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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, lines 4-6, reads, “wherein the waterborne release layer results from a waterborne formulation that includes greater than 50% by volume of water present in the waterborne formulation.” While paragraph 0004 of the specification discloses “a waterborne layer resulting from a waterborne formulation that includes a major portion, i.e., greater than 50% by volume, of water present in the formulation,” this is in discussion of the background of the invention and describes an example of a generic waterborne formulation. There is no support in the present disclosure to limit the water content of the formulation from which the claimed waterborne release layer is formed.
Claims 2-3 and 5 are rejected as dependent on rejected Claim 1.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mikhaylik et al. (US 2014/0272597).
Regarding Claims 1-3, Mikhaylik discloses an electrode structure comprising a first carrier substrate 2, a first release layer 4, a protective layer 6, and electroactive material layer 8 (paras 0007, 0040). The release layer is waterborne (paras 0064-0065) includes a crosslinked polymer including polyvinyl alcohol (paras 0050-0052).
Mikhaylik discloses the release layer is formed from a release layer slurry (i.e. formulation), which may use water as a solvent (paras 0064-0065). While Mikhaylik does not specifically disclose the amount of water, Mikhaylik does disclose that alcohols can be used in place of water in amounts such as at least 40 wt%. Therefore it would be obvious to use an amount of solvent, including water, in amounts greater than 40 wt%, including amounts greater than 50 vol% as claimed.
Alternatively, although Mikhaylik does not explicitly disclose the release layer is formed from a waterborne formulation having water content as claimed, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given Mikhaylik meets the requirements of the claimed waterborne release layer, Mikhaylik clearly meet the requirements of present claims.
The protective layer may be a polymer layer doped with salts such as lithium borate (i.e. borate salt) (para 0097). Given that Mikhaylik discloses polyvinyl alcohol and borate salt as presently claimed, the borate salt would necessarily inherently be capable of instantaneously crosslinking the polyvinyl alcohol.
While Mikhaylik does not specifically disclose the protective layer comprising selective light modulator particles as claimed, Mikhaylik does disclose the polymeric material of the protective layer may be any that were disclosed as suitable for the release layer, and may have additives (para 0100), and discloses that it is desirable for the protective layer to be conductive (para 0097, 0100). Mikhaylik further discloses additives that may be added to the polymer of the release layer, including carbon black which increases electrical conductivity properties (para 0059). Therefore it would have been obvious to include carbon black in the protective layer; doing so would increase electrical conductive properties of that layer. The carbon black would also necessarily act as a colorant (i.e. selective light modulator particles as claimed).
Although there is no disclosure that the protective layer is a first selective light modulator layer, given that the layer contains selective light modulator particles identical to that presently claimed, it would necessarily inherently function as a first selective light modulator layer as presently claimed.
Although there is no disclosure that the protective layer is waterborne, given that the multi-layered would not contain water in the final product, it is the examiner’s position that the protective layer of Mikhaylik is indistinguishable from the claimed first selective light modulator layer.
Regarding Claim 5, Mikhaylik discloses all the limitations of the present invention according to Claim 1 above. Although there is no disclosure that the electroactive material layer is a second selective light modulator layer, given that any layer would modulate light in some aspect to some degree, the electroactive material layer of Mikhaylik would correspond to the claimed second selective light modulator layer.
Response to Arguments
In light of applicant’s amendment filed 01/16/2026, the 35 USC 112(b) rejection of record is withdrawn.
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues that there is no disclosure in Mikhaylik of the release layer being formed of a waterborne formulation as claimed.
However, Mikhaylik discloses the release layer is formed from a release layer slurry (i.e. formulation), which may use water as a solvent (paras 0064-0065). While Mikhaylik does not specifically disclose the amount of water, Mikhaylik does disclose that alcohols can be used in place of water in amounts such as at least 40 wt%. Therefore it would be obvious to use an amount of solvent, including water, in amounts greater than 40 wt%, including amounts greater than 50 vol% as claimed.
Alternatively, although Mikhaylik does not explicitly disclose the release layer is formed from a waterborne formulation having water content as claimed, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given Mikhaylik meets the requirements of the claimed waterborne release layer, Mikhaylik clearly meet the requirements of present claims.
Applicant argues that there is no disclosure in Mikhaylik of the protective layer comprising selective light modulator particles as claimed.
While Mikhaylik does not specifically disclose the protective layer comprising selective light modulator particles as claimed, Mikhaylik does disclose the polymeric material of the protective layer may be any that were disclosed as suitable for the release layer, and may have additives (para 0100), and discloses that it is desirable for the protective layer to be conductive (para 0097, 0100). Mikhaylik further discloses additives that may be added to the polymer of the release layer, including carbon black which increases electrical conductivity properties (para 0059). Therefore it would have been obvious to include carbon black in the protective layer; doing so would increase electrical conductive properties of that layer. The carbon black would also necessarily act as a colorant (i.e. selective light modulator particles as claimed).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787