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 .
Response to Amendment
Applicant’s claim amendments and remarks filed 2/10/2026 are entered and have
been fully considered. Applicant has amended claim 8 to overcomes the 112b rejection, therefore it is withdrawn.
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.
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 1-2, 4-15, 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Yano et al, US20150301667A1 in view of the chapter, “Effects of Surface Modification on Polymeric Biocomposites for Orthopedic Applications,” by Harmata et al, found in Nanocomposites for Musculoskeletal Tissue Regeneration, chapter 3, pages 67-91, 2016.
Regarding claims 1-2, 10-11, Yano teaches a display device with touch panel that comprises a film that is a hard coat ¶[0016], and the hard coat is formed from an acrylic resin layer comprising a multifunctional acrylic, urethane prepolymer, and reactive silica particle ¶[0033]. The hard coat layer is formed from an active energy ray curable resin, which can be selected from a UV curable epoxy-acrylate resin, UV curable acrylate resin, and UV curable epoxy resin,¶[0172], which reads on the thermosetting resin of claims 1 and 2. The methacrylate resins are formed from polyfunctional acrylates such as pentaerythritol trimethacrylate ¶[0176] and 4-hydroxybutyl acrylate ¶[0177] which also read on claim 2. While Yano does not contemplate thermal curing, the resins read on the claims because they contain the same curable moieties that are capable of thermal curing.
The hard coat layer may further comprise a cation polymerizable compound, which is preferably an epoxy functional compound ¶[0182], and lists 3,4-epoxycyclohexylmethyl-3′,4′-epoxy cyclohexane carboxylate ¶[0183] which reads on the two or more thermosetting functional groups for claim 1, the alicyclic limitation of claim 10, and the structure of chemical formula 1 for claim 11.
The hard coat may further comprise inorganic minute particles, of which reactive silica particles are preferred ¶[0187+], and the silica may be selected as hollow silica, ¶[0189]. The surface of the hollow silica particles is treated with a polymerizable compound, ¶[0191].
Yano does not teach the thickness of the surface treated layer on the silica is between 3-50 nm.
Harmata discloses that silane treatment is one of the most prominent techniques for surface modification of particles and illustrates the silane coupling agent grafting onto a filler particles surface, page 70, 3.3.1. It is also disclosed that to ensure uniform coverage, multiple layers of silane are needed with an inorganic surface typically <5nm thick, top of page 71, which overlaps with the claimed range. Silane treatment provides many applications such as a coupling or dispersal agent or an adhesion promoter, page 71 section 3.3.1.2. It is further explained that surface modification of filler particles controls the surface properties which affects both the mechanical and physical properties of the resulting polymer composite, page 84, section 3.6 first sentence. And that surface modification improves the interaction between the filler surface and the polymer binder, 3.6 second paragraph.
Harmata is analogous to the claimed invention because it is in the field of surface treatment of filler particles for use in polymer-filler composites.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Yano but applying the surface treatment to the hollow silica in a thickness of 5 nm or less because it would produce the predictable result of a surface treated hollow particle with uniform treatment coverage which improves the interaction between the particles and polymer binder, as disclosed by Harmata.
Regarding claims 4-6, Yano teaches the hollow silica is surface treated to become reactive silica particles, ¶¶[0189, 0191, 0203], and the reactive silica is in the hard coat layer from 5-80 wt.% ¶[0205] which overlaps with the claimed ranges of claims 4 and 5. In the case where the claimed ranges “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).
Regarding claims 7 and 9, Yano teaches the hollow silica is surface treated with an organic compound that includes a polymerizable unsaturated group, ¶[0191], the organic compound is bonded to the silica to form the reactive particles, ¶[0203], which reads on the vinyl- and acryl groups of claim 7. It is further taught that the particles have an average diameter of 30-200 nm. Although Yano does not explicitly disclose the median D50, at least many particle populations with an average particle diameter in the specified range would inherently also comply with the range of D50 values set forth in claim 9.
Regarding clam 8, Harmata discloses surface treatment of the silica particles is typically <5nm thick, which is very close to the lower end of the claimed range. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Yano but applying the surface treatment to the hollow silica in a thickness of 5 nm with the motivation of optimizing the interaction between the particles and polymer binder, as disclosed by Harmata.
Regarding claims 12 and 13, Yano teaches the UV curable resin is in the hard coat is from 10-99 wt.%, ¶[0180], the cation polymerizable compound (epoxy) is from 1-90 wt.% ¶[0184], and the hollow silica is from 5-80 wt.% ¶[0205], all of which overlap with the claimed ranges. The total of the UV resin and the epoxy compound ranges from 11-100 wt.% of the hard coat layer, encompassing the claimed range of claim 13.
Regarding claim 14, Yano teaches a silicone-based surfactant may be added to the hard coat layer ¶[0223].
Regarding claim 15, applicant does not define the term “dispersant” in the instant specification other than to state it improves dispersibility ¶[105]. Therefore using the broadest reasonable interpretation, Yano teaches a silicone dispersant in the addition of the silicone surfactant ¶[0223], which is hydrophilic and is known to help with dispersibility.
Regarding claim 18, Yano teaches that it is preferable to dilute the hard coat layer composition in a solvent, ¶[0213], but does not teach it is necessary, nor does Yano discourage or teach away from using the hard coat composition without a solvent. Therefore it would be obvious to the skilled artisan that the hard coat composition can be applied un-diluted.
Regarding claim 19, Yano does not teach the viscosity of the hard coat composition is in a range from 3-30 cP. But it would be obvious to the skilled artisan to optimize the viscosity to balance the ease of application of a uniform film against the coating composition being so dilute that many applications are required to obtain a layer of desired thickness and, in so doing, would find that compositions with viscosities comparable to those claimed are suitable.
Regarding claims 20-22, Yano teaches an optical member that is in a display device, abstract and Fig. 1, which comprises a substrate of a film base member which has a film formed from the hard coat composition, ¶¶[0013, 0016]. It is further taught that the haze value is 1% or less ¶[0232].
Allowable Subject Matter
Claims 3, 16-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Yano teaches the hard coat resin composition is made of UV curing monomers as the thermoset resin, ¶[0174], none of which have a molecular weight of 1,000-200,000 g/mol. Additionally, because the hard coat is UV cured, there are no thermal acid/base generators that would be added to the composition.
Response to Arguments
The 103 rejection over Noda is withdrawn due to the amendment to claim 1.
Applicant's arguments filed 2/10/2026 regarding the 103 rejection over Yano and over Yano in view of Harmata have been fully considered but they are not persuasive.
In response to applicant’s argument that the prior art either combined or individually does not suggest the amended claim 1, examiner points to the 103 rejection above. Yano teaches the resin composition using the hollow surface treated silica particles, and Harmata discloses a typical thickness of the layer of surface treatment for silica particles which overlaps with the claimed range.
In response to applicant’s argument of unexpected results, or criticality, of the claimed range of the surface treatment layer, the data is not commensurate in scope with the claims. Regarding the data shown in the remarks, examiner notes that the thickness of the treatment layer on the silica is not the only difference between the inventive and comparative examples, but that the resin and epoxy monomer contents are also different, therefore it is difficult to attribute the improvement in performance only to the thickness of the treatment layer. It is also difficult to know how much the properties have improved compared to the comparative examples because the results are represented by shapes, which refer to ranges, therefore the actual test results can be much closer to each other than what the shapes imply.
The data is convincing in that it shows the improvement in the optical and physical properties with the inclusion of the surface treated hollow silica particles with a treatment layer of thickness between 3-50 nm, but the results are for specific components and percentages whereas claim 1 is directed to generic components in any amount. For example, the hollow particle utilized is hollow silica, but claim 1 is directed to any gas-containing particle. Therefore the claims are broader in scope than applicant’s data.
In response to applicant’s argument that a person skilled in the art would not look to Harmata for the surface treatment layer of the silica in Yano because they are in different fields, examiner reminds applicant that the skilled artisan would look to any reference related to the surface modification of silica particles for the information missing from Yano. Yano is in the field of optical displays, but the hollow silica is surface treated with alkoxy silanes to add functionalization and then react with the hard coat resin monomers. Harmata discloses surface modification of silica particles with alkoxysilanes provides applications such as a coupling or dispersal agent or an adhesion promoter, page 71 section 3.3.1.2. It is further explained that surface modification of filler particles controls the surface properties which affects both the mechanical and physical properties of the resulting polymer composite, page 84, section 3.6 first sentence. The surface modification improves the interaction between the filler surface and the polymer binder, 3.6 second paragraph, enabling it to be more uniformly dispersed with some facility. One of ordinary skill is familiar with the negative impacts on transmittance, haze, and viscosity that fillers may have if measures aren’t taken to prevent their aggregation. These applications would be of interest to the skilled person looking for references on surface modification of silica particles. Additionally, the outcome would be predictable, because Yano is already surface treating the hollow silica particles with alkoxy silanes and Harmata discloses the typical thickness of the treatment layer of alkoxy silanes on silica, therefore the combination of the teachings still produces the result of a surface treated hollow silica particle. The fact that Yano is in the polymer field of displays and Harmata is in the field of biocomposites does not affect what the combination suggests to one of ordinary skill in the art.
In response to applicant’s argument that Harmata does not teach the entire range up to 50 nm, examiner did not include in the rejection that it would have been obvious to produce a surface treated layer up to 50 nm thick. Harmata discloses a range that overlaps with the claimed range, which provides the basis for obviousness where it overlaps with the claimed range. Harmata furthermore discloses that a typical thickness is less than 5 nm, but examiner notes that Harmata does not teach away or discourage higher thicknesses. The prior art need not disclose the entire range for a prima facie case of obviousness. The range of less than 5 nm is very close to the claimed range of 5 nm-50 nm of claim 8, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). It is within the ambit of the skilled artisan to apply a surface treatment layer of 5 nm to the hollow silica particle with the motivation of optimizing the interaction between the particles and polymer binder.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., optical, adhesion, heat resistance properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s argument that the prior art does not suggest a motivation of achieving desirable optical or physical properties, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done,” it is clear there must be motivation to make the claimed invention but there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
For the above reasons, the 103 rejection over Yano in view of Harmata is maintained.
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.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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