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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5-10, 15-21, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara (WO 2019216122) in view of Tomonari (US 2020/0354517). Note: A machine translation is being used for Ando et al. (JP 2008-040309).
Considering Claims 1: Kasahara teaches a phase difference film (pg. 12-13) comprising a layer thereof comprises a fluorene containing polyester (pg. 9), the film being drawn (pg. 15), and teaches the film as having a R450/R550 ratio of 1 to 1.5 (pg. 13).
Kasahara does not teach the fluorene polyester as having arylated fluorene in a side chain with sufficient specificity. However, Tomonari teaches a polyester (¶0134) prepared using
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as the diol component (¶0015)., where Ar1 and Ar2 are preferably phenyl or naphthyl groups (¶0019). Kasahara and Tomonari are analogous art as they are concerned with the same field of endeavor, namely low birefringence polyesters having fluorene groups. It would have been obvious to a person of ordinary skill in the art to have used an arylated fluorene side chain diol within the formula of Kasahara, as in Tomonari, and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001).
Kasahara teaches the ratio of R450/R550 as being 1 to 1.5, which overlaps with the claimed range. 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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have prepared a film with a ratio of R450/R550 within the overlapping portion of the claimed range, and the motivation to do so would have been to realize reverse dispersion and antireflection performance (pg. 13).
Considering Claim 2: Kasahara teaches the composition as exhibiting negative intrinsic birefringence (pg. 20).
Considering Claim 5: Kasahara teaches the fluorene resin as being an alloy of a polycarbonate and polyester resin (pg. 9).
Considering Claim 6: Kasahara teaches a multilayer film comprising the negative retardation layer above and a positive retardation/intrinsic birefringence layer (pg. 12-13).
Considering Claim 7: Kasahara teaches a polyamide layer (pg. 27).
Considering Claim 8: Kasahara teaches the film as being a 1/4 phase difference film (pg. 12-13).
Considering Claim 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the refractive index in the x, y, and z axis, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 10: Kasahara teaches a layer comprising aliquid cystal phase difference layer having an oriented liquid crystal material (pg. 13).
Considering Claim 15: Kasahara teaches drawing the film at an angle of 45º (pg. 30-31).
Considering Claim 16: Kasahara teaches forming a multilayer film by lamination, followed by stretching (pg. 15-17).
Considering Claims 17-18: Kasahara teaches a polarizing plate comprising the film and a temporary support that is a 1/4 phase difference film (pg. 18-19).
Considering Claims 19 and 20: Kasahara teaches a hard coat, antiglare, antireflection, antifouling or anti-fingerprint layer (pg. 14-15).
Considering Claim 21: Kasahara teaches an image display device comprising the polarizing plate (pg. 28).
Considering Claim 30: The term “in-car” is a statement of intended use. f the body of a claim fully and intrinsically sets forth all of 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara (WO 2019216122) in view of Tomonari (US 2020/0354517) as applied to claim 1 above, and further in view of Ota et al. (JP 2017-198956). Note: A machine translation is being used for Ota et al. (JP 2017-198956).
Considering Claims 3 and 4: Kasahara and Tomonari collectively teach the film of claim 1 as shown above.
Kasahara does not teach the structure of the flourene polyester. However, Ota et al. teaches a phase difference film (pg. 1) comprising a layer comprising a polyester comprising a fluorene ring (pg. 3), the layer having an in plane R(450)/R(550) ratio of 1.23 in an example (Table 3), the film being drawn (pg. 16). The polyester is prepared from the reaction of a diacid of the formula
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, where X1 is a divalent hydrocarbon group and k is a integer from 1 to 4and a diol of the formula
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, where Z is an aromatic hydrocarbon, preferably benzene, R5 is an alkylene group, r is 0 or 1, p is an integer of 0 to 4, and R3 and R4 are substituents (Formula 1a and 2).
Ota et al. does not teach the fluorene polyester as having arylated fluorene in a side chain with sufficient specificity. However, Tomonari teaches a polyester (¶0134) prepared using
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as the diol component (¶0015)., where Ar1 and Ar2 are preferably phenyl or naphthyl groups (¶0019). Ota et al. and Tomonari are analogous art as they are concerned with the same field of endeavor, namely low birefringence polyesters having fluorene groups. It would have been obvious to a person of ordinary skill in the art to have used an arylated fluorene side chain diol within the formula of Ota et al., as in Tomonari, and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001).
Ota et al. teaches the diacid as preferably 9,9-bis (2-methoxycarbonylethyl) fluorene (pg. 19), and optionally teaches the structure as being substituted with an two aryl group (pg. 4) such as naphthyl groups (pg. 6), and teaches the diol as preferably being 9,9-bis [4- (2 hydroxyethoxy) phenyl] fluorene (pg. 19). It would have been obvious to a person of ordinary skill in the art to have selected napthyl substituents for the diacid of Ota et al., and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001).
It would have been obvious to a person of ordinary skill in the art to have used the modified polyester of Ota et al. in the film of Kasahara, and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara (WO 2019216122) in view of Tomonari (US 2020/0354517) as applied to claim 1 above, and further in view of Lee et al. (US 2016/0306477).
Considering Claims 11-14: Kasahara and Tomonari collectively teach the film of claim 1 as shown above.
Kasahara does not teach a conductive layer. However, Lee et al. teaches applying a touch sensor layer comprising silver nanowires or ITO (¶0054). Kasahara and Lee et al. are analogous art as they are concerned with the same field of endeavor, namely phase difference films. It would have been obvious to a person of ordinary skill in the art to have added the conductive layer of Lee et al. to the film of Kasahara, and the motivation to do so would have been, as Lee et al. suggests, to provide touch sensitivity to the film (¶0053).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kasahara (WO 2019216122) in view of Tomonari (US 2020/0354517) as applied to claim 22 above, and further in view of Yin et al. (US 2016/0253018).
Considering Claim 23: Kasahara and Tomonari collectively teach the image display apparatus of claim 22 as shown above.
Kasahara does not teach the touch sensor as having an on-cell system. However, Yin et al. teaches forming a touch sensor with an in-cell or on-cell touch sensing module (¶0003). Kasahara and Yin et al. are analogous art as they are concerned with the same field of endeavor, namely touch sensitive panels. It would have been obvious to a person of ordinary skill in the art to have used an in-cell or on-cell system for the touch panel of Kasahara, as in Yin et al., and the motivation to do so would have been, they are conventional systems for forming touch panels (¶0003).
Claims 24-29 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara (WO 2019216122) in view of Tomonari (US 2020/0354517) as applied to claims 21 and 22 above, and further in view of Mitsui (US 2019/0220151).
Considering Claims 24-28: Kasahara and Tomonari collectively teach the image display apparatus of claim 22 as shown above.
Kasahara does not teach the claimed conductive film. However, Mitsui teaches a touch panel comprising a conductive film prepared from silver nanowires in a cycloolefin polymer (¶0255) or indium tin oxide (¶0251). Kasahara and Mitsui are analogous art as they are concerned with the same field of endeavor, namely touch sensitive panels. It would have been obvious to a person of ordinary skill in the art to have included the conductive film of Mitsui in the panel of Kasahara, and the motivation to do so would have been, to allow for the recognition of the touch on the panel.
Considering Claim 29: Kasahara and Tomonari collectively teach the image display apparatus of claim 21 as shown above.
Kasahara does not teach that the image display apparatus has a changeable shape. However, Mitsui teaches a flexible panel that can have its shape changed (¶0067). It would have been obvious to a person of ordinary skill in the art to have produced a panel that has shape changeability, as in Mitsui, and the motivation to do so would have been, as Mitsui suggests, to allow for an image display apparatus of the desired shape.
Considering Claim 31: Kasahara and Tomonari collectively teach the image display apparatus of claim 21 as shown above.
Kasahara does not teach the image display apparatus as being in an information processing apparatus. However, Mitsui teaches using the image display apparatus in a mobile phone (¶0003). It would have been obvious to a person of ordinary skill in the art to have used the touch panel of Kasahara in a mobile phone, as in Mitsui, and the motivation to do so would have been, as Mitsui suggests, it is a suitable use for touch panels.
Response to Arguments
Applicant's arguments filed August 18, 2026 have been fully considered but they are not persuasive, because:
A) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person of ordinary skill in the art to have used an arylated fluorene side chain diol within the formula of Kasahara, as in Tomonari, and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001). As Kasahara desires a negative birefringence, the low birefringence of Tomonari would be desirable in the polarizing plate of Kasahara.
B) The applicant’s argument that Tomonari only teaches a substituted fluorene structure for the diol component is not persuasive. Ota et al. teaches the diacid as preferably 9,9-bis (2-methoxycarbonylethyl) fluorene (pg. 19), and optionally teaches the structure as being substituted with an two aryl group (pg. 4) such as naphthyl groups (pg. 6), and teaches the diol as preferably being 9,9-bis [4- (2 hydroxyethoxy) phenyl] fluorene (pg. 19). It would have been obvious to a person of ordinary skill in the art to have selected napthyl substituents for the diacid of Ota et al., and the motivation to do so would have been, as Tomonari suggests, to provide a high refractive index and low birefringence (¶0001). The substitution of the diacid would result in substantially similar structure as the substituted diol, namely substituted fluorene groups with ester linkages, and thus the benefit would be expected to be achieved with the diacid in a similar manner as with the diol.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
