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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7-12 and 19 are rejected under 35 U.S.C. 102 a1/a2 as being anticipated by US 20110217541 to Shimano et al.
Re claims 1-3, 7-12, 19, Shimano et al. teaches Fig. 1 and associated text a
film, Shimano et al. teaches Fig. 1 and associated text a hard coat cured product of cycloolefin polymer [95] and [145-146] of meth acryloyloxy group (same as Applicant’s) [90-95, 145-146] silica, [224] urethane acrylate and [90] methacrylol, for ensuring a cured product and no cracking [217]. Inorganic particles are taught [15], Shimano (per claim 2). See [210-222], Shimano – PET and cycloolefin structure (per claim 8).
All properties not explicit (i.e. peak area ratio…) are inherent given the same materials and structure used.
Further to product by process limitations (per claims 9 and 11) of before heat treatment and after curing, these are process limitations in a product claim and not germane to patentability.
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 5-7, 13-14, 16-19, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110217541 to Shimano et al. in view of EP 2498130 A2 to Shitabatake et al.
Shimano is relied upon above.
Shimano essentially teaches the claimed invention.
Shimano doesn’t teach the exact ranges but are overlapping. See [0048], Shimano – overlapping ranges (per claims 5, 13-14, and 16-19). [20-27, 41, 50-54, 83, 481], See Shimano – overlapping ranges and motivation to adjust thickness due to excellent production and performance (1, 2, and 5, Fig. 1 function as applicant’s two hard layers per claims 6-7).
Note that overlapping ranges have this application: 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference effecting functionality (i.e. each layer affecting overall performance) because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 20-21, Shimano doesn't teach the materials as claimed but teaches
silica, [224] urethane acrylate and [90] methacrylol.
Shitabatake discloses a similar curable composition [10] of excellent pattern with
excellent heat/cold shock resistance having the [23] same (meth)acryloyl, amorphous
[235, 237-238] silica for good profile, and [257], [261] elastomer urethane and acrylic
blend is within the teaching for improved heat resistance [256].
It would have been obvious to one of ordinary skill in the art at the effective filing
date time the invention was made to have selected only the materials of Shimano in the similar cured composition of Shimano for at least excellent patterns and shock
resistance.
Response to Arguments
Applicant’s arguments with respect to claim have been fully considered but are moot in view of the new art applied above. Applicant argues the peak area ration and range isn’t taught pointing to the specification; however, limitation from the specification are not interpreted into the claims.
Further the amendments contain inherent recitations to the V condition peaks. See Mpep 2141.02:
V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY
"In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112.
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 20180361719 to Kikuchi teaches a hard coat [153] where radically polymerizable groups include (meth)acryloyloxy and vinyl, of which (meth)acryloyloxy is generally employed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
TAMRA L. DICUS
Primary Examiner
Art Unit 1787