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
Claims 11 - 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 15, 2025.
Applicant's election with traverse of claims 1 - 10 in the reply filed on October 15, 2025 is acknowledged. The traversal is on the ground(s) that because the product claims are directed to a product that is definer at least in part by the process of its manufacture then these are product-by-process claims and are not patentably distinct from the method claimed because the product as claimed is obtained by the specific process recited in the method claims. This is not found persuasive because as stated in MPEP 2113, "[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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). Since product claims are examined by their structure, the product can be made by a different process, making them distinct from the process.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1 - 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Begon et al (US 2008/0314499) in view of Liu et al (US 2020/0157395).
With regards to claim 1, Begon teaches a method of direct dry film (DDF) laminating a compound curve substrate (Abstract) comprising:
Providing a chamber including a bladder (Figure 1 item 11 and Figure 2 item 4)
Positioning a frame in the chamber, the frame forming an interior space (Figure 2 item 1)
Positioning a compound curve substrate in the interior space (Figure 2 item 20)
Suspending, by the frame, an adhesive sheet over the compound curve substrate (Figure 2 item 30, paragraph 132)
Structurally altering the top liner at one or more locations corresponding to curvature of the compound curve substrate (paragraph 117)
Evacuating the chamber to induce a vacuum (paragraphs 38 and 50)
Deploying the bladder into contact with the adhesive sheet to move the sheet into conformed contact with a surface of the compound curve substrate to bond the sheet to the surface (paragraph 112)
Retracting the bladder (paragraph 114)
Venting the chamber (paragraph 115)
Begon states that any adhesive can be applied to the surface of the optical lens (paragraph 59). Begon fails to explicitly disclose that the adhesive is an optically clear adhesive sheet including a top liner.
Liu discloses an optically clear adhesive film used to bond a cover glass, a touch panel and other layers in display devices (paragraph 2), in the same field of endeavor as Begon, where Liu states that the OCA sheet includes a top liner (paragraph 143).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used Liu’s OCA sheet in Begon’s method. The rationale being that, as stated, OCA are used to fill the air gaps between different layers of the display devices and improves the image quality and durability of the displays (paragraph 2).
With regards to claim 2, the teachings of Begon and Liu are presented above. Additionally, Liu teaches that the OCA sheet further includes a bottom liner, and the method further comprises removing the bottom liner prior to evacuating the chamber (paragraph 143).
With regards to claim 3, the teachings of Begon and Liu are presented above. Additionally, Liu teaches that structurally altering the top liner comprises scoring the top liner (paragraph 143).
With regards to claim 4, the teachings of Begon and Liu are presented above. Additionally, Liu teaches that structurally altering the top liner comprises cutting the top liner (paragraph 143).
With regards to claims 5 and 6, the teachings of Begon and Liu are presented above. While Begon and Liu fail to explicitly disclose that the method comprises adhering a second substrate that is a flexible film or a rigid compound curve substrate having a curvature profile matching a curvature profile, one of ordinary skills in the art would appreciate that the number of substrates added would depend on the desired thickness of the final product. Additionally, according to section 2144 of the MPEP, the duplication of parts has been considered to not have patentable weight as per In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
With regards to claim 7, the teachings of Begon and Liu are presented above. While Begon and Liu fail to explicitly disclose that the method comprises trimming the OCA sheet bonded on the surface of the compound curve, one of ordinary skills in the art would appreciate that, to ensure a proper shape of the final product, one would be compelled to trim excess material.
With regards to claim 8, the teachings of Begon and Liu are presented above. Additionally, Begon teaches that the adhesive sheet is maintained in conformed contact with the compound curve substrate for a predetermined time period (paragraphs 102 and 112).
With regards to claim 9, the teachings of Begon and Liu are presented above. Additionally, Begon teaches that the method further comprises heating at least one of the chamber, the adhesive sheet and the compound curve substrate (paragraph 63).
With regards to claim 10, the teachings of Begon and Liu are presented above. Additionally, Begon teaches that the adhesive sheet is coupled to the frame by a plurality of elastic members (Figure 1 item 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746