DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species II, encompassing claims 1, 2, 4, 5, and 7, in the reply filed on July 21, 2026 is acknowledged. Claims 3 and 6 are withdrawn from consideration.
Information Disclosure Statement
The information disclosure statement filed February 23, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the lined-through information referred to therein has not been considered.
Objection to Specification and/or Claims: Priority
The specification and/or claims are objected to because, although the instant disclosure claims benefit to applications PCT/JP2018/023938 and App. No. 2017-151494, filed in Japan, the product of the instant claims for which the foreign priority under 35 U.S.C. 119 (a)-(d) is claimed, does not appear to be disclosed in the application to which Applicant has claimed priority. Specifically, claim 1 recites an antiglare film mounted on “a surface of an organic electro-luminescence display having a pixel density of 441 ppi”, which does not appear in the instant disclosure or in the documents to which priority is claimed.
Among other requirements, in order to have the right of priority to a foreign application, the foreign application must be for the same invention as the application in the United States. See MPEP 213 (D). Absent evidence to the contrary, which has not been provided, the requirement does not appear to have been met because the foreign applications also do not recite a display device “having a pixel density of 441 ppi”. Appropriate correction and/or explanation are required. Applicant’s attention is directed to MPEP 213-216 for further information on claims to foreign priority.
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, 2, 4, 5, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,976,214, in view of Ooe (US PG Pub. No. 2009/0268301).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a product explicitly claimed to have or inherently possessing each feature of instant claims 1, 2, 4, 5, and 7, with the exception of the patented claims not reciting an average surface roughness, Ra, as is instantly claimed. However, the patented claims are directed to an antiglare film. Ooe further teaches an antiglare film for a display device and discloses that the average roughness (i.e. “center-line average surface-roughness”), Ra, in the range of 0.01 to 0.5 µm is preferable because it both reduces reflections of outside lights and images at the surface of the film and prevents white blur from occurring (par. 56). Therefore, it would have been obvious to one of ordinary skill in the art to configure the antiglare film of the patented claims to demonstrate an average roughness, Ra, in the range of 0.01 to 0.5 µm in order to prevent surface reflections and to reduce white blurring. The instantly claimed Ra is overlapped and rendered obvious by the taught range. See MPEP 2144.05.
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.
Claims 1, 2, 4, 5, and 7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
Claim 1 is indefinite because it recites an “antiglare film mounted on a surface of an organic electro-luminescence display having a pixel density of 441 ppi” followed by limitations about the antiglare film, which are further followed by “a standard deviation of luminance distribution of the organic electro-luminescence display being a value in a range from 0 to 10 in a case where the organic electro-luminescence display is adjusted such that image data is obtained as a gray scale image with an 8-bit gradation display and an average luminance of 170 gradations”. As claim 1 recites “an antiglare film” and the depending claims recite “[t]he antiglare film”, it appears that the claims are directed to an antiglare film. However, the positive recitation of “mounted on a surface of an organic electro-luminescence display” and further recitations about the display and its performance appear to convey that the claim is instead directed to an assembly that includes a film and a display. As such, it is not clear if the claims are directed to an antiglare film or to an assembly comprising an antiglare film and a display. For the sake of compact prosecution and because the claim preambles recite “an antiglare film” or “the antiglare film”, neither of which is an “assembly”, the recitations about the display, its settings, and its performance are considered herein statements of intended use.
Claim 1 is further indefinite because, although its preamble recites an “antiglare film”, it recites limitations about the standard deviation of luminescence distribution of the display that do not actually refer to the film. Such recitations are inconsistent with the instant disclosure because the instant disclosure makes clear that the discussed standard deviation of luminescence distribution refers to a display with a mounted antiglare film (see, for example, par. 9, 32, and 70 of Applicant’s published application). As such, it is not clear if the recited standard deviation of luminescence distribution in claim 1 refers to the performance of the display alone or to the performance observed when the film is mounted on a display. For the sake of compact prosecution, either interpretation is considered herein to be correct.
Appropriate explanation and correction are required.
Claim 2 is indefinite because it recites “wherein a b* value in the L*a*b* color system is a value in a range from 0 to 10” without specifying if the recited parameter pertains to the antiglare film alone, the antiglare film on a substrate, or some other configuration. For the sake of compact prosecution, an antiglare film that demonstrates the recited b* value under at least some condition(s) is considered herein to meet the claim requirement.
Claims 2, 4, 5, and 7 are also rejected under 35 U.S.C. 112(b) because they depend from claim 1.
Claim Rejections - 35 USC § 103
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, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (JP 2012-018343A) in view of Miyazaki (JP 2003-279485 A) and/or Kondo (JP 2003-156606A), the texts of all of which are cited herein according to English language translations.
Regarding claim 1, Yoshida teaches an antiglare film, which may be used on an organic electroluminescent display, comprising an antiglare layer having an internal haze value of 1 to 7 % and an average roughness (i.e. “center-line average surface-roughness”), Ra, of 0.1 to 0.5 µm (par. 32, 33, 64).
As the instant claim preambles recite an “antiglare film”, the claim requirement that the antiglare film is “mounted on a surface of an organic electroluminescence display having a pixel density of 441 ppi” as well as the limitations reciting operation parameters and performance of the display are statements of intended use. Nevertheless, as noted above, Yoshida anticipates an antiglare film mounted on an organic electroluminescent display. Therefore, Yoshida’s antiglare film meets the intended use requirements because it is capable of being applied to an organic electroluminescence display having/being operated with the recited parameters.
To the extent that the claim 1 discussion of “standard deviation of luminescence distribution” is intended to describe the performance observed when the antiglare film is mounted on a display, it is noted that the teachings of Yoshida may be considered to differ from the current invention in that he does not discuss this parameter. However, Miyazaki discloses that the standard deviation of luminance variation is conventionally used as a measure for evaluating anti-glare performance and that a smaller standard deviation of luminance variation is preferable in terms of preventing glare (par. 5). Kondo further teaches that it is preferable for an anti-glare, light-diffusing layer to demonstrate a standard deviation of luminance of 3.8 or less in order to reduce the variation in brightness distribution to suppress glare (par. 14). As Kondo teaches that the standard deviation should be 3.8 or less, with 3.3 or less being preferable (par. 14), Kondo also makes clear that lower standard deviations are better than higher standard deviations. Accordingly, it would have been obvious to one of ordinary skill in the art to configure Yoshida’s anti-glare film such that it demonstrates a standard deviation of luminance variation, or distribution, that is as low as possible, including as low as 3.8 or less, or even 3.3 or less, when used on any luminescent display device, including a device having/operated with the claimed parameters/settings, because each of Miyazaki and Kondo make clear that lower standard deviation values are preferable and are best for preventing glare, and in order to reduce the variation in brightness distribution to suppress glare as much as possible, thereby allowing the taught antiglare film to perform its intended purpose (i.e. serving as an antiglare film) as well as possible.
Regarding claim 4, Yoshida’s antiglare layer comprises a matrix resin with a plurality of microparticles, which Yoshida refers to as “first and second inorganic particles”, dispersed therein, wherein the difference between the refractive indexes of the particles and the resin is in the range of 0.03 to 0.5 for some of the particles (i.e. “first inorganic particles”) and 0.02 or less for others of the particles (i.e. “second inorganic particles”) (par. 16-19, 41).
Regarding claim 5, Yoshida’s antiglare film includes 13.5 to 18 wt. % of first microparticles and 2 to 5 wt. % of second microparticles (par. 10, 25), which equates to a total of 15.5 to 23 wt. % (“G2”) of microparticles in the coating. As Yoshida does not disclose substantial quantities of other components being present in his coating, the matrix resin content (“G1”) of his coating is calculated to be about 77 to 84.5 wt. %. Alternatively or additionally, as the composition of “matrix resin” has not been recited to consist of a specific set of components, any components in Yoshida’s coating that are not disclosed to be “inorganic particles”, as discussed above, may be considered herein to be “matrix resin”. Therefore, the total inorganic microparticle-to-resin ratio, G2/G1, in Yoshida’s antiglare film is calculated to range from about 0.18 to 0.30. If only the first inorganic particles are considered the “microparticles” for the purposes of the current claim (i.e. because what does or does not constitute a “microparticle” is not claimed), then the G2/G1 ratio can be calculated to be in the range of about 0.16 to 0.23. Therefore, the instantly claimed G2/G1 range is overlapped and rendered obvious by Yoshida. See MPEP 2144.05.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida in view of Miyazaki and/or Kondo, as applied above, and further in view of Fukugawa (US PG Pub. No. 2006/0286313).
Regarding claim 2, the teachings of Yoshida differ from the current invention in that he does not discuss how his antiglare film performs in terms of the L*a*b* color system. However, Fukugawa teaches an antiglare, light-scattering layer for use with an electroluminescent device and discloses that it is preferable for the b* value of transmitted light exiting the film to be in the range of 0 to 3 in order to reduce the occurrence a yellowish color being displayed (par. 213). Therefore, it would have been obvious to one of ordinary skill in the art to configure Yoshida’s film such that it demonstrates a b* in the range of 0 to 3 of transmitted light in order to reduce/avoid a yellowish color and in order to achieve a preferred/desired, less yellow, appearance.
Regarding claim 7, as discussed above, Yoshida’s antiglare layer meets the requirements of claim 4, which are also repeated in claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights