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
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/17/2026.
Applicant’s election without traverse of Invention I in the reply filed on 4/17/2026 is acknowledged.
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 (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.
Claims 1-2 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20120251095 A1 to Ono et al.
Regarding Claim 1. Ono discloses an optical element used for optical apparatuses, wherein outside of an optical effective part on a base member (See at least para 100 “can be adhered at the peripheral part”) has an antireflection film (para 99 “light shading”); the antireflection film is composed of a membrane formed by a liquid composition by spray coating (This limitation is a product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113)) and has a thickness of 2 µm or more and 40 µm or less (See at least Table 1-1); and the liquid composition comprises at least (A), (B) and (C): wherein (B) is contained in an amount of 20% by mass or more and 60% by mass or less in a total amount of 100% by mass of all solid content in the composition (See Table 1-1, at least Example 11); (B) comprises (B1) (para 64 black pigment) and (B2) (para 66-69 inorganic filler (C)) in an amount of 90% by mass or more, and a mass ratio of (B2) with respect to (B1):1 is 1.8 or more and 3.3 or less (See Table 1-1 at least Example 11); (A) is a resin component (para 108 “polyamideimide resin”); (B) is unevenness forming particles (para 140 “uneven surface”); (B1) is inorganic-type small particles having a particle diameter (d.sub.1) of 0.05 µm or more and 0.4 µm or less (See para 64 and para 108 “average particle diameter of 0.05 µm”); (B2) is inorganic-type large particles having a particle diameter (d.sub.2) of 2 µm or more and 6 µm or less (See para 68 para 108 “average particle diameter of 6.2 µm”); and (C) is a diluent solvent (para 108 “Methyl ethyl ketone”).
Regarding Claim 2. Ono further discloses wherein (B2) comprises silica (para 108).
Regarding Claim 9. Ono further discloses wherein (B1) comprises carbon black (para 108 “carbon black”).
Regarding Claim 10. Ono further discloses wherein (B1) comprises carbon black (para 108 “carbon black”).
Claim Rejections - 35 USC § 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 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.
The factual inquiries 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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ono as applied to Claim 2 in view of US 20200277494 A1 to Nishiki et al.
Regarding Claim 3. As stated above Ono discloses all the limitations of base claim 2.
Ono does not specifically disclose that silica includes complex silica colored black with a colorant.
However, Nishiki discloses silica encapsulated in carbon black (See at least para 4), to take advantage of the high light-shielding properties of carbon black.
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that silica includes complex silica colored black with a colorant.
Regarding Claim 4. Ono further discloses wherein (B1) comprises carbon black (para 108 “carbon black”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMOND C LAU whose telephone number is (571)272-5859. The examiner can normally be reached M-Th 8am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth can be reached at (571) 272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDMOND C LAU/Primary Examiner, Art Unit 2871
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