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 amendments to the claims, in the submission dated 05/29/2026, are acknowledged and accepted. No claims are amended. No claims are cancelled by the applicant. No claims are added. Claims 1-13 are pending.
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.
Claims 1-4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka et al. US PGPub 2016/0195651 A1 (of record, see IDS dated 02/19/2024, hereinafter, “Yoshioka”) in view of Kubo US PGPub 2020/0158930 A1 (of record, see Office action dated 03/04/2026, hereinafter, “Kubo”).
Regarding independent claim 1, Yoshioka discloses an optical filter (refer to at least title and abstract disclosing an optical filter) comprising:
a substrate (Fig. 1A, optical filter includes transparent substrate 11, par. [0019]); and
a dielectric multilayer film laid on or above at least one major surface of the substrate (Fig. 1A, optical filter includes reflecting layer 13 disposed on a major surface of substrate 11, and layer 13 is formed of a dielectric multilayer film, pars. [0019], [0116]), wherein
the substrate comprises a resin film comprising a resin (Fig. 1A, optical filter includes absorbing layer 12 formed of a resin, par. [0019]), a UV pigment 1 having a maximum absorption wavelength in 360 nm to 390 nm in the resin (Fig. 1A, absorbing layer 12 has at least two layers, where one of the layers is an ultraviolet absorbing layer having an absorption peak wavelength at 360 to 415 nm, par. [0019]), and an IR pigment having a maximum absorption wavelength in 680 nm to 800 nm in the resin (Fig. 1A, absorbing layer 12 has at least two layers, where one of the layers is a near-infrared absorbing layer having an absorption peak wavelength at 670 to 780 nm, par. [0019]), and
the optical filter satisfies the following spectral characteristics:
(i-1) an average transmittance T360-400(0)AVE in a spectral transmittance curve at a wavelength of 360 nm to 400 nm and an incident angle of 0 degrees is 0.5% or less (when the incident angle is 0°, the average transmittance at the wavelength of 350 to 395 nm of the present filter is preferably 3% or less, par. [0037], refer to Table 11 where the average transmittance between 350 nm and 400 nm is given as 0.39% at an incident angle of 0 degree),
(i-3) an average transmittance T400-430(0)AVE in a spectral transmittance curve at a wavelength of 400 nm to 430 nm and an incident angle of 0 degrees is 35% or more (Fig. 5, transmittance at 400 nm is 0% as best estimated by the Examiner, and the transmittance at 430 nm is 76% as best estimated by the Examiner, thus the average transmittance over the range of 400 nm to 430 nm is 38% at an angle of incidence of 0 degrees, satisfying the limitation),
(i-4) an average transmittance T430-500(0)AVE in a spectral transmittance curve at a wavelength of 430 nm to 500 nm and an incident angle of 0 degrees is 88% or more (Yoshioka discloses in a spectral transmittance curve, when an incident angle is 0°, the average transmittance at a wavelength of 430 to 620 nm is 80% or more, par. [0028], and from Fig. 5, transmittance at 430 nm is 76% as best estimated by the Examiner, and the transmittance at 500 nm is 99% as best estimated by the Examiner, thus the average transmittance over the range of 430 nm to 500 nm is 88% at an angle of incidence of 0 degrees, satisfying the limitation),
(i-5) in a spectral transmittance curve at a wavelength of 350 nm to 450 nm and an incident angle of 0 degrees, a wavelength UV50(0) at which a transmittance is 50% is 400 nm to 430 nm (Yoshioka discloses there is a wavelength l0(UV) with transmittance of 50% in a wavelength range of 400 to 425 nm in the spectral transmittance curve when the incident angle is 0°, par. [0029], within the claimed range),
(i-6) when an absolute value of a difference between a wavelength UV10(0) when a transmittance is 10% and a wavelength UV70(0) when the transmittance is 70% is DUV70-10(0) in the spectral transmittance curve at the wavelength of 350 nm to 450 nm and the incident angle of 0 degrees (from Fig. 5, transmittance of 10% at 0 degree incidence is at a wavelength of 410 nm, as best estimated by the Examiner, and a transmittance of 70% at 0 degree incidence is at 417 nm, therefore DUV70-10(0) is 7 nm at 0 degree), and an absolute value of a difference between a wavelength UV10(30) when a transmittance is 10% and a wavelength UV70(30) when the transmittance is 70% is DUV70-10(30) in a spectral transmittance curve at a wavelength of 350 nm to 450 nm and an incident angle of 30 degrees (from Fig. 5, transmittance of 10% at 30 degrees incidence is at 410 nm, as best estimated by the Examiner, and a transmittance of 70% at 30 degrees incidence is at 417 nm, therefore DUV70-10(30) is 7 nm at 30 degrees),
an absolute value of a difference between DUV70-10(0) and DUV70-10(30) is 2.5 nm or less (the absolute value of the difference between DUV70-10(0) and DUV70-10(30) is 0 nm as best determined by the Examiner from Fig. 5, as the transmittance curves for 0 degree and 30 degrees are practically identical over the range of interest),
(i-7) in a spectral transmittance curve at a wavelength of 600 nm to 700 nm and an incident angle of 0 degrees, a wavelength IR50(0) at which a transmittance is 50% is 610 nm to 670 nm (Yoshioka discloses there is a wavelength with transmittance of 50% within the range of 600 to 700 nm in the spectral transmittance curve at the incident angle of 0°, par. [0033], and from Fig. 5, there is 50% transmittance at a wavelength of 645 nm at 0 degree incidence as best estimated by the Examiner, within the claimed range), and in a spectral transmittance curve at a wavelength of 600 nm to 700 nm and an incident angle of 30 degrees, a wavelength IR50(30) at which a transmittance is 50% is 610 nm to 670 nm (Yoshioka discloses there is a wavelength with transmittance of 50% within the range of 600 to 700 nm in the spectral transmittance curve at the incident angle of 30°, par. [0033], and from Fig. 5, there is 50% transmittance at a wavelength of 645 nm at 30 degrees incidence, as best estimated by the Examiner, within the claimed range), and
(i-8) an absolute value of a difference between the wavelength IR50(0) and the wavelength IR50(30) is 5 nm or less (the absolute value of the difference between IR50(0) and IR50(30) is 0 nm as best determined by the Examiner from Fig. 5, as the transmittance curves for 0 degree and 30 degrees are practically identical over the range of interest).
Yoshioka does not disclose the limitation (i-2) an average transmittance T350-390(50)AVE in a spectral transmittance curve at a wavelength of 350 nm to 390 nm and an incident angle of 50 degrees is 0.5% or less (Yoshioka Fig. 5 shows practically zero transmittance between 300 nm and 400 nm when the incident angle is 0°, and the transmittance at a wavelength of 350 nm to 400 nm is preferably 1% or less, par. [0117], but Yoshioka does not disclose transmittance spectra for an angle of incidence of 50 degrees).
Examiner notes that features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) ("where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on").
In this case, the optical filter disclosed by Yoshioka has the same structure as that claimed and exhibits the same transmissivity characteristics for an incidence angle of 0 degrees, see rejection above. Because the structure of the claimed system, as identified above, is the same as that claimed, it must inherently perform the same function and possess the same optical characteristics when light is incident at an angle of 50 degrees. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Nevertheless, in the same field of invention, Kubo discloses an optical filter (see title and abstract thereof) with ultraviolet and infrared absorbing layer (abstract thereof) and Kubo discloses an Example 2 of a UV-IR absorbing optical filter with transmittance spectra for incident angles ranging from 0° to 65°, and transmittance spectra for an incident angle of 50° is shown in at least Fig. 4 thereof, and Tables 13 and 14 provide the results of observed transmittance spectra according to Example 2 (par. [0113] thereof). From Table 13, Kubo teaches at an incident angle of 50°, the maximum transmittance over 300 nm to 350 nm is 0.02%, and over the wavelength range 300 nm to 360 nm the maximum transmittance is 0.03%. Kubo also teaches in Table 14 that at an incident angle of 50° the optical filter has a transmittance of 0.1% or less over the range 300 nm to 373 nm.
Per 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, Kubo teaches a range of wavelengths in the ultraviolet, from at least 300 nm to up to 373 nm, overlapping the claimed range of 350 nm to 390 nm, with transmittances that are 0.1% or less, satisfying the limitation that the transmittance be 0.5% or less over the claimed range for an angle of incidence of 50°.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Kubo to the disclosure of Yoshioka and ensured the optical filter of Yoshioka transmitted less than 0.5% of light in the wavelength range of 350 nm to 390 nm incident at an angle of 50°, to provide the optical filter with the desired optical characteristics in a simple configuration (Kubo, par. [0015]) and produce a filter that conforms better to the visual sensitivity of humans (Kubo, par. [0044]).
Regarding dependent claim 2, Yoshioka in view of Kubo (hereinafter, “modified Yoshioka”) discloses the optical filter according to claim 1, and Yoshioka further discloses the optical filter further satisfying the following spectral characteristic (i-9):
(i-9) the absolute value of the difference between the wavelength UV10(0) and the wavelength UV70(0) is 13 nm or less (from Fig. 5, transmittance of 10% at 0 degree incidence is at a wavelength of 410 nm, as best estimated by the Examiner, and a transmittance of 70% at 0 degree incidence is at 417 nm, therefore DUV70-10(0) is 7 nm at 0 degree, satisfying the limitation).
Regarding dependent claim 3, modified Yoshioka discloses the optical filter according to claim 1, and Yoshioka further discloses wherein a product of a content of the UV pigment 1 in the resin film and a thickness of the resin film is 15 (mass% ∙ mm) or less (Yoshioka discloses absorber U is contained in absorbing layer 12 at 0.01 to 30 parts by mass to 100 parts by mass of transparent resin, par. [0078], and Yoshioka discloses a thickness of the absorbing layer 12 is preferably 0.1 µm to 100 µm, par. [0051], thus Yoshioka teaches a range from 0.001 mass% ∙ mm to 10000 mass% ∙ mm, and Yoshioka teaches a range from 0.1 to 20 parts by mass per 100 parts by mass of transparent resin is preferable, thereby teaching a range from 0.01 mass% ∙ mm to 2000 mass% ∙ mm).
Per 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, Yoshioka teaches a range of compositions and thicknesses for the absorbing layer 12 of the disclosed optical filter that overlaps the claimed range of 15 (mass% ∙ mm) or less.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to select a composition and thickness of layer 12 of Yoshioka to arrive at a value between 0.01 mass% ∙ mm to 2000 mass% ∙ mm, such as 15 (mass% ∙ mm) or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Regarding dependent claim 4, modified Yoshioka discloses the optical filter according to claim 1, and Yoshioka further discloses wherein the resin film further comprises a UV pigment 2 (Yoshioka teaches absorber U may be two kinds of compounds mixed or used together, pars. [0078] and [0099], thereby teaching the option for a second UV pigment in the optical filter of Yoshioka) having a maximum absorption wavelength in 390 nm to 405 nm in the resin (Yoshioka Fig. 1A, absorbing layer 12 has an ultraviolet absorbing layer having an absorption peak wavelength at 360 to 415 nm, par. [0019], overlapping the claimed range), and
a product of a total content of the UV pigment 1 and the UV pigment 2 in the resin film and a thickness of the resin film is 15 (mass% ∙ mm) or less (Yoshioka discloses absorber U is contained in absorbing layer 12 at 0.01 to 30 parts by mass to 100 parts by mass of transparent resin, par. [0078], and Yoshioka discloses a thickness of the absorbing layer 12 is preferably 0.1 µm to 100 µm, par. [0051], thus Yoshioka teaches a range from 0.001 mass% ∙ mm to 10000 mass% ∙ mm, and Yoshioka teaches a range from 0.1 to 20 parts by mass per 100 parts by mass of transparent resin is preferable, thereby teaching a range from 0.01 mass% ∙ mm to 2000 mass% ∙ mm).
Per 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, Yoshioka teaches a range of compositions and thicknesses for the ultraviolet absorbing compounds of layer 12 comprising the disclosed optical filter that overlap the claimed range of 15 (mass% ∙ mm) or less.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to select a composition and thickness of layer 12 of Yoshioka to arrive at a value between 0.01 mass% ∙ mm to 2000 mass% ∙ mm, such as 15 (mass% ∙ mm) or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Yoshioka does not explicitly disclose the maximum absorption wavelength of UV pigment 2 being larger than that of the UV pigment 1 by 10 nm or more.
In the same field of invention, Kubo teaches an absolute value of a difference between a second UV cut-off wavelength and the first UV cut-off wavelength is 10 nm or less (par. [0057] thereof), and Kubo teaches an absolute value of a difference between a third UV cut-off wavelength and the first UV cut-off wavelength is 15 nm or less (par. [0059] thereof), and Kubo teaches in optical filter 1a, an absolute value of a difference between a fourth UV cut-off wavelength and the first UV cut-off wavelength is 20 nm or less (par. [0060] thereof).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Kubo to the disclosure of Yoshioka and ensured the optical filter of Yoshioka exhibited a maximum absorption wavelength of a second UV pigment that is larger than that of the first UV absorbing pigment by 10 nm or more, to provide the optical filter with the desired optical characteristics in a simple configuration (Kubo, par. [0015]) and produce a filter that conforms better to the visual sensitivity of humans (Kubo, par. [0044]).
Regarding dependent claim 9, modified Yoshioka discloses the optical filter according to claim 4, and Yoshioka and Kubo both further disclose wherein the UV pigment 2 comprises a merocyanine compound (Yoshioka discloses absorber U may be comprised of a merocyanine base, par. [0061], and Kubo teaches optical filter disclosed therein may be merocyanine-based, par. [0098] thereof).
Regarding dependent claim 10, modified Yoshioka discloses the optical filter according to claim 1, and Yoshioka further discloses wherein the IR pigment comprises at least one compound selected from the group consisting of a squarylium compound, a phthalocyanine compound, and a cyanine compound (Yoshioka discloses near-infrared absorber A with a squarylium-based dye, pars. [0079-85]).
Regarding dependent claim 11, modified Yoshioka discloses the optical filter according to claim 1, and Yoshioka further discloses wherein the resin is a transparent resin (Yoshioka discloses absorbing layer 12 is formed of a transparent resin, par. [0049]).
Regarding dependent claim 12, modified Yoshioka discloses the optical filter according to claim 11, and Yoshioka discloses the optical filter further comprising a polyimide resin as the transparent resin (Yoshioka discloses transparent resin comprising a polyimide resin, par. [0103]).
Regarding dependent claim 13, modified Yoshioka discloses the optical filter according to claim 1, and Yoshioka further discloses an imaging device comprising the optical filter according to claim 1 (Yoshioka teaches the filter disclosed can be used as a filter for an imaging device such as a digital still camera, par. [0123]).
Allowable Subject Matter
Claims 5-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding dependent claim 5, modified Yoshioka discloses the optical filter according to claim 1, but the prior art combination does not disclose wherein the UV pigment 1 satisfies all of the following spectral characteristics (ii-1) to (ii-3) in a spectral internal transmittance curve of a coating film obtained by dissolving the UV pigment 1 in the resin and coating an alkali glass plate with a mixture,
(ii-1) an absorbance at a maximum absorption wavelength is 0.1 (mass% ∙ mm) or more,
(ii-2) in the spectral internal transmittance curve of the coating film in which an internal transmittance at a maximum absorption wavelength is 1%, an average internal transmittance T350-400AVE at a wavelength of 350 nm to 400 nm is 13% or less, and
(ii-3) in the spectral internal transmittance curve of the coating film normalized such that the internal transmittance at the maximum absorption wavelength is 1%, an absolute value of a difference between a wavelength UV10 when an internal transmittance at a wavelength of 350 nm to 450 nm is 10% and a wavelength UV70 when an internal transmittance is 70% is 10 nm or less (Yoshioka and Kubo are silent with respect to internal transmittance characteristics of the optical filters disclosed therein, so the prior art combination cannot be compared to the limitations of the instant claim).
Regarding dependent claim 6, modified Yoshioka discloses the optical filter according to claim 1, wherein the UV pigment 1 is a cyanine compound (Yoshioka teaches absorber U can be comprised of cyanine, par. [0061]), but the prior art combination does not disclose the pigment is represented by the following formula (S):
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[Symbols in the above formula are as follows.
R1 and R2 each independently represent an alkyl group having 1 to 4 carbon atoms;
R3 to R10 each independently represent a hydrogen atom, a halogen atom, a sulfo group, a hydroxyl group, a cyano group, a nitro group, a carboxy group, a phenyl group, an alkyl group having 1 to 10 carbon atoms which may have a substituent, an alkoxy group having 1 to 10 carbon atoms which may have a substituent, an acyloxy group having 1 to 10 carbon atoms which may have a substituent, -NR11R12 (R11 and R12 are each independently a hydrogen atom, an alkyl group having 1 to 10 carbon atoms which may have a substituent, -C(=O)-R13 (R13 is an alkyl group having 1 to 10 carbon atoms or an aryl group having 6 to 11 carbon atoms, which may have a substituent), -SO2-R14 (R14 is an alkyl group having 1 to 10 carbon atoms or an aryl group having 6 to 11 carbon atoms, which may have a substituent)), or -SO2-R15 (R15 is an alkyl group having 1 to 10 carbon atoms or an aryl group having 6 to 11 carbon atoms, which may have a substituent, or -NR16R17(R16 and R17 each independently represent a hydrogen atom or an alkyl group having 1 to 10 carbon atoms which may have a substituent));
X and Y each independently represent O, S, or -C(CH3)2; and
An- represents a monovalent anion.]
Yoshioka and Kubo are silent with respect to any structures of the ultraviolet-absorbing pigments or dyes disclosed therein, so a comparison of the prior art cited to the specific limitation regarding the structure of the pigments disclosed therein cannot be made.
Regarding dependent claim 7, the prior art combination does not disclose the optical filter according to claim 6, therefore the prior art combination does not disclose wherein X and Y are O in the cyanine compound represented by the formula (S). As noted, Yoshioka and Kubo are silent with respect to any structures of the ultraviolet-absorbing pigments or dyes disclosed therein, so a comparison of the prior art cited to the specific limitation regarding the structure of the pigments disclosed therein cannot be made.
Regarding dependent claim 8, modified Yoshioka discloses the optical filter according to claim 1, but the prior art combination does not disclose wherein the resin film satisfies all of the following spectral characteristics (iii-1) to (iii-9):
(iii-1) an internal transmittance T360 at a wavelength of 360 nm is 25% or less,
(iii-2) an internal transmittance T370 at a wavelength of 370 nm is 10% or less,
(iii-3) an internal transmittance T380 at a wavelength of 380 nm is 4% or less,
(iii-4) an average internal transmittance T360-400AVE in a spectral transmittance curve at a wavelength of 360 nm to 400 nm is 15% or less,
(iii-5) an average internal transmittance T400-430AVE in a spectral transmittance curve at a wavelength of 400 nm to 430 nm is 40% or more,
(iii-6) an average internal transmittance T430-500AVE in a spectral transmittance curve at a wavelength of 430 nm to 500 nm is 90% or more,
(iii-7) in a spectral transmittance curve at a wavelength of 350 nm to 450 nm, an absolute value of a difference between a wavelength UV10 when an internal transmittance is 10% and a wavelength UV70 when an internal transmittance is 70% is 17 nm or less,
(iii-8) an internal transmittance T700 at a wavelength of 700 nm is 5% or less, and
(iii-9) in a spectral transmittance curve at a wavelength of 600 nm to 700 nm, a wavelength IR50 at which an internal transmittance is 50% is 610 nm to 670 nm (Yoshioka and Kubo are silent with respect to internal transmittance characteristics of the optical filters disclosed therein, so the prior art combination cannot be compared to the limitations of the instant claim).
Response to Arguments
Applicant's arguments filed 05/29/2026 have been fully considered but they are not persuasive.
Applicant has argued that primary reference Yoshioka does not disclose the characteristics (i-3), (i-4), (i-6), (i-7), and (i-8) of claim 1. Specifically, Applicant argues that Example 10-2 is an optical filter that does not fall within the scope of claim 1 of the present application because the ultraviolet absorber U1 used in Example 10-2 disclosed by Yoshioka is a dye having a maximum absorption wavelength of 396 nm, whereas the instant application is directed to a UV pigment 1 having a maximum absorption wavelength in 360 nm to 390 nm, and that, according to Table 16 of Yoshioka, Example 10-2 has a transmittance of 0.6% in the 350 nm to 395 nm range, and based on this, Applicant respectfully submits that the best available evidence indicates that this example very likely does not satisfy requirement (i-2) of the present invention. Examiner respectfully disagrees.
While Examiner did present the argument that the optical filter disclosed by Yoshioka has the same structure as the instant application and as such must inherently perform the same function and possess the same optical characteristics when light is incident at an angle of 50 degrees to satisfy limitation (i-2), Examiner did not rely solely on Yoshioka for teaching (i-2) an average transmittance T350-390(50)AVE in a spectral transmittance curve at a wavelength of 350 nm to 390 nm and an incident angle of 50 degrees is 0.5% or less. Rather, Kubo is cited to teach the limitation (i-2) wherein an average transmittance T350-390(50)AVE in a spectral transmittance curve at a wavelength of 350 nm to 390 nm and an incident angle of 50 degrees is 0.5% or less, see rejection of claim 1 above.
With respect to characteristics (i-3), (i-4), (i-6), (i-7), and (i-8), the mapping of the characteristics and features disclosed by Yoshioka are presented in the rejection of claim 1 above, and all motivations for the combination of Yoshioka and Kubo are gleaned from the prior art, and as such the prior art combination teaches the invention as claimed.
Applicant has argued that Example 10-2 of Yoshioka corresponds to comparative examples present in the specification that use ultraviolet absorbers having a maximum absorption wavelength greater than 390 nm, including Examples 2-7 and 3-7 (maximum absorption wavelength 397 nm) and Examples 2-8 and 3-8 (maximum absorption wavelength 399 nm) and therefore when a dye having a maximum absorption wavelength greater than 390 nm is used, characteristic (i-3) cannot be met, and accordingly, Applicant argues that the optical filters of Yoshioka correspond to the comparative examples of the present application and therefore, as demonstrated, do not meet the optical characteristics recited in claim 1. Examiner notes that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, Yoshioka and Kubo disclose, teach, and suggest all the limitations recited in at least claim 1, and Applicant’s argument that the optical filters of Yoshioka correspond to the comparative examples of the present application and therefore do not meet the optical characteristics recited in claim 1 is contradictory.
If the example optical filter disclosed by Yoshioka does correspond to the comparative examples of the present application, as argued by the Applicant, then Yoshioka is able to satisfy the limitations recited in claim 1, because the comparative examples disclosed in the instant specification are expected to satisfy the limitations recited in the claims. However, if the comparative examples upon which the limitations of the instant claims are based do not satisfy the limitations of at least claim 1, then it is unclear how Applicant can claim possession of the invention. Per MPEP 2163(I), "The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005).
No other arguments were presented after page 3 of Remarks. Therefore, the prior art cited teaches the invention as currently claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 Justin W Hustoft whose telephone number is (571)272-4519. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN W. HUSTOFT/ Examiner, Art Unit 2872
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
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