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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention, so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-17 of copending Application No. 18/420,161 (US2024/0301233). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. The claim sets of both pending applications are the same.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park et al (US2024/0301233).
The applied reference has a common joint inventors and applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Park sets forth acrylic compounds containing perfluoropolyether groups, carbodiimide linkages, and urethane linkages—see abstract.
Regarding claim 1: Park sets forth a compound represented by formula (I):
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126
507
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, wherein Z, Y, X, A, Ar1, and Ar2 are defined in sections [0014]- [0020]. This is deemed to anticipate claim 1.
Regarding claims 2-3: Park sets forth an embodiment where Ar1 and Ar2 are each independently a phenylene unsubstituted or substituted with C1-C4 alkyl group—see [0021]. Park sets forth X may be absent or may be C1-C4 alkylene unsubstituted or substituted with C1-C4 haloalkyl group—see [0022].
Regarding clam 4: Park sets forth compounds (I-1) and (I-5):
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789
477
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, wherein Z, Y, a, b, c, and d are defined in section [0025] – [ 0026] --see [0023] - [0026] on page 2.
Regarding claims 5-7: Park sets forth said compound represented by formula (I) are used in hard coating composition, wherein said compositions comprises from 2.5 wt. % to 10 wt. % based on the total hard coating composition—see [0036]. Said compositions additionally comprise photoinitiators, solvents, particulates comprising voids and light-transmitting resins—see [0037].
Regarding claims 8-12: Park explicitly sets forth said hard coating compositions are useful for forming hard coatings, as well as teaching said hard coatings can be used in articles such as image display device having said hard coating films; said hard coating film used as a window of an image display device, specially a flexible display or a foldable display; and said hard coating film can be used by attaching it to a polarizing plate and/or a touch sensor—see [0095].
Regarding claims 13-17: Park explicitly teaches low refractive index layers/films obtained coating onto a substrate and curing compositions comprising 2.5 wt. % to 10 wt. % of said compound represented by general formula (I) based on the total weight of said composition. Said composition is taught to further comprise other components, such as photoinitiators, solvents, particles having voids, and light-transmitting resin—see [0037];[0115] and the examples. Said low-refractive index coating films are useful as hard coating in image display devices— [0118] – [119].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Imashiro et al (EP 0 808 828) sets forth acrylic compounds comprising urethane groups and carbodiimide linkages. The primary difference is compounds are monofunctional acrylate compounds that do not comprise or render obvious perfluoropolyether terminal groups. Jae (KR 2011 085073) sets forth acrylic compounds having urethane groups and carbodiimide linkages. The primary difference is compounds are monofunctional acrylate compounds that do not comprise or render obvious perfluoropolyether terminal groups. Audenaert et al (CA 2 586 108) sets forth acrylic compounds comprising urethane groups and carbodiimide linkages. The primary difference is compounds are monofunctional acrylate compounds that do not comprise or render obvious perfluoropolyether terminal groups. Furthermore, as of the date of this Office action, the Examiner has not located or identified any reference that can be used singularly or in combination with another reference including those previously cited and found on the PTO-892, to render the present claims anticipated or obvious to one of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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