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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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.
Response to Arguments
Applicant’s arguments with respect to claim are not convincing for the following reasons. Applicant argues the primary reference doesn’t teach nanoparticles but a multilayer stack. Applicants may not have noticed the Abstract clearly teaching nanoparticles in the layer.
Applicant argues the water-soluble polymers are different from a curable acrylate resin. Clearly Saito teaches the infrared absorbing nanoparticle layer (curable resin layer) includes curable acrylate resin [67-72].
Applicant argues the instant specification; however, limitations from the specification are not read into the claims. Applicant is welcomed to amend the claims to what is argued.
Applicant argues a nanoparticle layer as claimed in claim 1; however, the mapping is proper and applicant’s arguments are not convincing.
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
THIS ACTION IS MADE FINAL. 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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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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