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 .
DETAILED ACTION
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 8 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 pre-AIA the applicant regards as the invention.
Claim 8 is rejected as being vague and indefinite when it recites multiple "or/and" in alternative limitations, because one of ordinary skill in the art would not know how the listed compounds being used (used together or individually) to render a composition as claimed. In this office action, it is taken that the listed compound is used individually. In addition, “comprises one of ....and...” is not a proper Markush group or conventional alternative limitation.
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 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 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, 4-10 and 12-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP2008163252 (of record, see IDS 07/30/25, ‘252 hereafter, paragraph citation see original document in Japanese).
Regarding claims 1-2 and 4-8, ‘252 discloses an anti-glare composition comprising a reactive resin or/and monomer ([0084]-[0086]); surface modified particles include particle A with particle size in a preferred range of 0.5 to 10 microns ([0024], [0028]-[0030], [0034]), and a particle B with particle size being 20 to 500 nm, smaller than particle A([0040]-[0060]); and a initiator ([0087]); wherein the particle A and particle B may contain reactive hydrophobic surface modifying groups and formed into a network with a reactive monomer to render surface modified particles having particle A and particle B being chemically bonded to a hydrophobic group ([0006]-[0019], [0034], [0084]-[0086], both particle A and B contain unsaturated groups). The particle can be silica particles and the reactive resin or monomer can preferably be acrylic-based prepolymer such as polyester(meth) acrylate and urethane pentaerythritol triacrylate, or acrylic-based monomer such as pentaerythritol tetra(meth) acrylate and pentaerythritol triacrylate, to adjust hardness of the coating layer ([0084]-[0086], [0141], Examples ), which satisfies the present claims 6-8; wherein the total particle amount can be in range of 7 to 70 parts per 100 parts by weight of total composition ([0035], [0083]), and initiator can be in a range of 0.1 to 10 parts per 100 parts by weight of total composition ([0087]). ‘252 discloses that the composition may contain reactive resin or/and reactive monomer to adjust the hardness of the anti-glare coating composition ([0141]) but does not specifically disclose an embodiment having both resin and monomer as recited in the present claim 4. However, since the reference discloses both resin and monomer have the same purpose to be used to adjust hardness of the composition, it would have been obvious to one of ordinary skill in the art to be motivated to further use the resin and the monomer together in a suitable content range, including the content range as presently claimed, to render the composition having desired hardness without undue experimentation. It is well settled that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06).
Regarding claims 9-10, 12-17 and 19-20, ‘252 also discloses that the anti-glare composition can be used in a liquid crystal display device ([0001]-[0004]), which inherently comprising a polarizer and an antiglare film formed from the anti-glare composition which satisfies all the limitations as presently claimed.
Allowable Subject Matter
Claim 3, 11 and 18 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the prior art of record does not specifically disclose, teach or fairly suggest a composition as recited in the present claims 1, 9 and 16, wherein the surface modified particle represented by structure formulas as recited in the claims 3, 11 and 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron 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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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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