CTNF 18/655,733 CTNF 77500 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-13 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1 and 20 disclose “has a crack strain of 2% or more”. Specification paragraph [00211] discloses “[t]he crack strain may be measured by a nano indenter”. However, the examiner submits the strain is measured as D L/L (i.e. change in length over the original length. The examiner is not clear how the nano indentor (an instrument that measures the hardness) would measure the change in length. The examiner is not clear if the crack strain is just a measure of hardness (i.e. strength), as measured by the nano indentor, or a measure of strain. The examiner will not treat “has a crack strain of 2% or more” in claims 1 and 20, and “the crack strain of the optical film is a crack strain of the optical film in a machine direction or a traverse direction” in claim 9 with respect to the prior art. MPEP 2173.06 II discloses “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1, 2, 4-8, 10-14 and 16-19 is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Thothadri et al. (US 2020/0408961) . Regarding claim 1, Thothadri et al. disclose a display panel (104)[0061]; a cover window [0063,glass] on the display panel; and an optical film (anti-reflective film) on the cover window (display/window) [0001], wherein the optical film (140, bottom portion of 150, 160, 190) comprises: a base layer (140)[0074]; a hard coating layer (bottom portion of 150)[0078](acrylate) on the base layer; a low refraction layer (160)[0087-0092] on the hard coating layer; and an anti-fingerprint layer(190) on the low refraction layer, and the optical film has a hardness of 35 Hv or more [0091] (2GPa would be 203 Hv using Calculator for Conversion between Vickers Hardness Number and SI Units MPa and GPa [www.gordonengland.co.uk/hardness/hvconv.htm]) (The examiner submits the a hardness of more than 35 Hv would result in a a crack strain of 2% or more because the crack strain is measured by a device that mearsures hardness.) Regarding claim 2, Thothadri et al. disclose the hard coating layer comprises an acrylate-based compound and a urethane-based compound [0076]. Regarding claim 4, Thothadri et al. disclose the hard coating layer comprises an acrylate-based compound [0078]. Regarding claim 5, Thothadri et al. disclose the hard coating layer has a thickness of 2 μm to 10 μm [0080]. Regarding claim 6, Thothadri et al. disclose the hard coating layer ( bottom portion of 150) has a refractive index of 1.53 or 1.55[ 0079]. Regarding claim 7, Thothadri et al. disclose a refractive index of the low refraction layer (160) is smaller than a refractive index of the hard coating layer by 0.05 or more [0079,0092]. Regarding claim 8, Thothadri et al. disclose the refractive index of the low refraction (160)layer is 1.3 to 1.43 (1.35)[0092]. Regarding claim 10, Thothadri et al. disclose a primer layer (180) between the low refraction layer and the anti-fingerprint layer. (MPEP 2112 discloses “[t]he elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).”) Regarding claim 11, Thothadri et al. disclose a high refraction layer (top portion of 150) between the low refraction layer and the hard coating layer. Regarding claim 12, Thothadri et al. disclose a refractive index of the high refraction layer is greater than a refractive index of the low refraction layer by 0.05 or more. Regarding claim 13, Thothadri et al. disclose the refractive index of the high refraction layer is 1.53 or 1.55 [0079]. Regarding claim 14, Thothadri et al. disclose a display panel (104)[0061]; a cover window [0063,glass] on the display panel; and an optical film (anti-reflective film) on the cover window (display/window) [0001], wherein the optical film (140, bottom portion of 150, 160, 190) comprises: a base layer (140)[0074]; a hard coating layer (bottom portion of 150)[0078](acrylate) on the base layer and comprising an acrylate-based compound; a low refraction layer (160)[0087-0092] on the hard coating layer; and an anti-fingerprint layer(190) on the low refraction layer, and the optical film has a hardness of 35 Hv or more [0091] (2GPa would be 203 Hv using Calculator for Conversion between Vickers Hardness Number and SI Units MPa and GPa [www.gordonengland.co.uk/hardness/hvconv.htm]) (The examiner submits the a hardness of more than 35 Hv would result in a a crack strain of 2% or more because the crack strain is measured by a device that mearsures hardness.) Regarding claim 16, Thothadri et al. disclose the hard coating layer has a thickness of 2 μm to 10 μm [0080]. Regarding claim 17, Thothadri et al. disclose the hard coating layer ( bottom portion of 150) has a refractive index of 1.53 or 1.55[ 0079]. Regarding claim 18, Thothadri et al. disclose a refractive index of the low refraction layer (160) is smaller than a refractive index of the hard coating layer by 0.05 or more [0079,0092]. Regarding claim 19, Thothadri et al. disclose the refractive index of the low refraction (160)layer is 1.3 to 1.43 (1.35)[0092] . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thothadri et al. (US 2020/0408961) as applied to claim 1 above in view of Pokorny et al. (US 2011/0086221) . Thothadri et al. disclose the invention supra. Thothadri et al. disclose the hard coating layer comprises an acrylate-based compound and a urethane-based compound [0076]. (Thothadri et al. disclose the hardness of greater than 35 Hv, so the hard coating could have the claimed percentage of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30% but just did not disclose the percentages.) Thothadri et al. fails to explicitly disclose a percentage of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30%. Pokorny et al. dislose 70-95 wt -% acrylate [0029] and 5 wt -% urethane aditives [0009]. (This shows that one could alter the composition) Thothadri et al. and Pokorny et al. disclose the hard coating layer comprises an acrylate-based compound and a urethane-based compound disclose the claimed invention except for a percentage of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30%. It would have been obvious to one of ordinary skill in the art at the time the invention was made to make a percentage of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In Re Aller, 105 USPQ 233. The applicant has not pointed out the criticality of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30%. CRITICALITY Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff , 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). MPEP 2144 IIA also discloses: Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.)… In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” The prior art included each element claimed, although not necessarily in a single prior art reference with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods (i.e. changing the percentages of the acrylate-based compound and the urethane-based compound), and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable (i.e. changing the percentages of compounds would change the physical properties of the material) . 07-21-aia AIA Claim (s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thothadri et al. (US 2020/0408961) as applied to claim 14 above in view of Pokorny et al. (US 2011/0086221) . Thothadri et al. disclose the invention supra. Thothadri et al. disclose the hard coating layer comprises an acrylate-based compound and a urethane-based compound [0076]. (Thothadri et al. disclose the hardness of greater than 35 Hv, so the hard coating could have the claimed percentage of the acrylate-based compound is 70 to 99.9%, and a percentage of the urethane-based compound is 0.1 to 30% but just did not disclose the percentages.) Thothadri et al. fails to explicitly disclose a percentage of the acrylate-based compound is 70 or more. Pokorny et al. dislose 70-95 wt -% acrylate [0029] . (This shows that one could alter the composition) Thothadri et al. and Pokorny et al. disclose the hard coating layer comprises an acrylate-based compound and a urethane-based compound disclose the claimed invention except for a percentage of the acrylate-based compound is 70 or more. It would have been obvious to one of ordinary skill in the art at the time the invention was made to make a percentage of the acrylate-based compound is 70 or more, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In Re Aller, 105 USPQ 233. The applicant has not pointed out the criticality of the acrylate-based compound is 70 or more. CRITICALITY Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff , 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). MPEP 2144 IIA also discloses: Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.)… In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” The prior art included each element claimed, although not necessarily in a single prior art reference with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the elements as claimed by known methods (i.e. changing the percentages of the acrylate-based compound), and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable (i.e. changing the percentages of the acrylate compound would change the physical properties of the material). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm. 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, Marlon Fletcher can be reached at 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRADLEY SMITH/Primary Examiner, Art Unit 2817 Application/Control Number: 18/655,733 Page 2 Art Unit: 2817 Application/Control Number: 18/655,733 Page 3 Art Unit: 2817 Application/Control Number: 18/655,733 Page 4 Art Unit: 2817 Application/Control Number: 18/655,733 Page 5 Art Unit: 2817 Application/Control Number: 18/655,733 Page 6 Art Unit: 2817 Application/Control Number: 18/655,733 Page 7 Art Unit: 2817 Application/Control Number: 18/655,733 Page 8 Art Unit: 2817 Application/Control Number: 18/655,733 Page 9 Art Unit: 2817 Application/Control Number: 18/655,733 Page 10 Art Unit: 2817 Application/Control Number: 18/655,733 Page 11 Art Unit: 2817
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