfies all of the spectral characteristic (iii-1) as set forth). If there is any difference between the product of ‘765 in view of ‘012 or ‘034 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 5: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 teaches the optical filter (Page 1, [0001]), wherein the resin film has a thickness of 10 µm or less, and a product of a total content of the dye (U) and the dye (A) in the resin film and the thickness of the resin film is 100 (mass%. µm) or less (Page 14, [0157], Example 3, Table 3-2).
Regarding claim 7: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. 765 in view of ‘012 or ‘034 does not expressly teach the optical filter further satisfies all of the spectral characteristics (i-4-1) to (i-6-1) as set forth.
However, since ‘765 in view of ‘012 or ‘034 discloses the identical or substantially identical optical filter (Page 1, [0001]) comprising: a substrate as absorbing layer 12, and a dielectric multilayer film laid on or above at least one major surface of the substrate as a light reflecting layer, as an outermost layer (Page 3, [0043], Fig. 1), wherein: the substrate comprises a resin film containing a mixture of UV dye such as (U-8) (i.e., the same as compound 9 of instant application) having a maximum absorption wavelength in a range of 360 to 395 nm in dichloromethane, and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane, an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less, a squarylium dye (A1-1) (Page 10, [0113, Table 1; Page 14, [0157], Example 3; Table 3-2) having a maximum absorption wavelength in a range of 600 to 800 nm in dichloromethane, and a resin such as polyester B-OKP2 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., the optical filter further satisfies all of the spectral characteristics (i-4-1) to (i-6-1) as set forth). If there is any difference between the product of ‘765 in view of ‘012 or ‘034 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claims 10-11: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 teaches the optical filter (Page 1, [0001]), wherein the dye (A) comprises at least one dye selected from a squarylium dye, wherein the dye (A) comprises a squarylium dye that is made of a compound represented by the following Formula (A1)(Page 9, [0103]; Page 10, [0113], Table 1).
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Regarding claim 12: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference.‘765 teaches the optical filter (Page 1, [0001]), wherein the resin is a transparent resin (Page 10, [0116]; Page 14, [0157], Example 3).
Regarding claim 13: The disclosure of The disclosure of ‘765 in view of ‘012 or ‘034 is adequately set forth in paragraph above and is incorporated herein by reference. ‘765 teaches the optical filter (Page 1, [0001]), wherein the transparent resin comprises a polyimide resin (Page 10, [0117]; Page 18, [0178]).
Response to Arguments
8. Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that the description of Ikuhara ’034 is broad and there is no motivation or suggestion in the description of Ikuhara ‘034 that would have led one of ordinary skill in the art to derive the element of a dye (U) comprising a dye (U1) having a maximum absorption wavelength in a range of 370 to 385 nm in dichloromethane and a dye (U2) having a maximum absorption wavelength in a range of 385 to 405 nm in dichloromethane wherein an absolute value of a difference between maximum absorption wavelengths of the dye (U1) and the dye (U2) in the resin is 10 nm or more and 15 nm or less
The examiner respectfully disagrees. A reference must be considered for everything it teaches by way of technology. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also > Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘034 teaches an optical filter comprises a transparent support and at least one filter layer. The optical filter has an absorption maximum in the wavelength region of 560 to 620 nm (Page 1, [0001]). ‘034 teaches a dye having an absorption maximum in the wavelength region of 350 to 450 nm or 470 to 530 nm is also preferably used for adjusting color tone of the filter layer. Examples of that dye include squarylium dyes, azomethine dyes, cyanine dyes, merocyanine dyes, oxonol dyes, anthraquinone dyes, azo dyes, benzylidene dyes and metal chelate compounds thereof (Page 21, [0116]), and the filter layer can contain two or more dyes (Page 21, [0117]). Thus, one of ordinary skill in the art would have selected a specific dye having a maximum absorption wavelength in the rage of 385 to 405 nm. The selection of a dye based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, it appears that ‘034’s disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to adjust color tone of the filter layer having a maximum absorption wavelength in the rage of 385 to 405 nm (Page 21, [0116]). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”).
Alternatively, ‘012 teaches an optical filter (Page 1, [0017]) comprising a resin substrate having a thickness of 20 µm or more and 110 µm or less (Page 1, [0018]), an absorption layer having a thickness of 0.25 µm or more and 12 µm or less and being disposed on at least one principal surface of the resin substrate (Page 1, [0019]) and dielectric multilayer films disposed as an outermost layer on both principal surfaces of the resin substrate (Page 1, [0020]). ‘012 teaches the absorption layer contains NIR dye (A) (Page 6, [0077]; Page 8, [0101]; Page 10, [0113], Table 1), and a UV dyes (Page 6, [0079]; Page 13, [0143]-[0144]; Page 14, [0161], Table 6), wherein the UV dye (U) may be composed of one kind of a compound or may be composed of two or more kinds of compounds. In the case where the UV dye (U) is composed of two or more kinds of compounds, individual compounds need not have the properties of the UV dye (U) as long as a mixture thereof has the properties of the UV dye (U) (Page 15, [0163]) with benefit of providing high visible light transmittance and good NIR-shielding and UV-shielding properties can be achieved in the color filter (Page 13, [0143]). ‘012 teaches the absorption layer contains a UV dye (Page 13, [0137]). Thus, one of ordinary skill in the art would have selected a specific dye having a maximum absorption wavelength in the rage of 385 to 405 nm. The selection of a dye based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Furthermore, ‘012 teaches the absorption layer may contain, other than the NIR dye (A), a dye capable of absorbing light in a wavelength range except for near-infrared rays, for example, a UV dye (Page 3, [0048]). Therefore, it appears that ‘012’s disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to adjust the maximum absorption of the filter layer having a maximum absorption wavelength in the rage of 385 to 405 nm (Page 21, [0116]). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”).
In response to the Applicant’s argument that Applicant notes example 1-16 of Table 6 of the Specification wherein a combination of two UV dyes according to Claim 1 was employed. As indicated in paragraph [0153], Example 1-16 exhibited particularly superior spectral characteristics, especially noting the low per cent values of T370-400, T400, T₃₉₀, T₃₈₀, and T370 obtained. Such superior spectral performance characteristics are not disclosed by Ikuhara, could not have been predicted from the description of Ikuhara and are therefore, unexpected.
The examiner respectfully disagrees. Turning to Applicant’s argument regarding unexpected results, Examiner agrees that Applicant’s proffered evidence of the Specification, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 25, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
It is submitted that Example 1-16 in Table 6 represents only one species of a mixture of UV dyes of compounds 9 and 10, where the claim 1 to a genus is being sought. It is unclear as why the combination of compounds 9 and 10 are only chosen as representative of the UV dyes mixture, wherein a showing of one species is insufficient to overcome a genus. In re Shokal 113 USPQ 283 (CCPA 1957). On the other hand the showing of unexpected results does not have to cover every species within the genus . Only a "representative" number need be shown. Ex parte Winters 11 USPQ 2d 1387, 1388 (BPAI 1~89). Additionally, in Example 1-16, the amount of UV dyes content is 5.5 and 7.5 parts by mass for compounds 9 and 10, respectively. The content of the UV dye (U) in the absorption layer varies depending on the thickness of the absorption layer, but in view of UV shielding property and solubility, a specific range should be given that does not impairing the effects of UV shielding. Thus, the relied-upon portion of Applicants' Example 1-16 of Table 16 does not provide evidence of unexpected result, let alone the required side-by-side comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims, accompanied by an explanation of why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected results rests on he who asserts them"); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The applicant needs to show that his invention is actually different from and unexpectedly better than the prior art, see In re Best, 195 USPQ 430, 433,434 (CCPA 1977). The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product and show the product is actually different from and unexpectedly better than the teachings of the recited references.
9. 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.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/18/2026
bijan.ahvazi@uspto.gov
Prosecution Insights