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 .
Double Patenting
Claims 16-17, 19-23, 25-30 and 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,584,856.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘856 recites that the binder is an acrylate while the present claims more broadly recite a binder consisting of either acrylate, polyester or epoxy, and ‘856 further recites a photo initiator while the present claims are more broadly silent regarding an initiator; the present claims therefore fully encompass ‘856.
Claims 16-17, 19-23, 25-30 and 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,840,642.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘642 recites that the binder is an acrylate while the present claims more broadly recite a binder consisting of either acrylate, polyester or epoxy, and ‘642 further recites a photo initiator while the present claims are more broadly silent regarding an initiator; the present claims therefore fully encompass ‘642.
Claim Rejections - 35 USC § 103
Claims 16-17, 19-23, 25-30 and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over WANG et al (US 2020/0263041) in view of KOLB et al (US 2015/0017386).
Claims 16-17, 25 and 29-30: WANG discloses (see entire document) a composite film comprising a glass substrate ([0085]) [reading on the claimed transparent substrate] and an anti-reflective coating overlying the surface of the substrate, i.e. directly in contact with, (abstract, [0001], [0081]) [as claimed]. The coating comprises a binder and a filler, wherein the filler comprises hollow silica nanoparticles ([0005], [0006], claims 1, 10 and 13) [as claimed].
The film has a VLT of greater than 95% ([0097]) [reading on the claimed greater than 94% of claims 16 and 29 and the claimed range of 94-99.9% of claims 17 and 30]; and has a water contact angle of greater than 115o ([0098]) [reading on the claimed at least about 70o of claim 16 and 80o of claims 29].
The filler/hollow silica nanoparticle has an average particle size of less than 500 nm, and from 10 nanometers to 550 microns ([0042]) [fully encompassing the claimed range of 120-200 nm].
Regarding the binder is selected from acrylic, polyester or epoxy, WANG discloses a siloxane binder. However, it is known to made a coating comprising particulate filler and a binder of acrylic, polyester or epoxy, such as taught by KOLB:
KOLB discloses (see entire document) a composite film comprising a highly transparent substrate having at least 90% transmittance in the visible spectrum and less than 1% haze ([0260]), including glass as the substrate ([0258]), and an anti-reflective coating placed on the substrate comprising hollow inorganic nanoparticles ([0221]), namely silica nanoparticles ([0012]), which dispersed in a matrix/binder ([0010], [0249], [0374]) which is UV curable ([0013]).
Specifically, KOLB discloses a coating comprising nanoparticles of silicon oxide in a matrix/binder of acrylate, polyester, epoxy or siloxane ([0327]) [reading on the claimed amendment requiring the binder to be acrylic, polyester, or epoxy].
KOLB discloses to add an additive to improve the film’s properties such as scratch resistance ([0216]).
KOLB discloses that the film has a VLT of at least 98%, a reflectance of 1% and a haze of less than 2%, less than 1.5% or less than 1% ([0311]). Significantly, KOLB discloses that the weight ratio of the nanoparticles to the curable binder can be adjusted for the desired % of reflectance, haze, transmittance, and scratch resistance, such as 30:70, 50:50, 70:30, etc. ([0250]).
It would have been obvious to one of ordinary skill in the art to have replaced WANG’s siloxane binder with KOLB’s acrylic, polyester or epoxy binder since WANG discloses that siloxane, acrylic, polyester or epoxy binders can be used interchangeably when making a coating comprising the binder and nanoparticle fillers which overlays the surface of a transparent substrate, and have thus arrived at the claimed binder with reasonable expectation of success.
Although WANG does not explicitly disclose a haze value, WANG discloses that the film has a very high visible light transmittance of greater than 95% ([0097]), discloses a transparent substrate ([0085]), and discloses a substantially identical composite film as claimed, it is therefore expected that WANG’s film would necessarily have the claimed haze. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Additionally, KOLB discloses that such film has the claimed haze percentage, thus serving as further evidence that WANG’s haze reads on the claimed haze.
Further, it would have been obvious to one of ordinary skill in the art to vary the ratio between the binder and the nanoparticles through routine experimentation to arrive at the desired and claimed haze percentage, since KOLB discloses that the weight ratio of the nanoparticles to the curable binder can be adjusted for the desired % reflectance, haze, transmittance, and scratch resistance, such as 30:70, 50:50, 70:30, etc. etc. ([0250]).
Claims 19 and 32: Since WANG discloses a transmittance in the visible light of greater than 95% ([0097]), it follows that the reflectance is 5% or less [reading on the claimed reflectance in the range of 1.5-7% with sufficient specificity]. This is further evidenced by KOLB who discloses that the film has a transmittance of least 94-98% and therefore a reflectance of less than 5-1% ([0311]).
Claims 20 and 33: The binder’s concentration is disclosed at 50% of the coating ([0079]) [meeting the claimed range of 30-60%].
Claims 21 and 34: The binder is a UV curable binder ([0018], [0087]).
Claims 22-23: The concentration of the filler/hollow silica nanoparticle is disclosed at 35-70% ([0044]) [fully encompassing the claimed range of 40-70%].
Claim 26: The hollow silica nanoparticle is spherical ([0039]) [as claimed].
Claim 27: WANG discloses silicone acrylate ([0051]-[0065]) [reading on the claimed anti-smudge additive, noting that the present specification recites silicone acrylate as the anti-smudge additive, see [0035]-[0036] of the instant Published Application]. WANG also discloses that the contact angle being greater than 100o results in improved anti-smudge properties ([0098]). Additionally, KOLB discloses that one can add an additive to improve the film’s properties such as scratch resistance ([0216]). Accordingly, it would have been obvious to one of ordinary skill in the art to have added KOLB’s anti-smudge additive to WANG’s film and have thus arrived at the present claim with reasonable expectation of success.
Claim 28: The thickness of the film is 50-500 nm ([0090]) [reading on the claimed 50-500 nm].
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
Applicant submits that Wang discloses a siloxane binder, not a binder selected from the group consisting of acrylic, polyester or epoxy. It is agreed and which is why Kolb reference is used as a teaching reference. Wang in view of Kolb meets the claim 16 limitation as explained above.
Applicant argues that Kolb’s teaching at 0327 specifically relates to hardcoats not anti-reflection coating and this is fundamentally different layer with a different purpose than the anti-reflective coating recited in present claims. However, it is noted that although Kolb discloses hardcoat composition in 0327, it is noted that it is just a one of the functions of the layer. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicant argues that Kolbs hardcoat includes nanoparticles which are solid nanoparticles in 0327. However, it is noted that there is nothing in 0327 of Kolb that discloses that the nanoparticles are solid.
Applicant argues that in some embodiments of Wang, the curable composition is free of non silicon containing binder in 0045. However, it is noted that Wang discloses only “some embodiments” not all that are free of non silicone containing binder. There is nothing in Wang that teaches against using non silicon containing binders.
Applicant points to examples in Wang and argues that siloxane binder is essential to achieving the desired film properties. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Regarding double patenting rejections, applicant stated that similar arguments apply as obviousness rejection. However, the double patenting rejection is still not overcome as stated above.
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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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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