DETAILED ACTION
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 without traverse of group I in the reply filed is acknowledged.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 7, and 9-11 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by US 20170307910 A1 to Nishio.
Re claims 1, 2, 7, and 9-11, Nishio discloses an optical film comprising an optical functional layer on a substrate [76] where the optical functional layer has thermochromic properties [16]. Further, the substrate is heat shrinkable [203]. The optical functional layer is made from vanadium dioxide [76]. Given that Nishio discloses thermochromic layer. the same materials and structure as claimed, it would inherently have transmittance values, the conditions as claimed, and phase transition temperature changes including phase transition temperature decrease due to heat shrinkage of the substrate.
Re claim 3, see [201], Nishio.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 20170307910 A1 to Nishio.
Nishio is relied upon above.
Re claim 8, Nishio teaches the substrate overlapping range of thickness of 30 to 200 μm [201] (overlapping the claim of 50 to 200 microns). 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of o-rdinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of thickness for improving structural integrity taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20170307910 A1 to Nishio in view of US 20140121295 to Gall et al.
Nishio is relied upon above.
Re claims 4-6, Nishio fails to disclose an SMP including urethane; however, disclose a SMP [90-96] of urethane [83] for [116] thermomechanical properties [116] and [14] for the properties are overlapping ranges of glass transition temperatures.
It would have been obvious to one having ordinary skill in the art to have modified the polymer of Nishio by addition, use or substitution for Gall teaches benefits of thermomechanical properties. See also MPEP 2144.05.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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