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 .
Status of Claims
Claims 1-14 are pending in the current application.
Claim 14 is withdrawn from consideration in the current application.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on June 18, 2026 is acknowledged.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
The requirement is still deemed proper and is therefore made FINAL.
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 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 1 recites the phrase "for example" that renders the claim indefinite, because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if the recited “a wavelength interval of, for example, 1 nm” requires the interval of 1 nm, or if the interval can be any wavelength. For the purposes of examination, claim 1 is interpreted as instead reciting “a wavelength interval of
Claims 4, 6, and 11 are indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 4 is interpreted as instead reciting “at least one selected from the group consisting of a radical scavenger, …, and a singlet oxygen quencher.” Alternatively, claim 4 could be amended to recite “at least one of a radical scavenger, …, or a singlet oxygen quencher” to overcome the aforementioned deficiency.
For the purposes of examination, claim 6 is interpreted as instead reciting “any selected from the group consisting of dialkyl phosphate, …, and transition metal complexes thereof.” Alternatively, claim 6 could be amended to recite “any of dialkyl phosphate, …, or transition metal complexes thereof” to overcome the aforementioned deficiency.
For the purposes of examination, claim 11 is interpreted as instead reciting “at least one selected from the group consisting of an antistatic layer … and an antifouling layer ….” Alternatively, claim 11 could be amended to recite “at least one of an antistatic layer … or an antifouling layer …” to overcome the aforementioned deficiency.
Correction is required.
Claim 2, 3, 5, 7-10, 12, and 13 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above, and do not remedy the aforementioned deficiencies.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 7-10, and 12-14 of copending Application No. 18/244897 (Allowed, but not yet published).
Regarding Claim 1, 18/244897 claims an optical film comprising a transparent substrate and one or more functional layers that has an ultraviolet shielding rate of 85% of more, and a colored layer comprising a first colorant with maximum absorption wavelength in a range of 470-530 nm and half width spectrum of 15-45 nm, a second colorant with maximum absorption wavelength in a range of 560-620 nm and half width spectrum of 15-55 nm, and a third colorant with maximum absorption wavelength in a range of 400-780 nm and transmittance is lowest in a range of 650-780 nm; where the optical film has a hue of -5 to +5 as defined by formulas (1) to (9) that are identical to formulas (1) to (9) of the claimed invention (18/244897, Claim 1). 18/244897’s ranges are all identical to the claimed ranges, and therefore, satisfy the claimed ranges (MPEP 2131.03).
Regarding Claim 2, 18/244897 claims the colored layer does not contain a dye having a main absorption wavelength in a range of 390-435 nm (18/244897, Claim 2). 18/244897’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 3, 18/244897 claims a surface of the optical film has a pencil hardness of H or more at a load of 500 g (18/244897, Claim 1). 18/244897’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 4, 18/244897 claims the colored layer contains at least a one of a radical scavenger, a peroxide decomposer, and a singlet oxygen quencher (18/244897, Claim 8).
Regarding Claim 5, 18/244897 claims the colored layer contains a hindered amine light stabilizer having a molecular weight of 2,000 or more (18/244897, Claim 9). 18/244897’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 6, 18/244897 claims the colored layer contains as the singlet oxygen quencher any of a dialkyl phosphate, dialkyl dithiocarbamate, benezenedithiol, or transition metal complexes (18/244897, Claim 10).
Regarding Claim 7, 18/244897 claims the colorant contains at least one of a compound having a porphyrin structure or a compound of a pyrromethene structure (18/244897, Claim 1).
Regarding Claim 8, 18/244897 claims the one or more functional layers include a layer that has an oxygen permeability of 10 cc/m2*day*atm or less (18/244897, Claim 12). 18/244897’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 9, 18/244897 claims the one or more functional layers include a first layer (an ultraviolet absorption layer) and a second layer (a low refractive index layer) laminated in this order, where the low refractive index layer has a lower refractive index than the ultraviolet absorption layer (18/244897, Claims 1, 4).
Regarding Claim 10, 18/244897 claims the one or more functional layers includes an antiglare layer (18/244897, Claim 5).
Regarding Claim 11, 18/244897 claims the one or more functional layers includes an antistatic layer that contains an antistatic agent and an antifouling layer that has water repellency (18/244897, Claim 7).
Regarding Claim 12, 18/244897 claims a display device comprising a light source, and an optical film of claim 1 (18/244897, Claims 1, 13).
Regarding Claim 13, 18/244897 claims the light source includes a plurality of light emitting elements that emit light based on an image signal (18/244897, Claims 1, 13, 14).
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 7-11, and 15 of copending Application No. 18/244891.
Regarding Claim 1, 18/244891 claims an optical sheet/film comprising a UV absorbing layer/transparent substrate that has an ultraviolet shielding rate of 85% of more, a functional layer, and a colored layer comprising a first colorant with maximum absorption wavelength in a range of 470-530 nm and half width spectrum of 15-45 nm, a second colorant with maximum absorption wavelength in a range of 560-620 nm and half width spectrum of 15-55 nm, and a third colorant with maximum absorption wavelength in a range of 400-780 nm and transmittance is lowest in a range of 650-780 nm; where the optical film has a hue of -5 to +5 as defined by formulas (1) to (9) that are identical to formulas (1) to (9) of the claimed invention (18/244891, Claims 1, 4, 10). 18/244891’s ranges are all identical to the claimed ranges, and therefore, satisfy the claimed ranges (MPEP 2131.03).
Regarding Claim 4, 18/244891 claims the optical sheet comprises a radical scavenger (18/244891, Claims 1, 5).
Regarding Claim 5, 18/244891 claims the radical scavenger is a hindered amine light stabilizer having a molecular weight of 2,000 or more (18/244891, Claim 1). 18/244891’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 6, 18/244891 claims the optical sheet comprises a singlet oxygen quencher that is any of a dialkyl phosphate, dialkyl dithiocarbamate, benezenedithiol, or transition metal complexes (18/244891, Claims 7).
Regarding Claim 7, 18/244891 claims the colorant contains at least one of a compound having a porphyrin structure or a compound of a pyrromethene structure (18/244891, Claim 8).
Regarding Claim 8, 18/244891 claims an oxygen barrier functional layer has an oxygen permeability of 10 cc/m2*day*atm or less (18/244891, Claim 9). 18/244891’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 9, 18/244891 claims an optical functional layer includes a first layer (an UV absorbing layer) and a second layer (a low refractive index layer) laminated in this order, where the low refractive index layer has a lower refractive index than the UV absorbing layer (18/244891, Claim 10).
Regarding Claim 10, 18/244891 claims the optical functional layer includes an antiglare layer (18/244891, Claim 10).
Regarding Claim 11, 18/244891 claims the optical functional layer includes an antistatic layer or an antifouling layer (18/244891, Claim 11).
Regarding Claim 12, 18/244891 claims a display device comprising a luminescent layer (a light source) and the optical sheet of claim 10 (18/244891, Claims 10, 15).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and the nonstatutory double patenting rejections set forth in this Office action.
Distinctions between the instant claims and closest prior art of record are below:
Yabuki (US 6307671 B1) teaches an optical color filter comprising a transparent support, a filter layer, and optional layers; where the filter layer comprises colorants having an absorption spectrum in a wavelength range of 560-620 nm having a half-width of 30-50 nm (Yabuki, Abstract, Cols 55-74). Yabuki fails to teach a transparent substrate having an ultraviolet shielding rate of 85% or more in accordance with JIS L 1925; fails to teach a colored layer containing a first colorant with maximum absorption wavelength in a range of 470-530 nm with a half-width of 15-45 nm; fails to teach the colored layer contains a third colorant having a lowest transmittance in a range between 650-780 nm in a wavelength range of 400-780 nm; and fails to teach each of a* and b* of an optical film hue specifically defined by formulas (1) to (9) of claim 1 are -5 to +5.
Jeong (KR 20190109988 A, herein English machine translation utilized for all citations) teaches an optical member having light transmittance of 35% or less at wavelengths between 480-520 nm, 540-630 nm, and 680-760 nm, where a* and b* are 2 or less (Jeong, Abstract, Pgs 1-3, 7-12). Jeong fails to teach a transparent substrate having an ultraviolet shielding rate of 85% or more in accordance with JIS L 1925; fails to teach a colored layer containing a first colorant with maximum absorption wavelength in a range of 470-530 nm with a half-width of 15-45 nm; fails to teach the colored layer contains a second colorant with maximum absorption wavelength in a range of 560-620 nm with a half-width of 15-55 nm; fails to teach the colored layer contains a third colorant having a lowest transmittance in a range between 650-780 nm in a wavelength range of 400-780 nm; and fails to teach each of a* and b* of an optical film hue specifically defined by formulas (1) to (9) of claim 1 are -5 to +5.
Goto et al. (JP 2019056865 A, herein English machine translation utilized for all citations) teaches an optical filter having a 1st dye having an absorption maximum wavelength in a range of 480-510 nm with full width at half maximum of 10-40 nm, a 2nd dye having an absorption maximum wavelength in a range of 580-610 nm with full width at half maximum of 10-30 nm, and can include a 3rd and a 4th dye (Goto, Abstract, Pgs 1-7). Goto fails to teach a transparent substrate having an ultraviolet shielding rate of 85% or more in accordance with JIS L 1925; fails to teach a colored layer simultaneously containing a first colorant, a second colorant, and a third colorant having a lowest transmittance in a range between 650-780 nm in a wavelength range of 400-780 nm; and fails to teach each of a* and b* of an optical film hue specifically defined by formulas (1) to (9) of claim 1 are -5 to +5.
Han et al. (KR 20200118555 A, herein English machine translation utilized for all citations) teaches an optical member comprising a coating layer having a minimum value of light transmittance in wavelength ranges of 480-520 nm, 540-630 nm, and 680-760 nm (Han, Abstract, Pgs 1-4, 7-11). Han fails to teach a transparent substrate having an ultraviolet shielding rate of 85% or more in accordance with JIS L 1925; fails to teach a colored layer containing a first colorant with maximum absorption wavelength in a range of 470-530 nm with a half-width of 15-45 nm; fails to teach the colored layer contains a second colorant with maximum absorption wavelength in a range of 560-620 nm with a half-width of 15-55 nm; and fails to teach each of a* and b* of an optical film hue specifically defined by formulas (1) to (9) of claim 1 are -5 to +5.
The prior art of record, whether taken alone or in combination, does not disclose or render obvious the claimed invention. In view of the foregoing, the instant claims are considered to contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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