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 .
Election/Restrictions
Applicant’s election of Group I (claims 1, 3, and 5-8) in the reply filed on May 27, 2026 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 § 818.01(a)).
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 11, the term “the direction” should be amended to “the vertical direction”.
In line 13, the term “a QR code” should be amended to “the QR code”.
Claim Rejections - 35 USC § 112
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, 3, and 5-8 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).
Claim 1 recites a QR code readability property without any limitation on the composition of the antifog film but the specification provides enabling disclosure for achieving such a property with a coating having certain types of polymers/materials in certain ranges of amounts. Claim 1 thus encompasses a scope that constitutes an undue amount of experimentation (in terms of the type and amount of ingredients in the antifog film) that would be required to determine which types and amounts of ingredients, from amongst the broad recitation in the claims, is able to achieve the claimed QR code property. If the scope of claim 1 was amended to recite a Markush group of each of the silane coupling agent(s), the water absorbing polymer, the polyether siloxane and the diol, as well as recite a range of amounts for each of the above respective ingredients, this rejection would be overcome.
Upon applying the Wands factors to claim 1, 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 the antifog coating relative to the much narrower guidance provided in the 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.
(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 in the antifog coating, 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.
Claims 3 and 5-9 are rejected because they depend from claim 1and fail to resolve the above enablement issues.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/568,507. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in scope with the claims of US ‘507. Specifically, the present claims contain a resin substrate whereas the claims of US ‘507 are directed to a transparent base substrate. However, as set forth in US ‘507, the scope of the transparent base includes resin substrates [0016].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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, 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 and 7-8 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 Oya et al. (US Pub 2019/0283549).
Oya discloses laminate (Figure 9B) comprising a resin substrate ([0191], ref #42) and an antifog film ([0191], ref #43) on a surface of the resin substrate. Oya further discloses that an adhesive sticky layer, such as an acrylic or silicone adhesive can be formed on a surface on the opposite side of the resin substrate ([0190], ref #41).
Oya does not disclose the claimed QR code readability property. However, Oya discloses an antifog film formed from a composition that is similar to the presently claimed composition. Specifically, Oya discloses that antifog film is formed from a composition comprising a water absorbent resin, such as polyvinyl acetal [0143], silane coupling agents, ethylene glycol, and surfactants, such as polyether modified siloxanes [0186]. Therefore, it would be reasonable to expect that the antifog film attached transparent article of Oya would exhibit the same or similar properties as the present invention, including anti-fog performance/transparency at prolonged exposure to water/exposure to high temperature water vapor. See MPEP 2112, which states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). And, "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also, as set forth in MPEP 2112.III, 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). This same rationale should also apply to product claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Allowable Subject Matter
Claims 3 and 5-6 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(a) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art is deemed to be Oya et al. (US ‘549). Oya does not disclose or suggest the claimed composition of claim 3 which comprises a silane coupling agent A having an amino group, a silicon atom, and a C1-C3 hydrocarbon group bonded to the amino group and the silicon atom and either a silane coupling agent B having an amino group, a silicon atom, and a C4+ hydrocarbon group bonded to the amino group and the silicon atom or a silane coupling agent C having a plurality of amino groups.
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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