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 .
Response to Amendment
The Amendment filed 15 January 2026 has been entered. Claims 1 – 7 and 10 – 20 remain pending in the application.
Drawings
Applicant requests acknowledgement in the response filed 15 January 2026 of the Drawings filed 2 February 2024. The examiner acknowledges Applicant’s drawings and deems them acceptable.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 7, claim 7 depends on claim 6, which in turn depends on claim 1.
Claim 1 is directed to
“A nanocapsule comprising a core-shell structure, the nanocapsule comprising:
a core comprising a thermally decomposable compound; and
a shell comprising a polymer, which is a non-crosslinkable polymer and has gaps configured to permit ejection of gas generated by thermal decomposition of the core.”
Claim 6 is directed to
“The nanocapsule of claim 1, wherein
the polymer of the shell comprises a polymer formed from a monomer comprising a vinyl group.”
By virtue of this dependency, the monomer referenced in claim 6 must also be non-crosslinkable. Otherwise, such a polymer would not be within the scope of claim 1.
Claim 7 specifies “the monomer comprises methyl methacrylate, acrylonitrile, 2-ethylhexyl acrylate, butyl acrylate, vinyl acetate, ethyl acrylate, methyl acrylate, benzyl acrylate, phenoxyethyl acrylate, acrylic acid, hydroxyethyl methacrylate, glycidyl methacrylate, acetoacetoxyethyl methacrylate, 2-hydroxyethyl acrylate, isobornyl acrylate, octadecyl methacrylate, or a combination thereof”
With the exception to acrylonitrile (where no specificity is made as to crosslinkability), the instant specification considers these monomers to be crosslinkable (e.g. ¶ [0049]). However, Chen (CN 116284956 A, referring to a machine translation thereof provided with this Office Action) consider acrylonitrile to be crosslinkable (e.g. ¶ [n0022]).
Accordingly, claim 7 fails to further limit claim 6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 7, 11, 12, 14, 15, and 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (KR 2020-0042064 A, referencing a machine translation thereof provided with the Office Action mailed 22 October 2025) in view of Bain (US 2006/0219350 A1), as evidenced by Iga (WO 2020/162300 A1, referencing US 2022/0153881 A1 as an English-language equivalent).
Regarding claim 1, Hwang discloses a nanocapsule comprising a core-shell structure (“microcapsule” comprising an “outer skin portion” and a “hollow portion”, wherein the “particle size” of the “microcapsule” is generally “50 nm or more and 500 nm or less”, e.g. “microcapsule” MC: e.g. Fig. 1, 2, 4a – 7; ¶¶ [0006] – [0142]), the nanocapsule comprising:
a core comprising a thermally decomposable compound (“hollow portion” comprising a “thermal foaming agent”, e.g. “hollow cavity” IH comprising “thermal foaming agent” EM: e.g. Fig. 2; ¶¶ [0006], [0008] – [0011], [0022] – [0024], [0039], [0046], [0047], [0055], [0059], [0060], [0063] – [0069], [0072], [0098], [0105] – [0108], [0110], [0111], [0114] – [0116], [0118], [0119], [0127], [0128], [0131], [0138], [0141], [0142]); and
a shell comprising a polymer (“outer skin portion” comprising a “hydrophobic polymer material”, e.g. “outer shell” OS: e.g. Fig. 2; ¶¶ [0006], [0012] – [0014], [0022], [0023], [0027], [0039], [0046] – [0057], [0067], [0098], [0127], [0137], [0138], [0141], [0142]), which is a non-crosslinkable polymer (e.g. ¶ [0050]),
More specifically, Hwang discloses embodiments wherein the polymer is, singularly, polystyrene (e.g. ¶ [0050]), which Iga discloses is non-crosslinkable (e.g. ¶ [0073]).
Although Hwang is not explicit as to the nanocapsule having gaps configured to permit ejection of gas generated by thermal decomposition of the core, this feature would have been obvious in view of Bain.
Hwang desires their nanocapsule to be both dispersible and to eject the gas generated by thermal decomposition of the core (e.g. ¶¶ [0006], [0018], [0019], [0023], [0039], [0045], [0061], [0067], [0074], [0083], [0088], [0091] – [0093], [0098], [0106], [0107] [0127]). Bain discloses gaps assist in both of these properties (“porosity” of “microspheres”: e.g. ¶¶ [0008] – [0106]).
Accordingly, it would have been obvious to configure Hwang’s nanocapsules to have gaps configured to permit ejection of gas generated by thermal decomposition of the core, the motivation being to help dispersibility and ejection of the gas.
Regarding claim 2, in addition to the limitations of claim 1, Hwang discloses the thermally decomposable compound comprises a moiety that decomposes at a temperature of about 50 °C to about 150 °C to generate gas (e.g. ¶¶ [0006], [0008], [0009], [0022] – [0024], [0064], [0066], [0105], [0107], [0127], [0138]), which is within the recited temperature range.
Regarding claim 3, in addition to the limitations of claim 2, Hwang discloses the moiety comprises, e.g., a hydrazide group (e.g. ¶¶ [0006], [0008], [0022], [0023], [0066], [0138]).
Regarding claim 4, in addition to the limitations of claim 1, Hwang discloses the thermally decomposable compound comprises, e.g., R2SO2-NHNH2, wherein R1 is a C6 carbocyclic group, unsubstituted (benzenesulfonyl hydrazide, where the C6 carbocyclic group is a benzene ring: e.g. ¶¶ [0008], [0022], [0066], [0138]).
Regarding claim 5, in addition to the limitations of claim 1, Hwang discloses the thermally decomposable compound comprises, e.g., benzenesulfonyl hydrazide (e.g. ¶¶ [0008], [0022], [0066], [0138]).
Regarding claim 6, in addition to the limitations of claim 1, Hwang discloses the polymer of the shell comprises a polymer formed from a monomer comprising a vinyl group (e.g. ¶¶ [0013], [0014], [0022], [0048] – [0051], [0053], [0054]).
Regarding claim 7, in addition to the limitations of claim 1, Hwang discloses the monomer comprises, e.g., methyl methacrylate (e.g. ¶¶ [0013], [0022], [0050], [0051], [0054], [0138]).
Regarding claim 11, Hwang discloses a composition (for a “heat-peelable adhesive member”, e.g. “thermally peelable adhesive member” AP: e.g. Fig. 1 – 7; ¶¶ [0004] – [0155]) comprising:
the nanocapsule discussed in the 35 U.S.C. 102(a)(1) rejection of claim 1 (e.g. Fig. 1, 2, 4a – 7; ¶¶ [0006] – [0142]);
a crosslinkable monomer (“base resin”, e.g. “base resin” BR: e.g. ¶¶ [0006], [0017], [0020], [0021], [0023], [0025], [0039] – [0045], [0057], [0061], [0080] – [0083], [0085], [0088], [0093], [0098], [0127]); and
an initiator (“photoinitiator”: e.g. ¶ [0085]).
Regarding claim 12, in addition to the limitations of claim 11, Hwang discloses the crosslinkable monomer comprises a vinyl group (e.g. ¶¶ [0020], [0040] – [0042], [0044]).
Regarding claim 14, in addition to the limitations of claim 12, Hwang discloses the crosslinkable monomer comprises, e.g., 2-ethylhexyl acrylate (e.g. ¶¶ [0020], [0041], [0042]).
Regarding claim 15, Hwang discloses a film (e.g. Fig. 6a, 6b) comprising a nanocapsule layer formed using the composition discussed in the 35 U.S.C. 102(a)(1) rejection of claim 11 (e.g. Fig. 1 – 7; ¶¶ [0004] – [0155]) and an optically clear adhesive (“optically transparent adhesive member” AAP: e.g. Fig. 6a, 6b; ¶¶ [0025], [0104], [0117] – [0126], [0130], [0150]).
Regarding claim 18, Hwang discloses an electronic apparatus (e.g. Fig. 5a – 7; ¶¶ [0004] – [0155]) comprising:
a first substrate (a first one of “window member” WP, “input detection unit” TSU, and “display panel” DP: e.g. Fig. 5a – 7; ¶¶ [0097] – [0132]);
a second substrate opposed to the first substrate (a second one of the “window member” WP, the “input detection unit” TSU, and the “display panel” DP: e.g. Fig. 5a – 7; ¶¶ [0097] – [0132]); and
a film disposed between the first substrate and the second substrate, wherein the film is the film of claim 15 (e.g. Fig. 6a, 6b; ¶¶ [0117] – [0126]).
Regarding claim 19, in addition to the limitations of claim 18, Hwang discloses the nanocapsule layer contacts at least one of the first substrate, the second substrate, or both the first substrate and the second substrate (e.g. Fig. 5a – 7; ¶¶ [0097] – [0132]).
Regarding claim 20, in addition to the limitations of claim 18, Hwang discloses the first substrate and the second substrate each independently comprise, e.g., a display panel or tempered glass (“display panel” DP and “window member” WP, wherein the “window member” WP: e.g. Fig. 5a – 7; ¶¶ [0097] – [0132]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang in view of Fishman (WO 2020/254916 A1).
Regarding claim 9, Hwang discloses a nanocapsule comprising a core-shell structure (“microcapsule” comprising an “outer skin portion” and a “hollow portion”, wherein the “particle size” of the “microcapsule” is generally “50 nm or more and 500 nm or less”, e.g. “microcapsule” MC: e.g. Fig. 1, 2, 4a – 7; ¶¶ [0006] – [0142]), the nanocapsule comprising:
a core comprising a thermally decomposable compound (“hollow portion” comprising a “thermal foaming agent”, e.g. “hollow cavity” IH comprising “thermal foaming agent” EM: e.g. Fig. 2; ¶¶ [0006], [0008] – [0011], [0022] – [0024], [0039], [0046], [0047], [0055], [0059], [0060], [0063] – [0069], [0072], [0098], [0105] – [0108], [0110], [0111], [0114] – [0116], [0118], [0119], [0127], [0128], [0131], [0138], [0141], [0142]); and
a shell comprising a polymer (“outer skin portion” comprising a “hydrophobic polymer material”, e.g. “outer shell” OS: e.g. Fig. 2; ¶¶ [0006], [0012] – [0014], [0022], [0023], [0027], [0039], [0046] – [0057], [0067], [0098], [0127], [0137], [0138], [0141], [0142]).
Although Hwang is not explicit as to the thermally decomposable compound being decomposed by heat to generate H2O (g), this feature would have been obvious in view of Fishman.
MPEP § 2143, I, B, states the following regarding simple substitution of one known element for another to obtain predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), as noted above, Hwang provides for the claimed nanocapsule except for the thermally decomposable compound required of claim 9.
With respect to (2) and (3), Fishman discloses capsules comprising a core-shell structure (“composite particle”: e.g. p. 1, l. 16, to p. 49, l. 8), the nanocapsule comprising:
a core comprising a thermally decomposable compound (“chemical blowing agent” “encapsulated” within a “shell”, thus forming a “core”: e.g. p. 1, ll. 16 – 28; p. 2, ll. 3 – 21; p. 5, ll. 9 – 16; p. 20, ll. 18 – 21; p. 21, l. 32, to p. 24, l. 20; p. 25, l. 31, to p. 27, l. 23; p. 28, ll. 11 – 30; p. 29, ll. 3 – 7; p. 32, ll. 9 – 14; p. 35, ll. 7 – 15; p. 35, l. 28, to p. 36, l. 3; p. 41, ll. 16 – 19; p. 42, l. 23, to p. 43, l. 2; p. 43, ll. 19 – 21; p. 43, l. 24, to p. 44, l. 14; p. 44, ll. 26 – 27; p. 44, l. 35, to p. 45, l. 3; p. 46, ll. 22 – 25; p. 47, ll. 14 – 28); and
a shell comprising a polymer (the aforementioned “shell”, which is a “polymer shell”: e.g. p. 1, ll. 24 – 28; p. 2, ll. 8 – 14; p. 5, ll. 9 – 16; p. 20, ll. 18 – 21; p. 21, ll. 19 – 31; p. 21, l. 33, to p. 22, l. 8; p. 23, l. 14 – 17; p. 24, ll. 8 – 14; p. 25, ll. 8 – 35; p. 26, ll. 8 – 18; p. 26, l. 33, to p. 27, l. 3; p. 29, ll. 8 – 12; p. 29, ll. 16 – 29; p. 32, ll. 4 – 14; p. 35, ll. 7 – 15; p. 41, ll. 16 – 18; p. 44, l. 35, to p. 45, l. 3; p. 46, ll. 17 – 25; p. 47, ll. 14 – 16).
With respect to the thermally decomposable compound being decomposed by heat to generate H2O (g), Fishman discloses a “metal salt” of the form M(X)2 can be used, where M can be zinc and X can be hydroxide, or “additional material” such as “zinc hydroxide” can be “co-encapsulated” with the “metal salt” (e.g. p. 2, ll. 12 – 19; p. 22, l. 25, to p. 23, l. 6; p. 23, ll. 14 – 28; p. 43, l. 27, to p. 44, l. 8; p. 47, ll. 14 – 28). Collectively, these disclosures identify Zn(OH)2, which is a suitable species of M(OH)m for generating H2O (g) in the instant specification (e.g. ¶¶ [0031], [0033], [0034], [0036]).
Fishman discloses sulfonyl hydrazides, e.g. p-toluene sulfonyl hydrazide, may also be used as a thermally decomposable compound for use in the core (e.g. p. 22, ll. 9 – 14; p. 23, ll. 9 – 11; p. 24, ll. 5 – 7; p. 42, ll. 23 – 29, 32 – 33; p. 44, ll. 13 – 14, 26 – 27). Likewise, Hwang discloses the thermally decomposable compound comprises, e.g., p-toluenesulfonyl hydrazide (e.g. ¶¶ [0008], [0022], [0066], [0138]). The fact Fishman uses p-toluene sulfonyl hydrazide and a thermally decomposable compound being decomposed by heat to generate H2O (g), e.g. Zn(OH)2, equivalently means one can be substituted for the other with no change in their respective function of expansion under thermal decomposition.
With respect to (4), Fishman discloses combinations of both p-toluenesulfonyl hydrazide and a thermally decomposable compound being decomposed by heat to generate H2O (g), e.g. Zn(OH)2, (co-encapsulation: e.g. p. 22, ll. 9 – 14; p. 23, ll. 9 – 11; p. 24, ll. 5 – 7; p. 42, ll. 23 – 29, 32 – 33; p. 44, ll. 13 – 14, 26 – 27). The examiner finds this to be further evidence that substitution of p-toluenesulfonyl hydrazide as Hwang discloses for a thermally decomposable compound being decomposed by heat to generate H2O (g), e.g. Zn(OH)2, to be reasonable. Furthermore, while Hwang discloses the thermally decomposable compound is decomposed by heat to generate, e.g., nitrogen (e.g. ¶¶ [0009], [0024], [0069]), the examiner finds Hwang does not limit their disclosure to any particular gas generated. Rather, Hwang’s concern is the temperature of the thermal decomposition (e.g. ¶¶ [0006], [0008], [0009], [0022] – [0024], [0064], [0066], [0105], [0107], [0127], [0138]). For Fishman’s disclosure to operate with combinations of p-toluenesulfonyl hydrazide and Zn(OH)2, or other species within the respective genera these species belong to, it is understood that such species must have compatible temperature properties for thermal decomposition.
Accordingly, it would have been obvious to substitute, e.g., p-toluenesulfonyl hydrazide as Hwang discloses for, e.g., Zn(OH)2 as Fishman discloses. One of ordinary skill in the art would have performed this substitution since it yields a predictable result, namely successful expansion of the nanocapsules.
Since Fishman directly discloses at least one species for substitution with Hwang within the scope of the claimed genus, claim 9 is considered met.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang and Bain (as evidenced by Iga) as applied to claim 1 above.
Regarding claim 10, in addition to the limitations of claim 1, Hwang discloses a size of the nanocapsule is about 50 nanometers to about 500 nanometers, e.g. about 50 nanometers to about 200 nanometers (e.g. ¶¶ [0007], [0024], [0058], [0062], [0063], [0098]).
Hwang’s broader range for the size of the nanocapsule encompasses the claimed range whereas Hwang’s narrower range for the size of the nanocapsule overlaps the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
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). See MPEP § 2144.05, I.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hwang and Bain (as evidenced by Iga) as applied to claim 12 above.
Regarding claim 13, in addition to the limitations of claim 12, Hwang discloses an amount of the nanocapsule is about 0.05 weight percent to about 40 weight percent (based on the total weight of the composition), e.g. 0.1 weight percent to 10 weight percent (based on the total weight of the composition: e.g. ¶¶ [0017], [0082] – [0084], [0140]).
Hwang’s narrower range for the amount of the nanocapsule is within the claimed range, thereby anticipating claim 13.
However, Hwang’s broader range for the amount of the nanocapsule also encompasses the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang and Bain (as evidenced by Iga) as applied to claim 15 above, and further in view of Kang (KR 2017-0051620 A, referencing a machine translation thereof provided with the Office Action mailed 22 October 2025).
Regarding claim 16, although Hwang is not explicit as to a thickness of the nanocapsule layer being about 1 micrometers to about 30 micrometers, this feature would have been obvious in view of Kang.
Hwang’s nanocapsule layer is an adhesive layer, notably for electronic apparatuses such as optical displays (“heat-peelable adhesive member”, e.g. “thermally peelable adhesive member” AP: e.g. Fig. 1 – 7; ¶¶ [0004] – [0155]).
Kang notes an adhesive layer for bonding display panels to other features of optical displays have a thickness of 10 micrometers to 300 micrometers, e.g. 20 micrometers to 150 micrometers, as this range is suitable for this purpose (“adhesive layer” 120: e.g. ¶¶ [0007] – [0128], particularly ¶ [0044] for the recitation of the thickness range). Considering Hwang describes non-limiting examples where a thickness of an adhesive layer is 100 micrometers (e.g. ¶ [0146]), which is within Kang’s disclosure, one of ordinary skill in the art would have found Kang’s broader disclosure to be reasonable in regards to thicknesses suitable for the intended purpose Hwang discloses.
Accordingly, in order to properly provide an electronic apparatus such as a display, it would have been obvious for the thickness of the nanocapsule layer to be 10 micrometers to 300 micrometers, e.g. 20 micrometers to 150 micrometers.
Both of Kang’s ranges for the thickness of the nanocapsule layer overlap the claimed range.
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). See MPEP § 2144.05, I.
Regarding claim 17, although Hwang is not explicit as to the film having a thickness of about 20 micrometers to about 200 micrometers, this feature would have been obvious in view of Kang.
Hwang’s nanocapsule layer is an adhesive layer, notably for electronic apparatuses such as optical displays (“heat-peelable adhesive member”, e.g. “thermally peelable adhesive member” AP: e.g. Fig. 1 – 7; ¶¶ [0004] – [0155]).
Kang notes an adhesive layer for bonding display panels to other features of optical displays have a thickness of 10 micrometers to 300 micrometers, e.g. 20 micrometers to 150 micrometers, as this range is suitable for this purpose (“adhesive layer” 120: e.g. ¶¶ [0007] – [0128], particularly ¶ [0044] for the recitation of the thickness range). Considering Hwang describes non-limiting examples where a thickness of an adhesive layer is 100 micrometers (e.g. ¶ [0146]), which is within Kang’s disclosure, one of ordinary skill in the art would have found Kang’s broader disclosure to be reasonable in regards to thicknesses suitable for the intended purpose Hwang discloses.
Accordingly, in order to properly provide an electronic apparatus such as a display, it would have been obvious for the thickness of the nanocapsule layer to be 10 micrometers to 300 micrometers, e.g. 20 micrometers to 150 micrometers.
It should also be noted Hwang discloses the nanocapsule layer and the optically clear adhesive may have the same thickness or may differ, e.g. such that the nanocapsule layer is thinner than the optically clear adhesive (e.g. ¶ [0125]). Given the thickness Kang discloses for the nanocapsule layer as noted in the 35 U.S.C. 103 rejection of claim 16 is 10 micrometers to 300 micrometers, e.g. 20 micrometers to 150 micrometers, it follows the film has a thickness of 20 micrometers to 600 micrometers, e.g. 40 micrometers to 300 micrometers when the thicknesses are equal. For the exemplary manner of different thicknesses, one of ordinary skill in the art would have understood the thickness of the film would increase from the ranges cited for the equal-thickness embodiments.
In any case, the thickness of the film as Hwang and Kang disclose either encompasses the claimed range or overlaps the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
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). See MPEP § 2144.05, I.
Response to Arguments
Applicant’s arguments, see pp. 6 - 9, filed 14 January 2026, with respect to the rejections of claims 1 – 20 under 35 U.S.C. 102 and/or 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bain (for claims 1 – 7 and 10 – 20) and Fishman (for claim 9) as secondary disclosures.
Applicant asserts patentability of claim 1 on the basis that Hwang does not disclose a non-crosslinkable polymer or the gaps as required of claim 1. However, Iga provides disclosure for a species of Hwang’s disclosure which is a non-crosslinkable polymer. Bain provides gaps which assists in providing the dispersibility and gas ejection Hwang discloses. The same reasoning is applied to the remaining claims dependent on claim 1 in light of Applicant’s reliance on similar arguments to that for claim 1.
Applicant asserts patentability of claim 9 (now an independent claim) on the basis that Hwang does not disclose H2O gas generation. However, Fishman identifies compounds generation H2O gas and are equivalent to those Hwang discloses and are thus substitutable therewith.
Accordingly, the new grounds of rejections are presented herein.
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 ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
Prosecution Insights