DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is entitled to and claims the benefit of priority of JP Patent App. No. 2022-174688, filed 10/31/2022. The preliminary amendment filed on 10/30/2023 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 1-6 in the reply filed on 10/24/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
4. Claims 1-15 are pending. Claims 1-6 are under examination on the merits. Claims 7-15 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statement submitted on 10/30/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
6. The drawings are received on10/30/2023. These drawings are acceptable.
Priority
7. Receipt is acknowledged of papers submitted on 12/11/2023 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 102
8. 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.
9. Claim 1-3, 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mathis Muth (US Pub. No. 2020/034723 A1, hereinafter “’223”).
Regarding claim 1: ‘223 discloses a curable composition (Page 1, [0001]) comprising a resin such as EPON 828 epoxy resin, an inorganic particle such as aluminum oxide filler and an organic particle such as KANE ACE MX-257 core-shell rubber particles identical to the instant organic particle (see Table 2 of instant application), wherein the organic particle is a core-shell particle which has a surface layer portion and a center portion, and an elastic modulus of the surface layer portion is higher than an elastic modulus of the center portion (Page 4, [0049], Table 1). ‘223 is silent with regard to a light-shielding film.
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However, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 2: ‘223 discloses the curable composition (Page 1, [0001]), wherein the center portion comprises rubber such as KANE ACE MX-257 core-shell rubber particles identical to the instant organic particle (see Table 2 of instant application above) (Page 4, [0049], Table 1).
Regarding claim 3: ‘223 discloses the curable composition (Page 1, [0001]), wherein the surface layer portion comprises any one selected from the group consisting of an acrylic resin such as KANE ACE MX-257 core-shell rubber particles identical to the instant organic particle (see Table 2 of instant application above) (Page 4, [0049], Table 1).
Regarding claim 5: 223 discloses the curable composition (Page 1, [0001]), wherein the core-shell particle has an average particle diameter of 200 nm (Page 4, [0049], Table 1).
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Claim Rejections - 35 USC § 103
10. 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.
11. Claim 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mathis Muth (US Pub. No. 2020/034723 A1, hereinafter “’223”) as applied to claim 1 above, and further in view of Yamamoto et al. (JP2012-224-728 A, hereinafter “’728”).
Regarding claim 6: The disclosure of ‘728 is adequately set forth in paragraph above and is incorporated herein by reference. ‘728 does not expressly teach the light-shielding film has an elastic modulus at -30°C of 2,500 MPa or more and 3,800 MPa or less and an elastic modulus at 20°C of 500 MPa or more and 2,600 MPa or less, and the light-shielding film further comprising a colorant.
However,’728 teaches a light-shielding film for an optical element (Page 5/28, [0001]), wherein the light-shielding film for optical elements comprises at least a curable polymer and a colorant (Page 11/28, [0032]), wherein the modulus of elasticity of the light-shielding film for optical elements is 5MPa-500MPa (Page 3/28, Claim 1; Page 22/28, [0075); touching ranges, In re Wertheim, 541 F. d. 257, 191 USPQ (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d. 1934 (Fed. Cir. 1990)) with benefit of providing a light-shielding film for an optical element that can be cured at a low temperature and has resistance to washing with warm water or isopropyl alcohol (Page 7/28, [0010]). Furthermore, the light-shielding film for an optical element can reduce peeling of the light-shielding film, which is a problem in washing with hot water, and can reduce elution of a colorant in the light-shielding film, which is a problem in washing with isopropyl alcohol (Page 7/28, [0012]).
In an analogous art of the light-shielding film, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to apply the curable composition by ‘223, so as to include a light-shielding film for an optical element comprising the curable composition by ‘223, wherein the light-shielding film has an elastic modulus at of 500 MPa, and a colorant as taught by ‘728, and would have been motivated to do so with reasonable expectation that this would result in providing a light-shielding film for an optical element that can be cured at a low temperature and has resistance to washing with warm water or isopropyl alcohol (Page 7/28, [0010]). Furthermore, the light-shielding film for an optical element can reduce peeling of the light-shielding film, which is a problem in washing with hot water, and can reduce elution of a colorant in the light-shielding film, which is a problem in washing with isopropyl alcohol (Page 7/28, [0012]).
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Examiner Information
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
11/05/2025
bijan.ahvazi@uspto.gov