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 .
This office action is responsive to the Amendment and Remarks filed 3 September 2025, wherein claims 6 and 22 were canceled. Subsequently, claims 1, 3-5, 7-10, 13-17, 19, 21, and 23-25 are pending and presently under consideration in this application.
Response to Amendment
The rejection of claims 1, 17 and 19 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7 and 8 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicants have amended each of the independent claims 1, 17, and 19 as follows and argue that said amendment sufficiently distinguishes the respective light control sheet, method of producing a light control sheet, and liquid crystal composition of the present claims from that of the prior art of record:
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which introduces new considerations as follows under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph.
Response to Arguments
Applicant's arguments filed 3 September 2025 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7 and 8 of the previous office action on the merits, are moot as the aforementioned rejections have been withdrawn.
Applicant's arguments filed 3 September 2025 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Zhan et al. (WO 2017/180923 A1), as set forth in paragraph 11 of the previous office action on the merits, said argument to the effect that Zhan et al. states that “mixtures prepared to have nematic phases at 40oC and all had transition temperatures to isotropic between 80oC to 95oC” (emphasis added), have been fully considered but they are not persuasive. Zhan et al. discusses the nematic-isotropic transition temperature of the liquid crystal mixtures, while the newly introduced limitation is drawn to one component contained in the liquid crystal composition, i.e., the non-polymerizable liquid crystal compound. Notwithstanding that fact, the Examiner notes that something that is known does not become patentable upon the discovery of a new property. "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Applicant's arguments filed 3 September 2025 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Kajiyama et al. (EP 0 421 240 A2) and Hasebe et al. (JP-7-17910), as respectively set forth in paragraphs 12 and 13 of the previous office action on the merits, said argument to the effect that “Kajiyama and Hasebe are completely silent with respect to a NI point of the liquid crystal”, have been fully considered but they are not persuasive. The Examiner notes that something that is known does not become patentable upon the discovery of a new property. "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The Examiner also notes that the fact that the inventor may have recognized another advantage with respect to a NI point of the non-polymerizable liquid crystal compound which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In response to applicant’s arguments that “Kajiyama and Hasebe are completely silent with respect to a NI point of the liquid crystal”, the Examiner notes that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. The Examiner asserts that the non-polymerizable liquid crystal compound inherently posses the no claimed nematic-isotropic transition temperature.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 7-10, 13-17, 19, 21, and 23-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claims 1, 17, and 19 are rejected as being vague and indefinite when they each recite “the non-polymerizable liquid crystal compound has an NI point in a range of 100oC to 145oC“ (emphasis added); the scope of the protection sought by “an NI point” is not clear. Amended claim 1, 17, and 19 each fail to particularly point out and distinctly claim the nematic-isotropic transition temperature of the non-polymerizable liquid crystal compound contained in the liquid crystal composition.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 3-5, 7-10, 13-17, 19, 21, and 23-25 are 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
Zhan et al. (WIPO Patent No. WO 2017/180923 A1).
Zhan et al. discloses an organic polymer layer and corresponding use thereof said organic polymer layer in a light control sheet, characterized in that said organic polymer layer comprises a plurality of voids having therein a liquid crystal composition comprising a non-polymerizable viscosity-reducing agent inclusive of the present formula (1). As shown in Figures 1A and 1B, the liquid crystal material can be dispersed in the polymer. The liquid crystal material can be dispersed within the transparency changing layer such that the liquid crystal forms droplets, 111 , suspended within the polymer matrix, 112. The transparency changing layer can be described as a polymer dispersed liquid crystal (PDLC). In some embodiments, the liquid crystal element is a reverse mode PDLC element, which can be transparent to visual light but opaque upon the application of an electric field. Type 1 plasticizers can include, but are not limited to: butyl benzyl phthalate, dicarboxylic/tricarboxylic ester-based plasticizers such as but not limited to phthalate-based plasticizers such as but not limited to bis(2-ethylhexyl) phthalate, diisononyl phthalate, bis(n-butyl)phthalate, butyl benzyl phthalate, diisodecyl phthalate, di-n-octyl phthalate, diisooctyl phthalate, diethyl phthalate, diisobutyl phthalate, di-n-hexyl phthalate and mixtures thereof; adipate-based plasticizers such as but not limited to bis(2- ethylhexyl)adipate, dimethyl adipate, monomethyl adipate, dioctyl adipate and mixtures thereof; sebacate-based plasticizers such as but not limited to dibutyl sebacate, and maleate.
Zhan et al. discloses all the limitations of a claim except a property or function, i.e., the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Although Zhan et al. does not specify the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, since a composition of matter is claimed, and Zhan et al. discloses the claimed non-polymerizable liquid crystal compound component of said composition, it is asserted that the non-polymerizable liquid crystal compound component of Zhan et al. inherently possesses the recited NI point as is now claimed, and that each of the claimed liquid crystal composition, the light control sheet containing said liquid crystal composition, as well as the corresponding method of producing said light control sheet, lack novelty, absent object evidence to the contrary. Assuming arguendo that the non-polymerizable liquid crystal compound component contained in the liquid crystal composition of Zhan et al. does not inherently possess the recited NI point, then Zhan et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the non-polymerizable liquid crystal component compound with reasonable expectation of achieving the advantages generally taught therein the resulting liquid crystal composition, absent object evidence to the contrary.
Claims 1, 3-5, 7-10, 13-17, 19, 21, and 23-25 are 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
Kajiyama et al. (European Patent No. EP 0 421 240 A2).
Kajiyama et al. discloses an organic polymer layer and corresponding use thereof said organic polymer layer in a light control sheet, characterized in that said organic polymer layer comprises a plurality of voids having therein a liquid crystal composition comprising a non-polymerizable viscosity-reducing agent inclusive of the present formula (1). Claim 1 therein teaches a liquid crystal display element comprising a pair of transparent electrodes having interposed there between a composite film, characterized in that said film comprises a matrix polymer selected from acrylic resins and methacrylic resins, a nematic liquid crystal, and a high boiling liquid, wherein (claim 2) said high boiling liquid is disclosed as being at least one selected from the group consisting of di-2-ethylhexyl phthalate, diisodecyl phthalate, and di-2-ethylhexyl azelate.
Kajiyama et al. discloses all the limitations of a claim except a property or function, i.e., the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Although Kajiyama et al. does not specify the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, since a composition of matter is claimed, and Kajiyama et al. discloses the claimed non-polymerizable liquid crystal compound component of said composition, it is asserted that the non-polymerizable liquid crystal compound component of Kajiyama et al. inherently possesses the recited NI point as is now claimed, and that each of the claimed liquid crystal composition, the light control sheet containing said liquid crystal composition, as well as the corresponding method of producing said light control sheet, lack novelty, absent object evidence to the contrary. Assuming arguendo that the non-polymerizable liquid crystal compound component contained in the liquid crystal composition of Kajiyama et al. does not inherently possess the recited NI point, then Kajiyama et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the non-polymerizable liquid crystal component compound with reasonable expectation of achieving the advantages generally taught therein the resulting liquid crystal composition, absent object evidence to the contrary.
Claims 1, 3-5, 7-10, 13-17, 19, 21, and 23-25 are 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
Hasebe et al. (Japanese Patent No. JP-7-17910).
Hasebe et al. discloses an organic polymer layer and corresponding use thereof said organic polymer layer in a light control sheet, characterized in that said organic polymer layer comprises a plurality of voids having therein a liquid crystal composition comprising a non-polymerizable viscosity-reducing agent inclusive of the present formula (1). The examples therein Hasebe et al. disclose an alignment treatment performed by rubbing to achieve a homogeneous state, using an ITO (indium tin oxide) film as the transparent electrode and polyimide as the liquid crystal alignment film. Claim 1 teaches the liquid crystal composition comprising one to seven parts by volume of di-2-ethylhexyl adipate based on 100 parts by volume of said liquid crystal composition.
Hasebe et al. discloses all the limitations of a claim except a property or function, i.e., the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Although Hasebe et al. does not specify the NI point of the non-polymerizable liquid crystal compound contained in the liquid crystal composition, as is now claimed, since a composition of matter is claimed, and Hasebe et al. discloses the claimed non-polymerizable liquid crystal compound component of said composition, it is asserted that the non-polymerizable liquid crystal compound component of Hasebe et al. inherently possesses the recited NI point as is now claimed, and that each of the claimed liquid crystal composition, the light control sheet containing said liquid crystal composition, as well as the corresponding method of producing said light control sheet, lack novelty, absent object evidence to the contrary. Assuming arguendo that the non-polymerizable liquid crystal compound component contained in the liquid crystal composition of Hasebe et al. does not inherently possess the recited NI point, then Hasebe et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the non-polymerizable liquid crystal component compound with reasonable expectation of achieving the advantages generally taught therein the resulting liquid crystal composition, absent object evidence to the contrary.
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 Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737