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 .
Preliminary Amendment
The preliminary amendment filed on October 20, 2023 has been entered. Claims 1-12 are pending.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities.
In claim 7, line 2, the term “a transparent adhesive sheet that satisfies Condition 1” should be changed to “the transparent adhesive sheet that satisfies Condition 1”, since claim 5 provides antecedent basis for this limitation.
In claim 8, line 2, the term “a transparent adhesive sheet that satisfies both Condition 1 and Condition 2” should be changed to “the transparent adhesive sheet that satisfies both Condition 1 and Condition 2”, since claim 6 provides antecedent basis for this limitation.
Claim Rejection - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims. Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claims 1 and 5 recite a transparent adhesive sheet satisfying claimed “Condition 1” and claims 2 and 6 recite a transparent adhesive sheet satisfying claimed “Condition 2” without any limitation on the type of composition of the transparent adhesive sheet but the specification provides enabling disclosure for achieving such a property with only specific polymers/materials in certain ranges of amounts and are treatment processes, i.e., adhesive A and D of Examples 1-3. These claims thus encompasses a scope that constitutes an undue amount of experimentation (in terms of the type and amount of ingredients in adhesive and treatment processes) that would be required to determine which types and amounts of ingredients and treatment processes, from amongst the broad recitation in the claims, is able to arrive at an adhesive that satisfies Condition 1 and Condition 2.
Upon applying the Wands factors to claim 1, 2, 5, and 6, undue experimentation would be required:
(A) The breadth of the claims. The claims are broad in terms of the type and amount of ingredients in an adhesive that would satisfy Condition 1 and Condition 2 relative to the much narrower guidance provided in the examples of specification.
(B) The nature of the invention; (C) The state of the prior art; and (D) The level of one of ordinary skill. The property as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance.
(E) The level of predictability in the art. To discover the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of ingredients in the antifog coating without any clear or apparent predictability. The specification fails to give adequate guidance as to what adhesive materials are suitable for use in order to arrive at an adhesive that satisfies Condition 1 and Condition 2. Specifically, para. [0041] states that the “type and production method of the transparent adhesive sheet are not particularly limited”. Para. [0042] states “a commercially available transparent adhesive sheet may be used” but may need “an arbitrary treatment [in order to satisfy Condition 1 and Condition 2]”. And, para. [0043] includes exemplary adhesive types are quite vast and include inorganic adhesive and a plethora of organic adhesive, e.g., acrylic adhesives, silicone adhesives, polyurethane adhesives, epoxy adhesives, etc.
(F) The amount of direction provided by the inventor and (G) The existence of working examples. The disclosure in the specification is sufficient for certain types and amounts of polymers/materials set forth in the examples that satisfy Condition 1 and Condition 2, i.e., adhesive sheets A and D, without any corresponding direction provided for achieving the claimed property with the broader scope as claimed.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Based on the broadly claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable. See citations above to paragraphs [0041-[0043] of specification.
Claims 3, 4, and 7-12 are rejected because they depend from one of claims 1, 2, 5, and/or 6 and fail to resolve the above enablement issues.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 5 set forth a “Condition 1” limitation and claims 2 and 6 set forth a “Condition 2” limitation. These limitations are indefinite for the following reasons. First, it is unclear what constitutes “volatile components”. Second, it is unclear what “a test piece” refers to. It appears as though this is intended to reference a test piece of the transparent adhesive sheet material. Third, Condition 1 measures “a total amount of organic substances…in terms of weight of 2,2′-azobis(isobutyronitrile)” which is unclear as to whether these conditions limit the total amount of organic substances measured to only any 2,2′-azobis(isobutyronitrile), or if it includes all organic substances. Further, the scope of the materials suitable for use for the transparent adhesive sheet are quite vast (see spec., para. [0043]) and includes many adhesive materials which do not contain any 2,2′-azobis(isobutyronitrile) material. Thus, it is unclear how the condition limitations are intended to further limit the claim when an adhesive that does not contain any 2,2′-azobis(isobutyronitrile) is used in the laminated film. And, fourth, Condition 2 measures “an amount of components belongs to a base and a silane coupling agent …in terms of weight of 2,2′-azobis(isobutyronitrile)” which is unclear how a base and a silane coupling agent is related to an amount of 2,2′-azobis(isobutyronitrile) that is not required to be present in the adhesive composition that formed the transparent adhesive sheet.
In claims 7 and 8, it is stated both that the transparent adhesive sheet satisfies and does not satisfy Condition 1 (claim 7) and Condition 1 and 2 (claim 8) which is indefinite. It appear as though the intention is that an adhesive material that does not satisfy the condition(s) is heat treated to be rendered to satisfy the condition(s). This rejection can be overcome by inserting the term “prior to heat-treating the transparent adhesive sheet” at the end of claims 7 and 8.
Claim Rejection - 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 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, 2, 5, 6, 9, and 10 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 JP2016-110995. The English language translation of JP ‘995 submitted with the IDS of June 03, 2025 is relied upon in the below rejections.
Regarding claims 1, 2, 5, and 6, JP ‘995 discloses a piezoelectric laminated film and method of manufacturing the same comprising a piezoelectric film and a transparent adhesive sheet. JP ‘995 does not disclose that the transparent adhesive sheet satisfies claimed Condition 1 and Condition 2. However, JP ‘995 discloses that the transparent adhesive sheet can be an acrylic polymer manufactured by Nitto Denko Corporation having the product name “CS9862U” [0076], which is one of the suitable commercially available adhesive materials disclosed in the present specification as being a suitable material for use as the transparent adhesive sheet [0080]. As set forth in MPEP 2112, “"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). MPEP 2112 further sets forth that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Accordingly, it is reasonable to conclude that the transparent adhesive sheet of JP ‘995 would satisfy claimed Conditions 1 and 2, since JP ‘995 uses the same commercially available adhesive material to form the adhesive sheet. With respect to the 35 U.S.C. 103 part of this rejection, see MPEP 2112.III that states “Where 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).
Regarding claims 9 and 10, JP ‘995 discloses piezoelectric laminated film can be used to form a touch panel [0071].
Claim Rejections - 35 USC § 103
Claims 3, 4, 7, 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP2016-110995 in view of JP2015-101673. An English language translation of JP ‘673 is attached to this Office action and relied upon in the below rejections.
Regarding claims 3 and 4, JP ‘995 discloses that the piezoelectric film can be formed from various types of polymers, including fluorine-based polymers [0057]. JP ‘673, which is also directed to the piezoelectric laminated film art, discloses that fluoro-based resins are preferred resins for piezoelectric film laminates [0024]. It would have been obvious to one of ordinary skill in the art to have prepared the film laminate of JP ‘995, wherein the film layer is made mainly of a fluoro-resin, as suggested in JP ‘995 and expressly taught in JP ‘673, motivated by the desire to obtain a laminated film that is suitable for use as a piezoelectric film.
Regarding claims 7 and 8, JP ‘995 discloses that the adhesive can be applied to a substrate layer and then dried [0031], but does not disclose the specifics parameters of the drying step. JP ‘673 discloses that it is typical in the art to dry adhesives suitable for use in piezoelectric film laminates under conditions of between 50-150ᵒC for 10 seconds to 10 minutes. It would have been obvious to one of ordinary skill in the art to have dried, i.e. treated, the adhesive of JP ‘995 at a temperature within the conventional range disclosed in the art, i.e., JP ‘673, motivated by the desire to form a laminated having a solidified adhesive layer.
Regarding claims 11 and 12, JP ‘995 discloses piezoelectric laminated film can be used to form a touch panel [0071].
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.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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