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 and response filed on December 21, 2025 has been entered. Claims 1-15 are pending.
Claim Rejections - 35 USC § 102/103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 11-13, and 15 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 obvious over Qiu (US Pub 2009/0025608).
Regarding claims 1-3, Qiu discloses an optical film comprising a coating and polymer resin light-transmitting substrates [0143]. The coating can comprise a urethane acrylate resin [0041] that can contain siloxane bonds ([0022], [0145]) (equivalent to the buffer layer of the claimed invention and meeting the limitations of claims 2 and 3). The urethane acrylate resin can be varied as a function of the oligomer component and/or the optional an isocyanate-reactive silane compound for better control of the compatibility (e.g. with solvents and/or substrates), and/or the coating quality resulting in low surface energy and cleanability performance.
Regarding claims 4-8, the coating comprises, in part, the reaction product of an oligomer derived from ethylenically-unsaturated monomer units having pendent silyl groups, i.e., silane monomers, the oligomer further having at least one terminal, nucleophilic, isocyanate-reactive functional group. The optional (meth)acrylate ester monomer useful in preparing the oligomer is a monomeric (meth)acrylic ester of a non-tertiary alcohol, which alcohol contains from 1 to 20 carbon atoms and preferably an average of from 4 to 12 carbon atoms, optional with other functional groups. Representative examples of functionalized acrylate monomers suitable for use as the acrylate ester monomer include 2-hydroxyethyl. The optional (meth)acrylate ester monomer useful in preparing the oligomer is a monomeric (meth)acrylic ester of a non-tertiary alcohol, which alcohol contains from 1 to 20 carbon atoms and preferably an average of from 4 to 12 carbon atoms, optional with other functional groups. Examples of monomers suitable for use as the acrylate ester monomer include the esters of either acrylic acid or methacrylic acid with non-tertiary alcohols such mono-alkyl terminated polyethylene glycol and polypropylene glycol.
Regarding claim 13, the coating composition may further comprise silicone hard coats [0152].
Regarding claim 15, the compositions may be coated on a substrate, with or without a primer coating, and at least partially cured to provide a coated article. Coated articles according to the present disclosure include, for example, eyeglass lenses, mirrors, windows, and anti-graffiti films [0142], which reads on a display device.
Qiu does not disclose the maximum restoration length (claim 1), elastic modulus (claim 11), or restoration rate (claim 12), the Office takes the position that such property limitations are inherent in the optical film (i.e., the coated substrate) of Qiu given that the structure of the film and the chemical composition of the film as taught by Qiu and that of the claimed invention are identical. As set forth in MPEP 2112, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Claim Rejections - 35 USC § 103
Claims 9, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (US Pub 2009/0025608).
Regarding claims 9, 10, and 14, Qiu do not teach the thickness of the layers. However, workable physical properties such as thicknesses are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties. That is, as set forth in MPEP 2144.05, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present application, it would have been obvious to the skilled artisan to have discovered workable ranges within the presently claimed ranges based on the use of the optical film [0142].
Response to Arguments
Applicant’s arguments filed December 21, 2025, with respect to the previous rejections of the claims have been fully considered and are persuasive. Therefore, the previous rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Qiu.
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 Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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