Claims 1-14 are pending in the application. Claims 1-9, 11 and 12 are rejected. Claims 10, 13 and 14 have been withdrawn from consideration as being directed to a non-elected invention.
The rejection over Hagen has been withdrawn in view of the amendment and response filed on 12/29/2025. Hagen discloses a vehicle pane with reduced emissivity and light reflection comprising a substrate 1 having an exposed interior-side surface; an emissivity-reducing coating 10 comprising at least one layer of a transparent conductive oxide on the substrate; and an anti-reflection coating of nanoporous silicon oxide 20 on the emissivity-reducing coating (abstract and figure 3). Hagen fails to disclose an optical laminate where an anti-reflection coating of nanoporous silicon oxide is disposed between a substrate and an emissivity-reducing coating.
The rejection over Hattori has been maintained.
The nonstatutory double patenting as being unpatentable over copending Application No. 18/285,067 has been obviated in view of a terminal disclaimer filed on 12/29/2025.
New ground of rejection is made in view of JP 2013217977 cited in the International Search Report.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2019-064259 wherein US 2020/223175 to Hattori et al. (hereinafter “Hattori”) is relied upon as a translation of JP 2019-064259.
Hattori discloses an optical laminate comprising a base material 10, a void-containing layer 20, a pressure-sensitive adhesive (PSA) layer 30, and an intermediate layer 22 disposed between the void-containing layer and the PSA layer wherein the intermediate layer is a mixed layer comprising the void-containing layer and the PSA layer (figure 1).
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The void-containing layer is a porous material comprising microporous particles of a silicon compound chemically bonded to each other (paragraph 122). The void-containing layer comprises silicon atoms bonded to each other through siloxane bonds (paragraphs 69-70). The PSA layer comprises a (meth)acrylic polymer and a crosslinking agent (paragraph 15).
The intermediate layer is a mixed layer of the void-containing layer and the PSA layer, and thus includes silicon. The intermediate layer serves as a stopper to suppress penetration of the PSA layer into the void-containing layer (paragraph 37). That is an exact function of the claimed low moisture permeable layer: restraining the PSA from permeating the voids of the void-containing layer (paragraph 66 of the Applicant’s disclosure). Therefore, the examiner takes the position that a moisture vapor transmission rate of 35 g/m2.day or less would inherently be present as like material has like property.
As to claim 2, Hattori discloses that the void-containing layer has a void fraction of 30 vol% or more, within the claimed range (paragraph 15).
As to claim 3, Hattori discloses that the void-containing layer is a porous material comprising microporous particles of a silicon compound chemically bonded to each other (paragraph 122). The void-containing layer comprises silicon atoms bonded to each other through siloxane bonds (paragraphs 69-70). The PSA layer comprises a (meth)acrylic polymer and a crosslinking agent (paragraph 15). The intermediate layer is a mixed layer of the void-containing layer and the PSA layer, and thus includes silicon.
As to claim 4, Hattori discloses that the intermediate layer has a thickness of 5 nm or more, within the claimed range (table 1).
As to claim 5, Hattori does not explicitly disclose the intermediate layer that is formed by at least one method selected from the group consisting of vacuum vapor deposition, sputtering and chemical vapor deposition (CVD).
However, it is a product-by-process limitation not as yet shown to produce a patentably distinct low moisture permeable layer. The examiner takes the position that the intermediate layer of Hattori is identical to or only slightly different than the claimed low moisture permeable layer prepared by the method set out in the claim, because both the intermediate layer of Hattori and the claimed low moisture permeable layer are formed from the same silicon, having a thickness of 5 nm or more; and serving as a stopper to suppress penetration of the PSA layer into the void-containing layer. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or an obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,291 (Fed. Cir. 1983). It is noted that if the applicant intends to rely on Examples in the specification or in a submitted Declaration to show non- obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with Hattori.
As to claim 6, Hattori discloses that the void-containing layer is a porous material comprising microporous particles of a silicon compound chemically bonded to each other (paragraph 122).
As to claim 7, Hattori discloses an optical laminate comprising a base material 10, a void-containing layer 20, a PSA layer 30, and an intermediate layer 22 disposed between the void-containing layer and the PSA layer wherein the intermediate layer is a mixed layer comprising the void-containing layer and the PSA layer (figure 1).
As to claim 8, Hattori does not explicitly disclose a difference between refractive index na of the optical laminate before heating and refractive index nb of the optical laminate after heating of 0.010 or less.
However, it appears that the optical laminate of Hattori meets all structural limitations and chemistry required by the claims. The optical laminate comprises a base material 10, a void-containing layer 20, a PSA layer 30, and an intermediate layer 22 disposed between the void-containing layer and the PSA layer wherein the intermediate layer is a mixed layer comprising the void-containing layer and the PSA layer (figure 1).
The void-containing layer is a porous material comprising microporous particles of a silicon compound chemically bonded to each other (paragraph 122). The void-containing layer comprises silicon atoms bonded to each other through siloxane bonds (paragraphs 69-70). The void-containing layer has a void fraction of 30 vol% or more, within the claimed range (paragraph 15).
The PSA layer comprises a (meth)acrylic polymer and a crosslinking agent (paragraph 15).
The intermediate layer is a mixed layer of the void-containing layer and the PSA layer, and thus includes silicon. The intermediate layer has a thickness of 5 nm or more, within the claimed range (table 1). The intermediate layer serves as a stopper to suppress penetration of the PSA layer into the void-containing layer (paragraph 37). That is an exact function of the claimed low moisture permeable layer: restraining the PSA from permeating the voids of the void-containing layer (paragraph 66 of the Applicant’s disclosure). The optical laminate has a haze value of less than 3% within the claimed range (paragraph 43).
Therefore, the examiner takes the position that the difference between the refractive index na of the optical laminate before heating and the refractive index nb of the optical laminate after heating of 0.010 or less would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 9, Hattori discloses that the optical laminate has a haze value of less than 3% within the claimed range (paragraph 43).
As to claim 11, Hattori discloses an optical member comprising the optical laminate (paragraph 9).
As to claim 12, Hattori discloses an optical apparatus comprising the optical member (paragraph 9).
Response to Arguments
The rejection over Hagen has been withdrawn in view of the amendment and response filed on 12/29/2025. Hagen discloses a vehicle pane with reduced emissivity and light reflection comprising a substrate 1 having an exposed interior-side surface; an emissivity-reducing coating 10 comprising at least one layer of a transparent conductive oxide on the substrate; and an anti-reflection coating of nanoporous silicon oxide 20 on the emissivity-reducing coating (abstract and figure 3). Hagen fails to disclose an optical laminate where an anti-reflection coating of nanoporous silicon oxide is disposed between a substrate and an emissivity-reducing coating.
Applicant alleges that Hattori neither anticipates nor renders obvious because Hattori fails to disclose an optical laminate comprising a base, a void-containing layer on the base, and a low moisture permeable layer on the void-containing layer.
The examiner respectfully disagrees.
As previously discussed, Hattori discloses an optical laminate comprising a base material 10, a void-containing layer 20, a PSA layer 30, and an intermediate layer 22 disposed between the void-containing layer and the PSA layer wherein the intermediate layer is a mixed layer comprising the void-containing layer and the PSA layer (figure 1). The void-containing layer comprises microporous particles of a silicon compound chemically bonded to each other (paragraph 122). And so does the intermediate layer. The intermediate layer also serves as a stopper to suppress penetration of the PSA layer into the void-containing layer (paragraph 37). That is an exact function of the claimed low moisture permeable layer: restraining the PSA from permeating the voids of the void-containing layer (paragraph 66 of the Applicant’s disclosure). The intermediate layer reads on the claimed low moisture permeable layer. Accordingly, the rejection over Hattori has been maintained.
Any amendments that demonstrate the difference in the chemistry between the intermediate layer and the low moisture permeable layer would be sufficient to remove Hattori as prior art.
Claims 1-6, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-217977 (hereinafter “JP’977”).
JP’977 discloses an optical laminate comprising a substrate 2, a nanoporous film layer 3 on the substrate, a dense film 4 on the nanoporous film (figure 1).
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The dense film is obtained through sputtering of silicon oxide (paragraphs 20 and 21). The dense film provides a high moisture-proof effect (paragraph 59), achieving a moisture vapor transmission rate of close to zero, within the claimed range of less than 35 g/m2.day or less.
As to claim 2, JP’977 discloses that the nanoporous film has a void fraction of 30-80 vol% (paragraph 35).
As to claims 3 and 5, JP’977 discloses that the dense film is obtained through sputtering of silicon oxide (paragraphs 20 and 21).
As to claim 4, JP’977 discloses that the dense film has a thickness of 10 to 40 nm (paragraph 60).
As to claim 6, JP’977 discloses that the nanoporous film comprises nanoporous particles of silicon compound chemically bonded with each other (figure 6).
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As to claims 11 and 12, JP’977 discloses the optical laminate that is suitable as an optical member used in cameras, microscopes or telescopes (paragraph 1).
Claims 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2013-217977 (hereinafter “JP’977”).
JP’977 does not explicitly disclose the optical laminate comprising (i) a difference between refractive index na of the optical laminate before heating and refractive index nb of the optical laminate after heating of 0.010 or less; or (ii) a haze value of less than 10%.
However, it appears that the optical laminate of JP’977 meets all structural limitations and chemistry required by the claims.
The optical laminate of JP’977 comprises a substrate 2, a nanoporous film layer 3 on the substrate, a dense film 4 on the nanoporous film (figure 1).
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The dense film is obtained through sputtering of silicon oxide (paragraphs 20 and 21). The dense film provides a high moisture-proof effect (paragraph 59), achieving a moisture vapor transmission rate of close to zero, within the claimed range of less than 35 g/m2.day or less. The dense film has a thickness of 10 to 40 nm (paragraph 60). T
The nanoporous film has a void fraction of 30-80 vol% (paragraph 35). The nanoporous film comprises nanoporous particles of silicon compound chemically bonded with each other (figure 6).
The optical laminate is suitable as an optical member used in cameras, microscopes or telescopes (paragraph 1).
Therefore, the examiner takes the position that the difference between the refractive index na of the optical laminate before heating and the refractive index nb of the optical laminate after heating of 0.010 or less; or the haze value of less than 10% would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788