DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant’s election to Group I claims 1-15 and 18 without traverse is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
Re claim 1, the preamble is to a composition as compared to the body of the claim to layers. Further, the relationship to the nanoparticle layer and curable resin layer is not present, thus it is not clear to the structure. The Examiner interprets the claims as set forth below.
Re claim 18, the “any of claims 1 to 15 claim 1” is not clear which claims are relied upon.
Re claim 2, It is not clear whether the claimed narrower ranges in line 2 (those ranges following “optionally”) are limitations that are part of the claim which renders the claim indefinite. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. See MPEP § 2173.05( c and d). The specification lacks guidance and direction in this regard. For purposes of Examination, the interpretation of this claim will be that the thickness is of 0.4 micrometers to 6 micrometers. Similar rationale applies to claims 3 and 5.
Re claim 6, It is not clear whether the claimed narrower ranges in line 2 (those ranges following “optionally”) are limitations that are part of the claim which renders the claim indefinite. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. See MPEP § 2173.05( c and d). The specification lacks guidance and direction in this regard. For purposes of Examination, the interpretation of this claim will be that the aspect ratio is 2:1 to 12:1.
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.
Claims 1-5, and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO2015190536).
Re claims 1-5, 9-10, 12, and 18, Saito discloses optical reflection film comprising substrate, optical reflection layer (corresponding to claimed nanoparticle layer), infrared absorbing nanoparticle layer (corresponding to claimed curable resin layer), and heat dissipation promotion layer [10]. The optical reflection layer (nanoparticle layer) has a thickness of 1-100 microns [24] and water soluble polymer such as acrylate resin, i.e. curable resin, and metal oxide nanoparticles [27, 30]. The metal oxide nanoparticles include silica [25-26, 37] having average particle size of 100 nm or less [38] in an amount of 20-90 wt.% [39]. Given that the amount of nanoparticles can be as high as 90 wt.%, it is clear the amount of curable resin would necessarily be less than 40 vol.% or 30 vol.% as claimed. The infrared absorbing nanoparticle layer (curable resin layer) includes curable acrylate resin [67-72].
In light of the overlap between the claimed film and the composition presently claimed, it would have been obvious to one of ordinary skill in the art to use a film that is both disclosed by Saito and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Re claim 11, the curable resin includes those made from di(meth)acrylate [72].
Re claim 13, when the optical reflection layer (nanoparticle layer) includes 90 wt.% nanoparticles, given the high amount of nanoparticles in the layer, the nanoparticles would not be considered dispersed in the curable resin.
Re claim 14, the curable resin includes 0.5 to 30 parts photopolymerization initiator per 100 parts resin [80].
Re claim 15, the curable resin comprises additives including surfactant [49, 82].
Re claim 16, although there is no disclosure that the optical reflection film is a hardcoat, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. hardcoat, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art film and further that the prior art structure which is a film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Re claim 17, given that Saito discloses film, i.e. hardcoat as presently claimed, the film would necessarily inherently have the same haze as claimed.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO2015190536) in view of US 20180265669 to He et al.
Saito is relied upon above.
Re claim 6-7, Saito is silent to the ratio and size of the nanoparticle.
He teaches the overlapping ratio and size silica in a similar curable resin composition. See published claim 1, [48], [133-35], [142] He where the size and ratio aid with fluidity and other properties.
Therefore it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to have modified the silica nanoparticles of Saito, to have used, added or substituted those of He for at least fluidity and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO2015190536) in view of US 20180265669 to He et al. and further in view of Taniguchi (JP20111129250).
The combination is relied upon above.
Re claim 8, Saito dos not disclose that the nanoparticles have a silane coating.
Taniguchi discloses optical film [1] comprising silica treated with silane to improve adhesion between the silica and binder and produce coating with high hardness [53].
In light of the motivation for using silica treated with silane disclosed by Taniguchi as described above, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use silane coating on the silica nanoparticle of Saito in order to improve adhesion and hardness.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
US 20220169888 A1 to Zhang et al. teaches [107-8], Zhang teaches alumina nanoparticle layer 0.33 microns.
US 20160108258 A1 to Masuda teaches the nanoparticle coating layer dispersed in water.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787