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.
Election/Restrictions
Claims 7, 8, and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/26/25.
Applicant's election with traverse of Group I, claims 1-6, 9, 10, and 12-20, in the reply filed on 11/26/25 is acknowledged. The traversal is on the ground(s) that the different groups of invention would not present an additional search burden to the Examiner. This is not found persuasive because the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 9, 10, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 10, and 12-20 of U.S. Patent No. 11,906,702. Although the claims at issue are not identical, they are not patentably distinct from each other because with regard to claim 1 of the ‘702 patent, the only distinction between that claim and presently examined claim 1 is that patent ‘702 teaches a haze range of from 50 to 98% whereas the present claim requires a haze of “30% or greater.” The presently examined haze range would have been obvious in view of the range of from 50 to 98% because that range rests within the presently claimed range. The remaining claims are identical to their corresponding claims in the ‘702 patent and are therefore considered obvious to the ordinarily skilled artisan at the time of filing.
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.
Claims 1-6, 9, 10, and 12-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Furui et al. (JP 2010-122560, “Furui” a machine translation copy of which is of record, submitted 3/27/20 and which will be referred to as the citation copy), in view of Murakami et al. (WO 2017/0138868, “Murakami,” a machine translation of which has been provided and which will be referred to as the citation copy), in view of Miyake et al. (US 2015/0092276, “Miyake”), in view of Horie et al. (US 2009/0246415, “Horie”).
Regarding claim 1, Furui teaches an anti-glare film having a ratio R/V of a scattered specular reflection intensity R to a total V of scattered reflection intensity being from 0.01 to 0.12 consistent with the claimed testing methods (e.g., [0010] - [0012]). 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. Furui fails to specifically teach the claimed haze values and 60 degree gloss values. However, in the same field of endeavor of antiglare films for use in display devices (e.g., p. 1), Murakami teaches generally that a suitable haze for an antiglare layer is between 10% and 70% and that such a haze range provides a film with an excellent antiglare property (p. 10, paras. 3-7, this range overlapping, and thus reading on, the claimed range of from 50 to 98%) and that the 60 degree gloss should preferably be less than 50% in order to provide sufficient antiglare effect (p. 10, paras 2-8, p. 19, paras. 3-5, describing that keeping the specular gloss low in order to achieve a desired antiglare effect; see also p. 16, paras. 3-8, describing to adjust the 60 degree gloss and haze of the film in order to provide sufficient antiglare effect). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have adjusted the haze of the film of Furui to within the range of 10% to 70% and 60 degree gloss of the film to within the range of less than 50% in order to provide the film with sufficient antiglare effect (p. 10, paras 2-8, p. 19, paras. 3-5). With regard to the specific range of 60 degree gloss values, modified Furui does not specifically teach an embodiment describing the lower end of the range of less than 50% (i.e., toward the claimed range of 60 degree gloss values; however, the Examiner also notes that “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Please see MPEP §2123). In the same field of endeavor of antiglare films (e.g., [0006], [0007]), Miyake teaches that it is known and conventional to adjust the 60 degree gloss of an antiglare film to less than 7.4 in order to provide an antiglare film for which no glare is observed ([0066] – [0069]). Therefore, it would have been obvious to have adjusted the range of 60 degree gloss values to less than 7.4 in order to provide an antiglare film for which no glare is observed (Miyake, [0066] – [0069]). While Furui fails to specifically teach the absolute value of a chromaticity b” of transmitted light being 3 or less, in the same field of endeavor of antiglare films ([0002], [0003]), Horie teaches to adjust the value of the chromaticity b* of an antiglare film to -2.3 to -0.6 in order to effectively neutralize any reflected light’s chromaticity when the film is to be used in a display device (Horie, e.g., [0164] [0165]). It therefore would have been obvious to the ordinarily skilled artisan at the time of filing to have adjusted the chromaticity value of the antiglare film of Furui to within the above range in order to effectively neutralize any reflected light’s chromaticity when the film is to be used in a display device (Horie, e.g., [0164] [0165]).
Regarding claim 2, Furui additionally teaches that the antiglare laminate or film includes a transparent substrate layer ([0008], [0013]) and an antiglare layer on one side of the substrate layer and includes polymer particles and a curable resin precursor component ([0016], [0026], [0022], [0023]).
Regarding claim 3, Furui additionally teaches that the particles in the resin layer may settle or separate and thus may be considered to undergo “liquid phase spinodal decomposition” (that is, the particles and resin may be considered to be a single phase and upon separation may be considered to be two phases; see [0022] – [0025]).
Regarding claim 4, Furui additionally teaches that the particles may be made of an acrylic polymer (e.g., [0022]).
Regarding claim 5, Furui additionally teaches that the curable resin may be, for example, a polyester (meth)acrylate ([0026], [0027]).
Regarding claim 6, Furui additionally teaches that the curable resin may include silica nanoparticles (e.g., [0023]).
Regarding claim 9, Furui additionally teaches that the antiglare film may be used in a display device (and therefore teaches a display device using the antiglare film, see e.g., [0002]).
Regarding claim 10, while Furui fails to specifically teach that the type of display the antiglare film may be used on may be a liquid crystal display or an organic luminescent display, Horie teaches that such displays are known and that antiglare films are useful when used in conjunction with them (Horie, [0203]). It therefore would have been obvious to have applied the antiglare film of modified Furui to an LCD or OLED type display in order to impart antiglare functionality to displays of those types (Horie, [0203]).
Regarding claim 12, Furui additionally teaches that the particles may be made of an acrylic polymer (e.g., [0022]).
Regarding claims 13 and 14, Furui additionally teaches that the curable resin may be, for example, a polyester (meth)acrylate ([0026], [0027]).
Regarding claims 15-17, Furui additionally teaches that the curable resin may include silica nanoparticles (e.g., [0023]).
Regarding claims 18-20, Furui additionally teaches that the antiglare film may be used in a display device (and therefore teaches a display device using the antiglare film, see e.g., [0002]).
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