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
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.
Claim(s) 1-3, 7-8 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi CN-109996841-A.
Regarding claim 1, Kikuchi teaches an optical film comprising: a polyimide base material (page 4 2nd last paragraph); and a hard coat layer (page 4 2nd last paragraph) laminated on the polyimide base material, wherein the hard coat layer is composed of a cured film of polysiloxane (page 4 last paragraph) having a cation-polymerizable organic functional group (page 4 last paragraph epoxy group), the optical film has a pencil hardness of 7H or more (page 7 4th paragraph).
Kikuchi does not explicitly disclose and when the optical film is cut into a rectangular shape having a short side with a length of 50 mm parallel to the machine direction and a long side with a length of 150 mm parallel to the transverse direction perpendicular to the machine direction, and the cut sample is placed on a flat surface, the average value of the distance between both ends of one short side and the distance between both ends of the other short side is 18 mm or more however the film of Kikuchi is meant to solve problems of curling (see page 2 first paragraph after “technical problem solved by the invention”) therefore the limitation of the optical film is cut into a rectangular shape having a short side with a length of 50 mm parallel to the machine direction and a long side with a length of 150 mm parallel to the transverse direction perpendicular to the machine direction, and the cut sample is placed on a flat surface, the average value of the distance between both ends of one short side and the distance between both ends of the other short side is 18 mm or more would be obvious.
Regarding claim 2, Kikuchi teaches the optical film according to claim 1, wherein the organic functional group includes an epoxy group (page 4 last paragraph).
Regarding claim 3, Kikuchi teaches the optical film according to claim 1, wherein the base material has a thickness of 20 to 80 μm, and the hard coat layer has a thickness of 5 to 30 μm (page 24 2nd paragraph and page 25 3rd last paragraph disclose overlapping ranges.
MPEP 2144.05 states: I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) ("[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds."); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.
A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). The patent claim at issue was directed to a weight plate having 3 elongated openings that served as handles for transporting the weight plate. Multiple prior art patents each disclosed weight plates having 1, 2 or 4 elongated openings. 392 F.3d at 1319, 73 USPQ2d at 1226. The court stated that the claimed weight plate having 3 elongated openings fell within the "range" of the prior art and was thus presumed obvious. 392 F.3d at 1322, 73 USPQ2d at 1228. The court further stated that the "range" disclosed in multiple prior art patents is "a distinction without a difference" from previous range cases which involved a range disclosed in a single patent since the "prior art suggested that a larger number of elongated grips in the weight plates was beneficial… thus plainly suggesting that one skilled in the art look to the range appearing in the prior art." Id.
Regarding claim 7, Kikuchi teaches the optical film according to claim 1, wherein the hard coat layer is a cured film of a composition comprising a polysiloxane (page 4 last paragraph) having a cation-polymerizable organic functional group (page 30 last paragraph before preparation of hard coat film) and a cationic polymerization initiator (page 30 1st paragraph after preparation of hard coat film).
Regarding claim 8, Kikuchi teaches he optical film according to claim 1, wherein the hard coat layer consists of a single layer as there is no teaching of separate layers.
Regarding claim 10, Kikuchi teaches the optical film according to claim 1, wherein the hard coat layer has a thickness of 15 to 30 µm (page 24 2nd paragraph and see MPEP 2144.05 cited above).
Regarding claim 11, Kikuchi teaches the optical film according to claim 10, wherein the organic functional group includes an epoxy group (page 30 last paragraph before preparation of hard coat film).
Regarding claim 12, Kikuchi teaches the optical film according to claim 10, wherein the base material has a thickness of 20 to 80 µm.
Regarding claim 13, Kikuchi teaches the optical film according to claim 10, wherein the hard coat layer is a cured film of a composition comprising a polysiloxane (page 4 last paragraph) having a cation-polymerizable organic functional group (page 30 last paragraph before preparation of hard coat film) and a cationic polymerization initiator (page 30 1st paragraph after preparation of hard coat film).
Regarding claim 14, Kikuchi teaches he optical film according to claim 10, wherein the hard coat layer consists of a single layer as there is no teaching of separate layers.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi CN-109996841-A in view of Isojima US 2022/0075227.
Regarding claim 4, Kikuchi teaches all the limitations of claim 4 except a display member comprising the optical film according to claim 1. However Isojima teaches a display with a hard coat layer. Kikuchi teaches a hard coat (fig. 20 hard coat layer 151). Kikuchi teaches a hard coat layer that solves problems associated with low hardness and curling (see page 2 first paragraph after “technical problem solved by the invention”). Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to combine Kikuch and Isojima to provide a display with hard coat that solves problems associated with low hardness and curling.
Regarding claim 5, Kikuchi teaches all the limitations of claim 5 except a display device comprising a circularly polarizing plate and the optical film according to claim 1 provided on a display panel. However Isojima teaches a display comprising a circularly polarizing plate ((fig. 20 circular polarizer 60)) and a similar film ( first resin layer serving as hard coat 151 [0368]) to the optical film according to claim 1 provided on a display. Kikuchi teaches a hard coat layer that solves problems associated with low hardness and curling (see page 2 first paragraph after “technical problem solved by the invention”). Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to combine Kikuch and Isojima to provide a display with hard coat that solves problems associated with low hardness and curling.
Regarding claim 6, Kikuchi combined with Isojima teach the display device according to claim 5, Isojima also teaches further comprising a resin film (fig. 20 resin film 152) provided between the circularly polarizing plate and the optical film.
Allowable Subject Matter
Claims 9 and 15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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/PHU VU/Primary Examiner, Art Unit 2871
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