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
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fan (US20200363561, herein Fan), in the view of Hideki (JP2006151829, herein Hideki, a machine translation is being used for citation purpose).
Regarding Claims 1, 2, Fan teaches anti-glare film comprising polymethyl methacrylate (PMMA) base film and an anti-glare layer [0008], wherein, the PMMA base film reads on the transparent substrate. Fan further teaches the anti-glare layer comprises acrylate binder resin [0008], anti-glare film can further comprise microparticles is in the range of 0.3 weight parts to 14 weight parts [0012] overlaps the claimed range. Fan teaches polymethyl methacrylate microparticles [P9; Claim 14], but does not explicitly teach the specific silica microparticle, however, Hideki teaches water-insoluble powder including: polymethyl methacrylate microsphere, Sunsphere NP-30 [0018], reads on the claimed spherical silica microparticle, with the claimed particle size range, and the BET specific surface area, compressive strength, and apply into emulsion composition [0018], adhering into sheet substrate, may further include other layers [0009]. Because both the polymethyl methacrylate microparticles [P9; Claim 14] as taught by Fan and the Sunsphere NP-30 [0018] taught by Hideki are known in the art to be useful as microparticle for adhering to the cellulose based sheet substrate, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute Sunsphere NP-30 [0018] taught by Hideki into the composition formation, and would have been motivated to do so because both compounds individually are known to be effective microparticle for adhering to the cellulose based sheet substrate(s) (see MPEP 2144.06).
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).
Regarding Claims 4-6, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Fan and Hideki teach all of the claimed ingredients, in the claimed amounts, molecular structures, and teaches the composition as being made by a substantially similar process as the coated film was cured by exposing to UV light [0058] as taught by Fan. 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 haze and the haze difference upon rubbing, would necessarily arise from a composition with all the claimed ingredients. "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.
Regarding Claims 7-9, Fan teaches organic microparticles in the range of 1 μm to 5.5 μm; in the range of 0.3 weight parts to 14 weight parts with respect to per 100 weight parts of the acrylic binder resin. [0011-12], overlap the claimed ranges.
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).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Fan and Hideki teach all of the claimed ingredients, in the claimed amounts, molecular structures, and teaches the composition as being made by a substantially similar process as the coated film was cured by exposing to UV light [0058] as taught by Fan. 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 haze, would necessarily arise from a composition with all the claimed ingredients. "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.
Regarding Claims 10, 11, Fan teaches the acrylic binder resin comprises a (meth)acrylate composition and an initiator [0013], and wherein the (meth)acrylate composition comprises 35 to 50 weight parts of an urethane (meth)acrylate oligomer with a functionality of 6 to 15, wherein the average molecular weight of the urethane (meth)acrylate oligomer is between 1,000 and 4,500 [0013]; which is aliphatic polyurethane (meth)acrylate oligomer [0040]; 12 to 20 weight parts of a (meth)acrylate monomer with a functionality of 3 to 6; and 1.5 to 12 weight parts of a (meth)acrylate monomer with a functionality of less than 3 [0013].
Regarding Claim 12, Fan teaches the (meth)acrylate monomer with a functionality of 3 to 6 can be selected from dipentaerythritolpenta(meth)acrylate (DPP(M)A), dipentaerythritolhexa(meth)acrylate (DPH(M)A), trimethylolpropane tri(meth)acrylate (TMPT(M)A), ditrimethylolpropane tetra(meth)acrylate (DTMPT(M)A). [0041]
Regarding Claim 13, Fan teaches the (meth)acrylate monomer with functionality of less than 3 is selected from: 2-ethylhexyl (meth)acrylate (2-EH(M)A), 2-hydroxyethyl (meth)acrylate(2-HE(M)A), 2-hydroxypropyl (meth)acrylate(2-HP(M)A), 2-hydroxybutyl (meth)acrylate(2-HB(M)A), 2-butoxyethyl (meth)acrylate, 1,6-hexanediol di(meth)acrylate (HDD(M)A), cyclic trimethylolpropane formal (meth)acrylate (CTF(M)A), 2-phenoxyethyl (meth)acrylate (PHE(M)A), tetrahydrofurfuryl (meth)acrylate (THF(M)A), lauryl (meth)acrylate (L(M)A), diethylene glycol di(meth)acrylate (DEGD(M)A), dipropylene glycol di(meth)acrylate (DPGD(M)A), tripropylene glycol di(meth)acrylate (TPGD(M)A), isobornyl (meth)acrylate (IBO(M)A) [0042].
Regarding Claim 14, Fan teaches the initiator is selected from: acetophenones, diphenylketones, propiophenones, benzophenones, α-hydroxyketones, fluorenylphosphine oxides [0043].
Regarding Claim 15, Fan teaches the present invention relates to an anti-glare film for display device [0002].
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fan (US20200363561, herein Fan), and Hideki (JP2006151829, herein Hideki, a machine translation is being used for citation purpose) as applied in claim 1 set forth above, in the view of Yone (JP2018002987, herein Yone, a machine translation is being used for citation purpose).
Regarding Claim 3, Fan and Hideki collectively teach anti-glare film as set forth above.
Fan teaches polymethyl methacrylate microparticles [P9; Claim 14] which is acrylic resin beads, but does not explicitly teach the specific silica microparticle, however, Yone teaches add fine particles such as silica or acrylic resin beads to photocurable resin compositions [P3; L33], wherein, the component (C) silica particles; D50/D10 and D90/D50 are 1.5 or less [P12; L15 and L31], therefore, the ((D90-D10)/D50)=D90/D50-D10/D50=1.5-1/1.5=0.83 or less, lies in the claimed range, and can impart antiglare
properties to cured coatings. The fine particles create an uneven surface for the cured
coating, which scatters or diffuses light, thereby reducing the glare of light on the cured coating [P3; L33-35]. Because both the polymethyl methacrylate microparticles [P9; Claim 14] as taught by Fan, which reads on acrylic resin beads, and the component (C) silica particles; D50/D10 and D90/D50 are 1.5 or less [P12; L15 and L31] taught by Yone are known in the art to be useful as microparticle for improve the anti-glare property, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the component (C) silica particles; D50/D10 and D90/D50 are 1.5 or less [P12; L15 and L31] taught by Yone into the composition formation, and would have been motivated to do so because both compounds individually are known to be effective microparticle for anti-glare property management (see MPEP 2144.06).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767