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 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 1-6 and claims 7-12 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.
Each of claims 1 and 7 recites “hardening rate”. It is noted that “hardening rate” is not a well-defined concept in polymer chemistry. As such, this limitation is indefinite because it could refer to various different measurements. However, in view of what is actually disclosed in the specification, this hardening rate is really an indication of reactant conversion, specifically the percentage of polymerizable starting material that has undergone curing to form the intended polymerized product. (See Spec. ¶¶ 0087-0092). The limitation of “hardening rate” as recited are such interpreted as such.
Furthermore, as well-known in the art, surface contact angle varies based on the nature of liquid deposited upon a surface. The claim is thus indefinite, because the Specification is clear that the liquid in question is water (as opposed to any liquid). The claims are interpreted to recite contact angle with water.
As claims 2-6 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-6 are also held to be rejected.
As claims 8-12 depend on claim 7, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 7, claims 8-12 also held to be rejected.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 of this title, 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 1-6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2020/021931 A1 (referenced below using its English-language counterpart publication U.S. 2021/0284866 A1, “Fukushima”, cited in IDS of 16 November 2023) and as evidenced by WO 2019/013082 A1 (referenced below using its machine translation, “JPWO ‘082”).
Considering claims 1, 3, and 5, Fukushima discloses a laminate structure comprising a transparent substrate, a hardcoat film, and an anti-scratch layer in this order, wherein the hardcoat layer contains a cured product of polyorganosilsesquioxane having an epoxy group, and wherein the anti-scratch layer comprises a product formed from a) an polyorganosilsesquioxane having a (meth)acryloyl group and b) 0.5 to 2 mass% a fluorine-containg compound having (meth)acryloyl group, such that components a) and b) can polymerize. (Fukushima claims 1-3, 5, and 6; and ¶¶ 0514-0538). Fukushima is analogous art, for it is directed to the same field of endeavor as that of the instant application (multilayered hard coating film for displays).
In particular embodiments, Fukushima discloses that 88-89% of the precursor composition for the anti-scratch layer, said precursor being a mixture of aforementioned compounds a) and b), each of which bearing (meth)acryloyl group, is converted. (Id. ¶¶ 0647-0669 and Tables 1 and 2). Specifically, this conversion rate is measured in a manner substantially similar to that used in the Instant Application, namely by tracking disappearance of FT-IR signal attributed to C=C moiety of (meth)acryloyl group relative to C=O moiety (the amount of which remains constant before and after reaction). It is noted that 88% and 89% are each considered to read on “about 85%”. Furthermore, Fukushima also recognizes that excess presence of oxygen inhibits curing and further dislcoses curing its anti-scratch layer at 100 ppm O2 (0.01%) at 60 mW/cm2 and 600 mJ/cm2. (Fukushima ¶¶ 0666-0668). More broadly, Fukushima also discloses using higher amount of O2. (Id. ¶¶ 0579, 0604, and 0623). Even if somehow 88% is not considered to read on about 85% (not conceded), the broader disclosures of Fukushima renders obvious the claimed range.
Fukushima discloses that each examples exhibits hardness of at least 6H (reading on about 7H). Lastly, although water contact angle is not disclosed, it is noted that the component b) used in this particular case (viz. RS-90) is a material known to impart a high water contact angle to hard coatings formed from a (meth)acrylate composition. JPWO ‘082 teaches that the inclusion of 0.1 to 10 mass% of RS-90 is directly responsible for a high water contact angle. (JPWO ‘082 ¶¶ 0090-0093). Specifically, the inclusion of 1.8 mass% or RS-90 in a (meth)acrylate composition for forming a hard coat imparts a water contact angle of ~108°. (Id. ¶¶ 0191, 0195, and 0206; and Table 6).
In view of the foregoing, Examples 1 and 2 of Fukushima is considered to either inherently possess the claimed water contact angle or alternatively can be easily modified (e.g. by adjusting the amount of RS-90) to obtain the recited contact angle for the purpose of improved fingerprint resistance (using disclosures in Fukushima by increasing amount of RS-90 used).
Fukushima anticipates or renders obvious claims 1, 3, and 5.
Furthermore, it is noted that Comparative Example 1, which differs from Example 1 only in the usage of acrylate precursor composition different from the polyorganosilsesquioxane having a (meth)acryloyl group used for Example 1, exhibits hardness of at least 6H and reaction completion rate of 76% while still containing RS-90. (Fukushima ¶ 0690 and Table 1). As such, using the rationale from ¶ 12 above re: the establishment of nexus between usage of RS-90 and high water contact angle, this Comparative Example also anticipates or alternatively renders obvious claims 1, 3, and 5.
Considering claim 4, Fukushima discloses that the precursor for forming its hardcoat can contain a compound having two or more (meth)acryoyl groups in addition to the polyorganosilsesquioxane having an epoxy group. (Id. ¶ 0195).
Considering claim 6, each of Examples 1 and 2 and Comparative Example 1 of Fukushima has a 30 µm thick polyimide film, a 17.0 µm thick hardcoat layer, and a 1.0 µm thick anti-scratch layer. (Fukushima ¶ 0631 and Table 1).
Considering claim 2, in view of the substantial similarities between the film laminate of Fukushima and that of the Instant Application (including hardness value exhibited and the usage of a silsesquioxane material for forming a lower layer), the property recited in claim 2 is deemed to flow naturally from the disclosure of Fukushima.
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 of this title, 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:
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 7-12 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2018/0149785 A1 (“Lee”) in view of WO 2020/021931 A1 (referenced below using its English-language counterpart publication U.S. 2021/0284866 A1, “Fukushima”) as evidenced by WO 2019/013082 A1 (referenced below using its machine translation, “JPWO ‘082”).
Considering claims 7-12, Lee discloses a curved display having a display panel and a curved window protecting the display, wherein the window can additionally have a hard coating layer. (Lee ¶ 0042). Lee does not teach specifics of the hard coating layer. Fukushima is as discussed in ¶¶ 10-18 above. In view of the high hardness and scratch resistance exhibited by the laminated hard coating of Fukushima, it would have been obvious, to a person of ordinary skill at the time of the claimed invention to have deposited the laminated hard coating of Fukushima on the window of Lee, for the various advantages properties exhibited by the laminated hard coating of Fukushima.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781