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
The amendment filed on 08/01/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In paragraph [0009], line 3, “plurality of film sets is composed of “
In paragraph [0020], lines 6-7, “(for example, is composed of)”
In Abstract, line 1, “is composed of”
In support for the amendments, applicant points out to Figure 6. However, Figure
6 only supports “plurality of film sets” and each sets including a first film and a second film”. According to MPEP 2111.03(iv), The transitional phrase "composed of" has been interpreted in the same manner as either "consisting of" or "consisting essentially of," depending on the facts of the particular case. See AFG Industries, Inc. v. Cardinal IG Company, 239 F.3d 1239, 1245, 57 USPQ2d 1776, 1780-81 (Fed. Cir. 2001) (based on specification and other evidence, "composed of" interpreted in same manner as "consisting essentially of"); In re Bertsch, 132 F.2d 1014, 1019-20, 56 USPQ 379, 384 (CCPA 1942) "Composed of" interpreted in same manner as "consisting of"; however, the court further remarked that "the words ‘composed of’ may under certain circumstances be given, in patent law, a broader meaning than ‘consisting of.’"). In this instance, Figure 6 (part of the original specification) fails to support that each of the plurality of film sets consisting of only first and second films. Figure 6 only supports that each of the plurality of film sets includes a first film and a second film. Under BRI, “composed of” sometimes imply a deliberate act of putting something together, but not always whereas “consisting of” describes what something is made of or what it entails. Since the original specification and Figure of the original drawings clearly fails to support that each of the plurality of film sets always made of first and second film only, under BRI for the purpose of examination examiner will interpret “composed of” meaning that the each of the plurality of film sets can be made of more than just two films.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed on 08/01/2025 have been fully considered but they are not persuasive.
Applicant’s argument:
It can be seen that in Sano each film set is composed of at least two high-refractive index layers (films 102 and 104) and one low refractive-index layer film (103), and a film 105 is merely disposed on top of the film stack 106 and does not form part of the film set.
It can be seen that in Chen each lower cavity 120 is composed of two high-refractive index layers and one low-refractive index layer, while each upper filter cavity 130 is composed of two low-refractive-index layers and one high-refractive-index layer.
Neither Sano or Chen discloses the distinguish technical feature of the amended claim 1, “each film set of the plurality of film sets is composed of a first film and a second film which are stacked.”
Examiner’s response:
a) Examiner agrees that Sano teaches that each film set is composed of at least two high-refractive index layers (films 102 and 104) and one low refractive-index layer film (103), but disagrees that the film 105 is merely disposed on top of the film stack 106 and does not form part of the film set. In paragraph [0024], Sano teaches that “The multilayer film includes films 102 to 105”. Thus film 105 is part of the multilayer film. Further, even considering that film 105 is not part of the film set, Sano teaches in paragraph [0026] that “the film stack 106 may be configured by repeatedly stacking the films 102 to 104, and may be configured to include films other than the films 102 to 104.”. So considering the teaching of Sano one of ordinary skill in the art would anticipate that each set of the plurality of film sets including (being composed of) first and second film which are stacked. As it can be seen (annotated figure-1below) that M film sandwiched between two H films can be considered as the first film set and since they can be configured by “repeatedly stacking” as suggested by Sano the next set wherein the M film is sandwiched between the two H films are considered as the second film set. Further, based on the teachings of Sano it would be reasonable under BRI to even consider (annotated Fig. 2 below) that each film set includes one H film and one M film. Thus, Sano do teach that each film set of plurality of film sets being composed of a first a film and a second film which are stacked.
[AltContent: textbox (H Film/Second Film )][AltContent: ][AltContent: rect]
[AltContent: textbox (Second Film set)][AltContent: rect]
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[AltContent: textbox (M Film/Second Film )][AltContent: ][AltContent: textbox (First Film set)][AltContent: rect]
[AltContent: textbox (H Film/First Film )][AltContent: rect]
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[AltContent: ][AltContent: ][AltContent: textbox (Second Film Set)][AltContent: textbox (First Film Set)][AltContent: ][AltContent: ]
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b) Examiner agrees that Chen discloses that each lower cavity 120 is composed of two high-refractive index layers and one low-refractive index layer, while each upper filter cavity 130 is composed of two low-refractive-index layers and one high-refractive-index layer which actually meets the claimed limitation of each film set of the plurality of film sets including a first film and a second film which are stacked.
c) As explained in a) and b) above, both Sano and Chen teaches the claimed limitations and thus the rejection is proper and maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The newly added limitation, “being composed of” is considered new matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor (s), at the time of the application was filed, had possession. As explained above, Figure 6 of the instant application shows that the plurality of film sets include multiple films but does not in any way limit the plurality of film sets to have only first and second film. The original disclosure also failed to explain in any way that would reasonably convey to one of ordinary skill in the relevant art that the plurality of film sets composed of (“consisting of” or “consisting essentially of “) only a first and a second film that are stacked.
Further, according to MPEP 2111.03 (iv) “however, the court further remarked that "the words ‘composed of’ may under certain circumstances be given, in patent law, a broader meaning than ‘consisting of.’"). In this instance, Figure 6 (part of the original specification) fails to support that each of the plurality of film sets consisting of only first and second films. Figure 6 only supports that each of the plurality of film sets includes a first film and a second film. Under BRI, “composed of” sometimes imply a deliberate act of putting something together, but not always whereas “consisting of” describes what something is made of or what it entails. Since the original specification and Figure of the original drawings clearly fails to support that each of the plurality of film sets always made of first and second film only, under BRI for the purpose of examination examiner will interpret “composed of” meaning that the each of the plurality of film sets can be made of more than just two films.
Claims 2-10 are rejected due to their dependencies.
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.
Claim(s) 1, 2, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sano et al., (hereinafter Sano), US 2017/0097445.
As to claim 1, Sano discloses and shows in Fig. 1A, an optical film structure (10) comprising a plurality of film sets (102-105) stacked along an axis, and each film set (102 and 103 being one set and 104 and 105 being the other set) of the plurality of film sets being composed of a first film (102, 104) and a second film (103, 105) which are stacked, wherein for each film set of the plurality of film sets, a refractive index of the first film is greater than a refractive index of the second film, (paragraph 0025, 0026) and a thickness ratio of the first film to the second film is greater than 0 and less than or equal to 0.28. (paragraph 0043; In the example the H films 102 and 104 have a thickness of 8.2 nm and the M film 103 has a thickness of 67 nm and thus the ration of the first film and the second film 8.2/67 = 0.12 which is greater than 0 and less than 0.28 and thus meeting the claimed limitation).
As to claim 2, Sano discloses the optical film structure as claimed in claim 1, wherein in one film set of the plurality of film sets, the thickness ratio of the first film to the second film is 0.12 (as explained above regarding claim 1 and thus meeting the claimed range of 0.01~0.27.
As to claim 7, Sano disclose the optical film structure as claimed in claim 1, wherein in one film set of the plurality of film sets, a material of the first film is titanium dioxide, tantalum pentoxide, niobium pentoxide, silicon oxide, silicon nitride, tin dioxide or zinc sulfide, and a material of the second film is silicon dioxide, magnesium fluoride, barium fluoride, aluminum fluoride or strontium fluoride (paragraph 0043).
As to claim 8, Sano shows that the optical film structure as claimed in claim 1, wherein the first film of each film set of the plurality of film sets contacts the second film of another film set of the plurality of film sets that is adjacent thereto.(Fig. 1, the first film 104 of film set (04 and 105 contacts the second film 103 of another film set 102 and 103 that is adjacent thereto.)
Claim(s) 1, 2, and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen, US 7450306.
As to claim 1, Chen discloses and shows in Fig. 1, an optical film structure (100) comprising a plurality of film sets (120, 130) stacked along an axis, and each film set of the plurality of film sets being composed of a first film (121, 131) and a second film (122, 132) which are stacked, wherein for each film set of the plurality of film sets, a refractive index of the first film is greater than a refractive index of the second film, (col.3, lines 22- col. 4, line 5) and a thickness ratio of the first film to the second film is greater than 0 and less than or equal to 0.28. (the several choice of thickness shown in col. 4 for the high refractive index layer such as tantalum pentoxide (first film) having a thickness of 28.5 nm and the low refractive index layer such as silicon dioxide (second film) having a thickness of 148.8 and thus the ratio of the first film and the second film being 28.2/148.8 = 0.19 which is greater than 0 and less than 0.28 and thus meeting the claimed limitation).
Accordingly, claim 1 is anticipated by Chen.
As to claim 2, Chen discloses the optical film structure as claimed in claim 1, wherein in one film set of the plurality of film sets, the thickness ratio of the first film to the second film is 0.19 (as explained above regarding claim 1 and thus meeting the claimed range of 0.01~0.27.
As to claim 7, Chen disclose the optical film structure as claimed in claim 1, wherein in one film set of the plurality of film sets, a material of the first film is titanium dioxide, tantalum pentoxide, niobium pentoxide, silicon oxide, silicon nitride, tin dioxide or zinc sulfide, and a material of the second film is silicon dioxide, magnesium fluoride, barium fluoride, aluminum fluoride or strontium fluoride (col. 2, lines 51-55; col. 4).
As to claim 8, Chen shows that the optical film structure as claimed in claim 1, wherein the first film of each film set of the plurality of film sets contacts the second film of another film set of the plurality of film sets that is adjacent thereto.(Fig. 1).
As to claim 9, Chen shows in col, 4, lines 10-15 that the thickness ratio of the first film (high refractive index layer such as tantalum pentoxide) and the second film (low refractive index layer such as silicon dioxide) of each film set of the plurality of film sets is the same. (layers 1 and 2 make one film set having a thickness of 28.2 and 89.3 respectively and layer 4 and 5 make one film set having a thickness of 89.3 and 28.2 respectively and thus having a same thickness ratio for each film set).
As to claim 10, Chen discloses the optical film structure as claimed in claim 1, wherein the thickness ratio of the first film (high refractive index layers) to the second film (low refractive index layers) of one film set of the plurality of film sets is different from the thickness ratio of the first film to the second film of another film set of the plurality of film sets (col. 4, lines 1-41).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Chen.
As to claims 3-6, Chen discloses the optical film structure as claimed in claim 1, wherein in one film set of the plurality of film sets, a thickness of the high refractive index films (the first film) are 0.5 of one eighth of a central wavelength or 1.4, 1.6, 1.666, 1.8 times of one fourth of central wavelength (col. 2, lines 19-50; meets the claimed range of 0.08-0.50) and a thickness of the low refractive index films are 0.5 times of one fourth of central wavelength or 1.4, 1.6, 1.666 or 1.8 times one eighth of central wavelength.
Chen fails to explicitly disclose that the thickness of the second film is 1.80-6.20 times of a quarter wavelength of the incident light.
However, according to MPEP 2144(IV), where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed dimension wouldn’t perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Further, Chen also discloses that different examples disclosed in the reference are intended to illustrate rather than limit the invention and variations may be made to the embodiments (col. 6, lines 10-15).
Therefore, it would have at least been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Chen by including second films that have a thickness greater than or equal to 1.80 times of one quarter wavelength of the incident light to obtain a device for the advantage of obtaining an optical filter that can minimize unwanted reflection, manipulate the propagation of light and thus achieve specific interference effects and desired transmittance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 TARIFUR RASHID CHOWDHURY whose telephone number is (571)272-2287. The examiner can normally be reached M-F: 8 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allana L. Bidder can be reached at (571)2725560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877