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 .
DETAILED ACTION
Response to Amendment
Applicant’s arguments filed 09/10/2025 have been fully considered but they are not persuasive.
The applicant argues Igarashi does not disclose the limitation as amended in claim 1 and the second liquid crystal panel 14 of Igarashi is fundamentally different from the light absorbing switching element of the instant application that includes liquid crystal molecules and dye molecules. The examiner respectfully disagrees. Igarashi (figures 1-6 and 11) discloses an electronic device as claimed wherein the electronic device is provided with a transmitting mode, a light-shielding mode or a projection mode by controlling the light absorbing switching element and the light scattering switching element (see at least paragraphs 0005 and 0060-0067).
The limitation, “wherein the electronic device is provided with a transmitting mode, a light-shielding mode or a projection mode by controlling the light absorbing switching element and the light scattering switching element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Igarashi discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
The applicant should note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claimed invention does not require the light absorption switching element to be able to control light absorbing effect and to be suitable for being applied to outdoor smart windows and providing projection function.
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 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.
Claims 1-4, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi (US 2015/0185518) in view of Takatsu et al. (US 5,296,952); further in view of Culot (US 2019/0211613).
Regarding claim 1, Igarashi (figures 1-6 and 11) discloses an electronic device, comprising:
a light scattering switching element (12; see at least paragraph 0026);
a light absorbing switching element (14; see at least paragraph 0038) disposed opposite to the light scattering switching element; and
a thermal insulation layer (13) disposed between the light scattering switching element and the light absorbing switching element;
wherein the light absorbing switching element includes a third substrate (44), a third attachment layer (43), a light absorbing panel (31, 39, 32, 36, 30), a fourth attachment layer (41) and a fourth substrate (42) stacked in sequence;
wherein the light absorbing panel includes two substrates; two electrodes respectively disposed on the two substrates; and liquid crystal molecules disposed between the two electrodes (31, 39, 32, 36, 30),
wherein the electronic device is provided with a transmitting mode, a light-shielding mode or a projection mode by controlling the light absorbing switching element and the light scattering switching element (see at least paragraphs 0005 and 0060-0067).
The limitation, “wherein the electronic device is provided with a transmitting mode, a light-shielding mode or a projection mode by controlling the light absorbing switching element and the light scattering switching element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Igarashi discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Igarashi discloses the limitations as shown in the rejection of claim 1 above. However, Igarashi is silent regarding dye molecules and wherein the thermal insulation layer has a thermal conductivity which is less than 50×103 W x m-1 x K-1.
Takatsu et al. (figures 1a-1b) teaches wherein the light absorbing panel includes two substrates; two electrodes respectively disposed on the two substrates; and liquid crystal molecules and dye molecules (3-4) disposed between the two electrodes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify display device as taught by Takatsu et al. in order to achieve full color display device having improved brightness and high contrast.
Culot (figures 1-2; in at least paragraph 0006) teaches wherein the thermal insulation layer has a thermal conductivity which is less than 50×103 W x m-1 x K-1. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermal insulation layer as taught by Culot in order to reduce thermal transfer by conduction or convection.
Regarding claim 2, Igarashi (figures 1-6 and 11) discloses a frame member (18), wherein the light scattering switching element is attached to one side of the frame member through a first attachment member, the light absorbing switching element is attached to the other side of the frame member through a second attachment member, there is an accommodating space formed among the light scattering switching element, the light absorbing switching element, the frame member, the first attachment member and the second attachment member, and the thermal insulation layer is disposed in the accommodating space.
Regarding claim 3, Igarashi as modified by Takatsu et al. and Culot (figures 1-2) teaches wherein the light scattering switching element and the light absorbing switching element are arranged along one direction, and a thickness of the accommodating space in the direction is greater than 3 mm (see at least claim 12).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 4, Culot (figures 1-2) teaches wherein the thermal insulation layer includes an inert gas.
Regarding claim 20, Igarashi (figures 1-6 and 11) discloses wherein the frame member is a frame body with an opening in a middle portion of the frame body.
Regarding claim 5, Igarashi (figures 1-6 and 11) discloses wherein the light scattering switching element includes a first substrate, a first attachment layer, a light scattering panel, a second attachment layer and a second substrate stacked in sequence (27, 21, 26, 23, 20).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Igarashi in view of Takatsu et al. and Culot; further in view of Sagardoyburu et al. (US 2021/0181564).
Regarding claim 7, Igarashi discloses the limitations as shown in the rejection of claim 1 above. However, Igarashi is silent regarding the decorative members. Sagardoyburu et al. (in at least paragraphs 0052-0053) teaches wherein a first decorative layer is disposed on a surface of the light scattering switching element away from the frame member, and a second decorative layer is disposed on a surface of the light absorbing switching element away from the frame member. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the decorative members as taught by Sagardoyburu et al. in order to produce more complex decorations with various degrees of resolution.
Claims 8-9, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi in view of Takatsu et al. and Culot; further in view of Kashiwagi (US 2011/0164205).
Regarding claim 8, Igarashi discloses the limitations as shown in the rejection of claim 1 above. However, Igarashi is silent regarding an anti-glare layer disposed on a surface of the light absorbing switching element away from the frame member. Kashiwagi (figures 1-5 and 11) teaches an anti-glare layer (19) disposed on a surface of the light absorbing switching element away from the frame member. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the anti-glare layer as taught by Kashiwagi in order to prevent glaring when the observer views a screen.
Regarding claim 9, Kashiwagi (figures 1-5 and 11) teaches another light absorbing switching element disposed on a surface of the light absorbing switching element away from the frame member (114, 4, 12, 109).
Regarding claim 19, Kashiwagi (figures 1-5 and 11) teaches wherein the anti-glare layer includes a polarizer.
Claims 11-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi in view of Takatsu et al. and Culot; further in view of Lam et al. (US 2010/0315693).
Regarding claim 11, Igarashi discloses the limitations as shown in the rejection of claim 5 above. However, Igarashi is silent regarding wherein the light scattering panel includes two substrates; two electrodes respectively disposed on the two substrates; and a light scattering material disposed between the two electrodes. Lam et al. (figures 1-2) teaches wherein the light scattering panel includes two substrates; two electrodes respectively disposed on the two substrates; and a light scattering material disposed between the two electrodes (see at least paragraph 0190). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the light scattering panel as taught by Lam et al. in order to provide liquid crystal display panel which is reduced in power consumption and is made capable of a reflection display to improve visibility when light an external environment is strong, and also capable of a temporary transmission display by providing an auxiliary light source to improve visibility when the external light is weak.
Regarding claim 12, Lam et al. (figures 1-2) wherein a thickness of the substrate of the light scattering panel is between 1 mm and 0.2 mm (see at least paragraph 0115).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 13, Sekiguchi (figures 6-7) teaches wherein each substrate of the light scattering panel has a peripheral circuit area disposed thereon a conductive wire (280 and 290).
Regarding claim 14, Lam et al. (figures 1-2) wherein a thickness of each of the first substrate and the second substrate is between 2 mm and 10 mm (see at least paragraph 0115).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 16, Igarashi discloses the limitations as shown in the rejection of claim 11 above. However, Igarashi is silent regarding wherein a thickness of the substrate of the light absorbing panel is between 1 mm and 0.2 mm. Lam et al. (figures 1-2) teaches wherein a thickness of the substrate of the light absorbing panel is between 1 mm and 0.2 mm (see at least paragraph 0115). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the panel as taught by Lam et al. in order to provide liquid crystal display panel which is reduced in power consumption and is made capable of a reflection display to improve visibility when light an external environment is strong, and also capable of a temporary transmission display by providing an auxiliary light source to improve visibility when the external light is weak.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 17, Sekiguchi (figures 6-7) teaches wherein each substrate of the light scattering panel has a peripheral circuit area disposed thereon a conductive wire (280 and 290).
Regarding claim 18, Lam et al. (figures 1-2) wherein a thickness of each of the first substrate and the second substrate is between 2 mm and 10 mm (see at least paragraph 0115).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
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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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871