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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claims 5 and 16 use the term bifunctional, but this term is not in the specification, instead the term “double functional” is what the specification uses to describe a type of reactive diluent.
Claim Interpretation
Claim 1 is directed to an optical thin film material which implies the product claimed is in fact a thin film, as oppose to a material or composition that forms a thin film. For the purposes of evaluating the claims against the prior art, examiner is interpreting the claims to be directed to thin film forming material, and examiner suggests that applicant amends the claims to clarify it is an optical thin film forming material.
Drawings
The drawings are objected to because in Fig. 1 the bonds between the R1, N, C, R2, and C to O are not clear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 5-9 and 16-19 are 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.
Claims 5 and 16 use the term “bifunctional groups” in reference to groups on the reactive diluent compound. Ordinarily, this characterization would refer to groups with two functionalities, but according to ¶[0042] of the instant specification, it appears applicant is instead referring to the number of (meth)acrylate groups (a single functionality) in the reactive diluent. It appears that Applicant intends to refer to a bifunctional compound, not a bifunctional group, and where functionality is indicative of the number of acrylate groups specifically. Clarification is required.
Claims 6-9 and 17-19 are rejected due to their dependency on claims 5 and 16 respectively.
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.
Claims 1-2, 10-13, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okoroafor et al, US7473754B1.
Regarding claims 1-2, Okoroafor teaches an optical resin composition comprising radically polymerizable monomers with at least two (meth)acryloyl groups and thiourethane backbone linkages, abstract. Specifically, in example 2, Col. 23 line 65, a thiourethane prepolymer is formed from toluene diisocyanate (TDI) and 2,2’-thiodiethanethiol, Col. 24 lines 1-4, and then isocyanato methacrylate is added and reacted with the prepolymer , Col. 24 lines 5-7. This produces an acryloyloxy terminated monomer with aromatic groups from the TDI, and sulfur atoms in the backbone, all of which reads on the R1 and R2 groups of formula (1) claims 1-2.
Regarding claims 10-13, Okoroafor teaches a method for forming an optical film in example 3, Col 24 lines 10-43. The acryloyloxy functional monomer of example 2, which reads on the claimed formula (1) as explained above, is mixed with BPA 2EO dimethacrylate, styrene, and 2,2’-thiodiethanethiol, any of which reads on the claimed reactive diluent of claim 11, and Darocure 4265 initiator is included, see table in example 3. The mixture is placed between two glass molds with a thickness of 3.2 mm, the film is cured with UV light, and the resulting sheet has a refractive index of 1.6, Col. 24 lines 28-41.
Regarding claim 20, a display panel is an intended use of the optical film and the only required component is the optical material of formula (1). Because Okoroafor teaches the claimed optical film material, a composition, and the claimed method of preparation, as explained for claim 10 above, the optical film of Okoroafor is capable of performing as a display panel and anticipates the claim.
Allowable Subject Matter
Claims 3-4 and 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5-9 and 16-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Okoroafor does not teach or suggest the compounds of claims 3 and 14. Okoroafor teaches different polythiols in the broader disclosure that would not form the structure of the first or third compound, and Okoroafor does not teach using the fluorene compound of the second structure. Okoroafor lists a variety of suitable compounds to use in the prepolymer process, there would not be any motivation for the skilled artisan to substitute in a fluorene or the diphenyldithiol compound into the prepolymers. Furthermore, it would require hindsight to use the exact molar ratio to obtain the exact compounds as claimed.
Although Okoroafor teaches the claimed polymerization initiators and the claimed reactive diluents, these claims depend from claim 3 and 14, and are therefore also allowable.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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