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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 3 is 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.
Regarding claim 3, it is unclear what peel force is being specified. That is, it is unclear which of the 3M adhesive, the adhesion between the hard coating layer and the substrate, and the substrate to the underlying components are meant to have the claimed peel strength. Further, it is not clear from the language of the claim what specific type of two sided tape is used (i.e., the particular adhesive product used is not specified but would likely affect the measurement of peel strength, depending on how such a strength is defined). Therefore, claim 3 is indefinite.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1, 2, 4-7, and 16-18 is/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 Kim et al. (US 2021/0096280, “Kim”).
Regarding claims 1, 2, 16, and 17, Kim teaches a display device comprising a flexible window cover film ([0004], [0011]) comprising an optical multilayer structure comprising a substrate layer ([0015], transparent film) and a hard coating layer formed on a surface of the substrate layer ([0015]) and wherein the water contact angle of the outermost layer may be on the range of greater than 80o ([0105]). The Examiner notes that the water contact angle described by Kim would be expected to be consistent with conventional testing methods, including those specified in the claim. Further, it should be noted that claims 1 and 2 include product-by-process limitations, notably the method of testing the water contact angle of the multilayer structure. "[E]ven 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 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
Regarding claim 4, Kim additionally teaches that the hard coating layer includes a condensate of a silane having an epoxy group (e.g., [0031], [0106], [0112]).
Regarding claims 5 and 6, Kim additionally teaches that the substrate may include a polyimide film having a unite derived from a fluorine-based aromatic diamine, a unit derived from an aromatic dianhydride, and a unit derived from an aromatic diacid dichloride ([0024] – [0027]).
Regarding claim 7, Kim additionally teaches that there may include an anti-fingerprint layer on the hard coating layer ([0138]).
Regarding claim 18, Kim teaches an optical multilayer structure comprising a substrate layer ([0015], transparent film) and a hard coating layer formed on a surface of the substrate layer ([0015]), and an anti-fingerprint layer on the hard coating layer ([0138]). Kim additionally teaches that the hard coat layer may comprise a cured alkoxysilane having an epoxy group ([0101], [0109] – [0112], [0031], [0106]). Kim additionally teaches that the water contact angle of the outermost layer may be on the range of greater than 80o ([0105]). The Examiner notes that the water contact angle described by Kim would be expected to be consistent with conventional testing methods, including those specified in the claim. Further, it should be noted that claims 18 includes product-by-process limitations, notably the method of testing the water contact angle of the multilayer structure. "[E]ven 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 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
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.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1, above, and further in view of Byun et al. (US 2019/0339421, “Byun”).
Regarding claim 3, Kim fails to specifically teach the peel force of the multilayer structure. However, in the same field of endeavor of optical laminates ([0001] – [0010]), Byun teaches an appropriate peel strength is on the range of from 10 to 30 gf/25 mm in order to prevent generating fine cracks in an underlying layer upon removing a processing film (i.e., for example when applying the film to another stack or laminate, [0030]). It therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have adopted a peel strength of on the range of from 10 to 30 gf/25 mm in order to prevent generating fine cracks in an underlying layer upon removing a processing film (e.g., Byun [0030]).
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 7, above, and further in view of Chen et al. (US 2020/0407387, “Chen”).
Regarding claims 8 and 11, Kim teaches that the structure may include an anti-fingerprint layer but fails to teach the composition of such a layer. In the same field of endeavor of anti-fingerprint coatings ([0001] – [0004]), Chen teaches an anti-fingerprint composition having a structure reading on that of claims 8 and 11 (see Formula 2, [0028] – [0048], wherein X may be a nitro group, [0047] and Rf may be a perfluoroether group, [0029] – [0035]). Chen teaches that such a coating composition has good hydrophobicity, lipophobicity, and abrasion resistance (e.g., [0130]) and it therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have used it as the coating composition for an anti-fingerprint coating on the structure of the laminate of Kim (Chen, [0130], [0001] – [0005]).
Regarding claim 9, modified Kim additionally teaches that the compound corresponding to the claimed Hpb may be a perfluoroether compound ([0029] – [0035], [0054], [0055]).
Regarding claim 10, modified Kim additionally teaches a structure wherein the compound corresponding to L2 may include, for example, an alkylene compound (see e.g., [0047] – [0049], including alkylidene groups).
Claim(s) 12 – 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Chen as applied to claim 8, above, and further in view of Invie et al. (US 6,277,485, “Invie”).
Regarding claims 12 and 14, Kim teaches that the structure may include an anti-fingerprint layer but fails to teach the composition of such a layer. In the same field of endeavor of anti-soiling coatings (col. 1 lines 1-50), Invie teaches an anti-fingerprint composition having a structure reading on that of claims 12 and 14 (see col. 7 line 1 – col. 8 line 60; particularly see formula (I), wherein Rf may be a polyfluropolyether, and R1 may correspond to the claimed L linking groups). Invie teaches that such a coating composition has good anti-soiling properties, even when applied to antireflective surfaces (col. 1 line 50 – 68, col. 3 lines 30-45) and teaches to include the compound in an amount of less than 2% by weight (col. 2 line 60 – col. 3 line 10) and it therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have used it in the coating composition for an anti-fingerprint coating on the structure of the laminate of modified Kim.
Regarding claim 13, modified Kim additionally teaches that the compound corresponding to Hpb may be a perfluoropolyether (e.g., Invie, col. 2 lines 35 -55).
Regarding claim 15, modified Kim additionally teaches to include the components in an amount reading on the claimed ratio. For example, Chen teaches to include the compound corresponding to claimed formula 1 in an amount of 0.01 to 30 percent by weight (Chen, [0250]) and Invie teaches to include the compound corresponding to formula 2 in an amount of less than 2% by weight (Invie, col. 2 line 60 – col. 3 line 10), thus reading on the claimed ratio of from 7:3 to 9.8:0.2. The Examiner notes that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782