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 .
Restriction Requirement
In response to the Restriction Requirement of January 12, 2026, Applicant has elected Group I, corresponding to Claims 1-8 and 21. Claims 9-20 and 22 (Group II) are withdrawn from examination as being drawn to a non-elected invention. Thus, Claims 1-8 and 21 will be examined herein on the merits.
In the Remarks of February 20, 2026, Applicant has not indicated whether the election is made with traverse or without traverse. However, when an election is not accompanied by any arguments against the restriction requirement, i.e., when the response does not distinctly and specifically point out any supposed errors in the restriction requirement, the election is treated as an election without traverse. See MPEP § 818.01(a).
In the present case, the election of Group I in the Remarks February 20, 2026 is not accompanied by arguments against the restriction requirement of January 12, 2026. Therefore, the election will be treated as an election without traverse.
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 1-8 and 21 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 pre-AIA the applicant regards as the invention.
Claim 1 recites as its final clause: “an absolute value of a difference, between yellowness YI1 of transmitted light in 60° direction with respect to a normal line to the second layer side surface of the stacked body for a display device and yellowness YI2 of transmitted light in 15° direction with respect to a normal line to the second layer side surface of the stacked body for a display device, is 3.0 or less”.
As explained in MPEP §2173.05(g), notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite (see In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear (see Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008), noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty” (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Furthermore, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim (citing Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc)).
In the present case, Claim 1 merely recites a goal of the invention, or a desired outcome of the invention, rather than reciting a physical structure, chemical composition, and/or arrangement of parts which accomplishes the goal or desired outcome. Specifically, Claim 1 states that a difference in yellowness (YI) between light transmitted at 60 degrees and light transmitted at 15 degrees is 3.0 or less (according to Japanese Industrial Standard JIS K7373:2006; see paragraphs [0066], [0426] on pages 28, 166 of Applicant’s originally-filed specification). Thus, it appears that Applicant’s goal or desired outcome is a low difference in yellowness for light of differing transmission angles. However, when light is transmitted through a layered article, the amount by which color is shifted (e.g., a difference in yellowness) due to a change in transmission angle is a natural consequence of the particular layers, materials, thicknesses, and other physical structure and chemical composition of the layered article. Yet, in the present case, Applicant has not specified in Claim 1 any physical structure or chemical composition which will result in the desired low angular shift in yellowness.
MPEP §2173.05(g) instructs patent examiners to “consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting.
Because Claim 1 fails to specify physical structure and/or chemical composition relating to the claimed yellowness aspects, and only states a desired result or outcome, Claim 1 is indefinite as presently written.
Claims 2-8 and 21 inherit the deficiencies of Claim 1.
Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites: “wherein the substrate layer doubles as the first layer”. However, independent Claim 1, from which Claim 4 depends, recites that the stacked body comprises “a substrate layer, a first layer, and a second layer”. Therefore, if the substrate layer and the first layer can be the same layer, then Claim 4 fails to include all the limitations of the claim upon which it depends, because Claim 4 fails to include the limitation of three different layers, as required by Claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1, 3-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okuno, US 2013/0329295 A1, previously-cited in the Restriction Requirement of January 12, 2026.
Regarding Claim 1, as best understood, Okuno discloses: A stacked body for a display device comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a substrate layer, a first layer, and a second layer, in this order (optical base member 101 has layers 103, 104, 105 formed thereon as an antireflection coating film 102; Abstract and paragraph [0024] and FIG. 1 of Okuno);
wherein a luminous reflectance of regular reflection light, when light is entered to a second layer side surface of the stacked body for a display device with incident angle of 60°, is 10.0% or less (reflectance of less than 10% all visible wavelengths at an incident angle of 60 degrees; FIGS. 3-10 of Okuno); and
an absolute value of a difference, between yellowness YI1 of transmitted light in 60° direction with respect to a normal line to the second layer side surface of the stacked body for a display device and yellowness YI2 of transmitted light in 15° direction with respect to a normal line to the second layer side surface of the stacked body for a display device, is 3.0 or less (because the layered article of Okuno satisfies all of the physical structure and chemical composition requirements of Claim 1, it is presumed that the layered article of Okuno exhibits the same optical characteristics, specifically a low difference in yellowness when comparing light transmitted in a 60 degree direction to light transmitted in a 15 degree direction; see rejection of Claim 1 based upon 35 USC 112(b) above).
Regarding Claim 3, Okuno discloses the limitations of Claim 1 and further discloses: wherein a thickness of the second layer is 50 nm or more and 1 µm or less (third layer 105 may be identified as the claimed “second layer”, and third layer 105 may have a film thickness D3 of between 180 nm and 320 nm; paragraphs [0010], [0025], [0029] and FIGS. 1, 3 of Okuno); and a ratio of a refractive index of the first layer with respect to a refractive index of the second layer is 1.05 or more and 1.20 or less (first layer 103 may be identified as the claimed “first layer”, and a ratio of the refractive index of first layer 103 [N1 = 1.360] with respect to a refractive index of the third layer 105 [N3 = 1.444] may be calculated as 1.444 divided by 1.360, which equals 1.062, and the number 1.062 is between 1.05 and 1.20; paragraph [0029] and FIGS. 1, 3 of Okuno).
Regarding Claim 4, as best understood, Okuno discloses the limitations of Claim 1 and further discloses: wherein the substrate layer doubles as the first layer (optical base member 101 may be identified as the claimed “substrate layer” and the claimed “first layer”, and any of layers 103, 104, 105 formed thereon, individually or collectively [film 102], may be identified as the claimed “second layer”; Abstract and paragraph [0024] and FIG. 1 of Okuno).
Regarding Claim 5, Okuno discloses the limitations of Claim 1 and further discloses: wherein a hard coating layer is included between the substrate layer and the first layer (without further definition in the claim, such as specific material(s) or minimum hardness, first layer 103 may be identified as the claimed “hard coating layer”, and second layer 104 may be identified as the claimed “first layer”, wherein first layer 103 is between optical base member 101 [substrate layer] and second layer 104; Abstract and paragraph [0024] and FIG. 1 of Okuno).
Regarding Claim 6, Okuno discloses the limitations of Claim 1 and further discloses: wherein an impact absorbing layer is included on the substrate layer, on an opposite surface side to the first layer, or between the substrate layer and the first layer (without further definition in the claim, first layer 103 may be identified as the claimed “impact absorbing layer” [it would necessarily absorb at least some impact to protect the underlying base layer], and second layer 104 may be identified as the claimed “first layer”, wherein first layer 103 is between optical base member 101 [substrate layer] and second layer 104; Abstract and paragraph [0024] and FIG. 1 of Okuno).
Regarding Claim 8, Okuno discloses the limitations of Claim 1 and further discloses: wherein an antifouling layer is included on the second layer, on an opposite surface side to the first layer (without further definition in the claim, third layer 105 may be identified as the claimed “antifouling layer” [it would at least prevent fouling of underlying layers 103, 104], wherein third layer 105 is at an opposite surface side layer 104; Abstract and paragraph [0024] and FIG. 1 of Okuno).
Claims 1, 2, 7 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mimura et al., US 2005/0008863 A1, newly-cited in the present Office Action.
Regarding Claim 1, as best understood, Mimura discloses: A stacked body for a display device comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a substrate layer, a first layer, and a second layer, in this order (substrate film (h), hardcoat layer (g), and high refractive index layer (f) are arranged in this order; paragraph [0106] and FIG. 5 of Mimura);
wherein a luminous reflectance of regular reflection light, when light is entered to a second layer side surface of the stacked body for a display device with incident angle of 60°, is 10.0% or less (gloss [reflectance] at 60 degrees of 10 or less; paragraphs [0028], [0104], [0158], [0185] and FIGS. 1-4 of Mimura); and
an absolute value of a difference, between yellowness YI1 of transmitted light in 60° direction with respect to a normal line to the second layer side surface of the stacked body for a display device and yellowness YI2 of transmitted light in 15° direction with respect to a normal line to the second layer side surface of the stacked body for a display device, is 3.0 or less (because the layered article of Mimura satisfies all of the physical structure and chemical composition requirements of Claim 1, it is presumed that the layered article of Mimura exhibits the same optical characteristics, specifically a low difference in yellowness when comparing light transmitted in a 60 degree direction to light transmitted in a 15 degree direction; see rejection of Claim 1 based upon 35 USC 112(b) above).
Regarding Claim 2, Mimura discloses the limitations of Claim 1 and further discloses: wherein a thickness of the second layer is 1 µm or more and 10 µm or less; and a refractive index of the second layer is 1.40 or more and 1.50 or less (high refractive index layer (f) has a refractive index of preferably 1.50 to 1.70, and has a thickness of preferably 0.01 to 1.0 µm; paragraphs [0107], [0111] and FIG. 5 of Mimura).
Regarding Claim 7, Mimura discloses the limitations of Claim 1 and further discloses: wherein an adhesive layer for adhesion is included on the substrate layer, on an opposite surface side to the first layer (adhesive layer (k) is included on substrate film (h) on a opposite surface side from hardcoat layer (g); paragraph [0106] and FIG. 5 of Mimura).
Regarding Claim 21, Mimura discloses the limitations of Claim 1 and further discloses: A display device comprising: a display panel, and the stacked body for a display device according to claim 1 placed on an observer side of the display panel (antireflection film is adhered to a front side of a display panel and/or a transparent optical filter via the adhesive layer; paragraphs [0018], [0100], [0140]-[0142] and FIG. 5 of Mimura).
Examiner Note – Consider Entirety of References
Although various text and figures of the cited references have been specifically cited in this Office Action to show disclosures and teachings which correspond to specific claim language, Applicant is advised to consider the complete disclosure of each reference, including portions which have not been specifically cited by the Examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN S DUNNING whose telephone number is 571-272-4879. The examiner can normally be reached Monday thru Friday 10:30AM to 7:00PM Eastern Time Zone. 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, BUMSUK WON can be reached at 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872