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 .
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.
Claims 1-11, 13-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 10,303,218 to Jones in view of U.S. Pat. No. 6,525,866 to Lin, and further in view of U.S. Pat. No. 5,587,403 to Shustack.
Referring to claim 1, Jones discloses a consumer electronic product (100, Figs. 1A and 1B) comprises (sic):
a housing (130) comprising a front surface, a back surface, and side surfaces;
electrical components at least partially within the housing, the electrical components comprise a controller, a memory, and a display (120), the display is at or adjacent to the front surface of the housing (see Fig. 1A and Fig. 26, as well as col. 29, line 41 – col. 30, line 45);
a cover substrate (1400a, Fig. 14A) disposed over the display (120), wherein at least one of a portion of the housing or the cover substrate comprises a foldable apparatus (101, Fig. 1B) comprising:
a foldable substrate (1402a) comprising a glass-based material or a ceramic-based material (see col. 19, line 56 – col. 20, line 3); and
a polymer-based portion (“filler” 1406a) positioned between the foldable substrate (1402a) and the display device (see col. 20, lines 4-13). Jones does not expressly disclose the polymer-based portion comprising an index of refraction in a range from about 1.49 to about 1.55.
Lin discloses devices for displaying images (see ABSTRACT) having refractive index values of polymer-based materials (see col. 8, lines 37-47), wherein the polymer-based material has “a refractive index of about 1.5,” which is within the range of about 1.49 to about 1.55. As such, it would have obvious to a person having ordinary skill in the art at the time of the invention, to modify the device of Jones to include a polymer-based material having an index of refraction within the range of about 1.49 to about 1.55, as taught by Lin, to achieve optical index matching and to eliminate light scattering for maximum light transmission.
Furthermore, Jones in view of Lin implicitly discloses a magnitude of a difference between the index of refraction of the polymer-based portion (“filler,” 1406) and an index of refraction of the foldable substrate (1402a) is about 0.1 or less, since this is equivalent to “substantially matched” – see col. 8, lines 37-47 of Jones.
Likewise, Jones in view of Li does not explicitly disclose the polymer-based portion comprises the product of curing a composition, the composition comprising the following in weight % (wt%):
0-25 wt% of a difunctional urethane-acrylate oligomer;
0-5 wt% of a difunctional cross-linking agent; and
75-100 wt% of a reactive diluent.
Shustack (‘403) discloses radiation curable primary coating composition comprising urethane oligomer and one or more diluent monomer terminated with at least one end group capable of reacting with reactive terminus of the oligomer (abstract) which reads on the reactive diluent monomer in present claim 337. See example II, wherein the coating composition comprises 56.0 parts by weight of urethane acrylate oligomer (i.e. reads on the urethane acrylate oligomer in present claim 337) and 29.99 parts by weight of polyethylene glycol nonylphenylether acrylate (i.e. reads on the reactive diluent in present claim 337). The cured film has a refractive index of 1.501 (col. 19, lines 1-54) which reads on the refractive index of polymer product in present claim 337. It is noted that difunctional crosslinking agent is present in amounts of 0% by weight and therefore nor required.
Shustack fails to disclose a composition comprising presently claimed amount of urethane acrylate oligomer and reactive diluent.
However, Shustack in the general disclosure teach that monomer (B) comprise from 5 to about 80 percent by weight of the composition (col. 8, lines 56-58) which overlaps with the amount of reactive diluent in present claim 337). The oligomer is present in amounts of about 10 percent to about 90% by weight (col. 5, lines 55-59) which overlaps with the amount of urethane acrylate oligomer in present claim 337. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Shustack, it would have been obvious to one skilled in art prior to the filing of present application, to include urethane acrylate oligomer and reactive diluent monomer in overlapping amounts, absent evidence to the contrary.
Regarding claim 2, examples of reactive diluent monomer, Shustack, include isooctyl acrylate (col.9, lines 1-4).
Regarding claim 3, Shustack teaches that the moiety providing a reactive group (i.e. an acrylate or methacrylate) has reactive termination which allows it to crosslink with the rest of composition upon ultraviolet curing. Examples include polyalkylene glycol nonylphenylether acrylate (col. 9, lines 21-33).
Regarding claims 4 and 5, difunctional crosslinking agent is present in amounts of 0% by weight and therefore not required.
Regarding claims 6 and 7, see example II, of Shustack, wherein the cured film has a glass transition temperature of -31.70C (col. 19, lines 46-52).
Regarding claim 8, Shustack teaches that the composition may optionally comprise from about 1.0% to about 10% by weight if a photoinitiator (col. 4, lines 58-59) which overlaps with the amount of photoinitiator in present claim 1. The photoinitiator is only required in embodiments wherein the coating is to be ultraviolet radiation cured (col. 10, lines 62-65) which reads on curing the composition comprises irradiating the composition with at least one wavelength of light that the photoinitiator is sensitive to in present claim 344.
Regarding claim 9, claim is written in a product-by-process form. Even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 10 and 11, Sushtack teaches that coating composition comprises organofunctional silane in amounts of about 0.1 to about 3.0% by weight (col. 4, lines 56-57) which read on silane coupling agent and its amount in present claim 346. Examples of organofunctional silanes include mercapto-functional silanes (col. 10, lines 19-23).
Regarding claims 13 and 14, Sushtack teaches that primary coating when cured should be transparent (col. 5, lines 34-47). Given that composition is formed from substantially similar components, has a refractive index falling within the presently claimed range and product should be transparent, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Sushtack, to have an average transmittance of about 90% or more measured over wavelengths in a range from 400 nm to 760 nm, and haze of about 0.2% or less, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 15, see example II, of Shustack, wherein the elongation at break is 88.6% (col. 20, lines 15-16).
Regarding claim 17, see example II, of Sushtack, wherein the modulus is 229.5 psi (col. 20, lines 9) which is equivalent to 1.6 MPa (i.e. reads on the elastic modulus in present claim 353).
Regarding claim 18, given that composition is formed from substantially similar components, has a refractive index, glass transition temperature, elongation at break and elastic modulus falling within the presently claimed range, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Shustack, to exhibit the presently claimed storage modulus, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 19 and 20, given that the composition of Sushtack is formed from substantially similar components, has a refractive index and glass transition temperature falling within the presently claimed range, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Sushtack to exhibit the claims properties (i.e. can fully recover after being extended to a strain of 40% at a strain rate of 10% strain per minute; and withstand 2,000 bending cycles at a parallel plate distance of 3 mm), absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Claims 1-5, 8-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, and further in view of Shustack (WO 98/33081).
Regarding claim 1, Shustack discloses, in example 2 (Table 4), a primary coating composition comprising IRR 245 oligomer (i.e. reads on urethane acrylate oligomer in present claim 1, see page 31, lines 13-14), Ph 4003 monomer (i.e. reads on the reactive diluent in present claim 337). The cured composition has a refractive index of 1.48 (page 35, lines 1-4) which reads on refractive index of about 1.49 in the present claim 1. It is noted that difunctional crosslinking agent is present in amounts of 0% by weight and therefore nor required.
Shustack fails to disclose a composition comprising presently claimed amount of urethane acrylate oligomer and reactive diluent.
However, Shustack in the general disclosure teach that the primary coating composition comprises from about 10% to about 90% by weight of a reactive terminated urethane oligomer (i.e. overlaps with the amount of urethane acrylate oligomer in present claim 1), and from about 5% to about 80% by weight of a monomer diluent which is terminated with at least one end group capable of reacting with the reactive terminus (page 20, lines 18-28) which overlaps with the amount of reactive diluent in present claim 337. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Shustack, it would have been obvious to one skilled in art prior to the filing of present application, to include urethane acrylate oligomer and reactive diluent monomer in overlapping amounts, absent evidence to the contrary.
Regarding claim 2, examples of reactive diluent monomer, in Shustack, include isooctyl acrylate (page 16, lines 3-6).
Regarding claim 3, monomer diluent is terminated with at least one end group capable of reacting with the reactive terminus (page 20, lines 26-28) and the reactive end group includes (meth)acrylic group (page 15, lines 14-24).
Regarding claims 4 and 5, difunctional crosslinking agent is present in amounts of 0% by weight and therefore not required.
Regarding claim 8, Shustack teaches that the composition comprises from about 0.5% to about 10% by weight of a photoinitiator (page 18, lines 31-32) which overlaps with the amount of photoinitiator in present claim 344. If the composition is to be UV cured, a photoinitiator is needed (page 18, lines 4-8) which reads on curing the composition comprises irradiating the composition with at least one wavelength of light that the photoinitiator is sensitive to in present claim 8.
Regarding claim 9, claim is written in a product-by-process form. Even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 10 and 11, Sushtack teaches that coating composition comprises organofunctional silane in amounts of about 0.1 to about 3.0% by weight (page 17, lines 30-32) which read on silane coupling agent and its amount in present claim 10). Examples of organofunctional silanes include 3-mercaptopropyl triethoxy silane (page 17, lines 23-26).
Regarding claims 13 and 14, Sushtack teaches that amount of photintitiator added must not interfere with the optical clarity of the cured coating (page 18, lines 9-12). Given that composition is formed from substantially similar components, has a refractive index falling within the presently claimed range and amount of photoinitiator added is such that it does not interfere with optical clarity of the cured product, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Sushtack, to have an average transmittance of about 90% or more measured over wavelengths in a range from 400 nm to 760 nm, and haze of about 0.2% or less, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977)
Regarding claims 15, 16 and 17, see example 2, wherein the cured product has elongation to break of about 140.6% (i.e. reads on ultimate elongation of about 50% or more in present claim 351), tensile strength of 153.8 psi (i.e. about 1.0 MPa and reads on tensile strength in present claim 352) and tensile modulus of 204.2 psi (page 35, lines 1-4) which is equivalent to 1.4 MPa and reads on elastic modulus in present claim 17.
Regarding claim 18, given that composition is formed from substantially similar components, has a refractive index, glass transition temperature, tensile strength, elongation at break and elastic modulus falling within the presently claimed range, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Shustack, to exhibit the presently claimed storage modulus, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977)
Regarding claims 19 and 20, Shustack teaches that primary coating when cured forms a soft, rubbery, compliant material which serves as a buffer to cushion and protect the fiber by reliving the stresses when the fiber is bent. The tensile modulus must be low to cushion and protect the fiber by readily relieving stresses on fiber which can induce microbending. It is necessary for the primary coating to have a low glass transition temperature to ensure that the coating in rubbery state throughout the possible use temperature range (page 1, lines 18-33; page 2, lines 1-2). Given that composition, of Sushtack, is formed from substantially similar components, and the cured product provides cushioning to relieve stresses that cause the fiber to bend, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymer product, of Sushtack, to exhibit the claimed properties (i.e. can fully recover after being extended to a strain of 40% at a strain rate of 10% strain per minute; and withstand 2,000 bending cycles at a parallel plate distance of 3 mm), absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Claims 1 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, and further in view of Shustack (US 5,587,403 - hereafter Shustack ‘403) or Shustack (WO 98/33081 - hereafter Shustack ‘081) independently, in view of Fabian et al (US 2003/0053782 A1). The discussion with respect to Shustack ‘403 and Shustack ‘081 in paragraphs 8-9 above is incorporated here by reference.
Shustack ‘403 and Shustack ‘081 are silent with respect to difunctional crosslinking agent, and thermoplastic elastomer. However, Fabian et al in the same field of endeavor teach a curable coating composition for coating an optical fiber including a block copolymer and at least one reactive monomer (abstract). The curable coating composition possesses enhanced thermal and hydrolytic stability. The coated optical fiber has increased or enhanced mechanical properties such as modulus, toughness, tensile strength and percent elongation (paragraphs 0018-0019). See example 1, wherein the composition comprises isodecyl acrylate (i.e. a reactive diluent), 5% by weight of crosslinking agent (i.e. reads on the amount of crosslinking agent in present claim 337), and a thermoplastic elastomer (Table 1 and paragraph 0094). The composition exhibits a Tg of -500C (paragraph 0098). Examples of polyfunctional ethylenically unsaturated monomers include alkoxylated bisphenol A diacrylate (paragraph 0033).
Therefore, in light of the teachings in Fabian et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to include thermoplastic elastomer, and crosslinking agent in overlapping amounts, in the composition, of Shustack ‘403 or Shustack ‘081, independently, for above mentioned advantages.
Claims 1, 2, 6-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, in view of Shustack and further in view of Steeman et al (US 2016/0326398 A1).
Regarding claim 1, Steeman et al disclose radiation curable coatings for use as a primary coating for optical fibers comprising urethane acrylate oligomer (abstract). See example VIII wherein the composition comprises 49.5% by weight of oligomer and 47.0% by weight of diluent monomer, and 1.0% by weight of tripropyleneglycol diacrylate (Table 2, and paragraph 0240) which reads on the difunctional crosslinking agent and its amount in present claim 337. The refractive index of the coatings is 1.48 or higher and 1.51 or higher (paragraph 0174) which overlaps with the refractive index in present claim 337.
Steenan et al fail to disclose a composition comprising presently claimed amount of urethane acrylate oligomer and reactive diluent.
However, Steenan et al in the general disclosure teach that coating composition comprises from about 20% to about 80% by weight of oligomer (i.e. overlaps with the amount of urethane acrylate oligomer in present claim 337), and from about 20% to about 80% by weight of a diluent (paragraphs 0136 and 0138) which overlaps with the amount of reactive diluent in present claim 337. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Sheenan et al, it would have been obvious to one skilled in art prior to the filing of present application, to include urethane acrylate oligomer and diluent monomer in overlapping amounts, absent evidence to the contrary.
Regarding claim 2, examples of diluent monomers include isodecyl acrylate (paragraph 0137). It is noted that isodecyl acrylate is a homolog of isooctyl acrylate. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Regarding claims 6 and 7, primary coating has a Tg of from -250C to -550C (paragraph 0031).
Regarding claim 8, see example VIII, wherein the composition comprises 1.1% by weight of photoinitiator (Table 2 and paragraph 0240). Preferably UV light is used to cure the coatings (paragraph 0169) which reads on curing the composition comprises irradiating the composition with at least one wavelength of light that the photo-initiator is sensitive to in present claim 344.
Regarding claim 9, claim is written in a product-by-process form. Even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 10 and 11, see example VIII, wherein the composition comprises 0.9% by weight of ɣ-mercaptopropyl trimethoxy silane (Table 2 and paragraph 0240). It is the examiner’s position that instantly claimed amount of 1% and that taught by Steeman et al i.e. 0.9% are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties
Regarding claim 15, see example VIII, wherein the composition exhibits elongation of 136% (paragraph 0204).
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, in view of Shustack (US 5,587,403 - hereafter Shustack ‘403) or Shustack (WO 98/33081 - hereafter Shustack ‘081) independently, in view of Botelho et al (US 2015/0353757 A1). The discussion with respect to Shustack ‘403 and Shustack ‘081 in paragraphs 8-9 above is incorporated here by reference.
Shustack ‘403 and Shustack ‘081 are silent with respect to difunctional crosslinking agent.
However, Botelho et al in the same field of endeavor teach a coating composition for optical fiber (abstract). The base composition may include one or more radiation curable crosslinker oligomers, one or more radiation curable diluent monomers, one or more non-radiation curable monomers, and one or more curing agents (paragraph 0081). The composition further comprises an oligomer having two or more acrylate groups and includes urethane groups (see claims 11 and 12). The total oligomer content of the radiation-curable coating composition may be less than 5 wt% (paragraph 0097) which overlaps with the amount of urethane diacrylate monomer in present claim 337. The total monomer content is between about 5 to about 95 wt% (paragraph 0096). The urethane oligomers are most commonly multifunctional urethane diacrylates that are included as crosslinking agents (paragraph 0068). The selection of a known material 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, in light of the teachings in Botelho et al and case law, it would have been obvious to one skilled in art prior to the filing of present application, to include the urethane diacrylates as crosslinking agents, in coating composition, of Shustack ‘403 or Shustack ‘081, independently, absent evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY Q EDWARDS whose telephone number is (571)272-2042. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/Anthony Q Edwards/Primary Examiner, Art Unit 2841
June 9, 2026
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