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 with respect to claim 1 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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.
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.
Claims 1 and 3-6 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. The specific limitation “wherein the liquid crystal droplets in the first region each include a non-polymerizable liquid crystal compound and a liquid crystal polymer, and wherein the liquid crystal droplets in the second region each include a non-polymerizable liquid crystal compound and a polymerizable liquid crystal compound” as presented in claim 1 appears to be unclear. The examiner is not sure what “polymerizable” and “non-polymerizable” are being referred to. It is unclear if the device of claim 1 is in an immediate state because of “polymerizable” and “non-polymerizable.” Appropriate correction is required.
Being dependent on claim 1, claims 3-6 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ).
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 112327522).
Regarding claim 1, Chen (figures 1-2) discloses a polymer dispersed liquid crystal film, comprising in this order:
a first transparent conductive film (11);
a polymer dispersed liquid crystal layer including a polymer matrix formed of a water- soluble resin or a water-dispersible resin and liquid crystal droplets dispersed in the polymer matrix (non-liquid crystal polymerizable monomer generating polymerization reaction to generate porous polymer matrix 3); and
a second transparent conductive film (12),
wherein the polymer dispersed liquid crystal layer includes a first region and a second region that differ from each other in amount of change in haze caused by application of a voltage in plan view (the mass percentage of the orientation polymer network in the low light transmission region is 40 to 70 %, so that the liquid crystal film forms a transparent region and a scattering region with different orientation polymer network content; see at least page 5, the last two paragraphs),
wherein the amount of change in haze of the first region caused by application of a voltage is smaller than the amount of change in haze of the second region caused by application of the voltage (the mass percentage of the orientation polymer network in the low light transmission region is 40 to 70 %, so that the liquid crystal film forms a transparent region and a scattering region with different orientation polymer network content; see at least page 5, the last two paragraphs),
wherein the liquid crystal droplets in the first region each include a non-polymerizable liquid crystal compound and a liquid crystal polymer (The orientation polymer network 4 and a liquid crystal molecule 5 having a phase transition characteristic that transitions between the near-crystal phase and the cholesteric phase are distributed in the porous polymer matrix 3; see at least page 5, the last two paragraphs), and
wherein the liquid crystal droplets in the second region each include a non-polymerizable liquid crystal compound and a polymerizable liquid crystal compound (The orientation polymer network 4 and a liquid crystal molecule 5 having a phase transition characteristic that transitions between the near-crystal phase and the cholesteric phase are distributed in the porous polymer matrix 3; see at least page 5, the last two paragraphs).
The limitation, “wherein the polymer dispersed liquid crystal layer includes a first region and a second region that differ from each other in amount of change in haze caused by application of a voltage in plan view, wherein the amount of change in haze of the first region caused by application of a voltage is smaller than the amount of change in haze of the second region caused by application of the voltage, and wherein the liquid crystal droplets in the first region each include a non-polymerizable liquid crystal compound and a liquid crystal polymer” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Chen 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.
Regarding claim 4, Chen (figures 1-2) discloses wherein the liquid crystal polymer in each of the liquid crystal droplets of the first region is a polymerized product of the polymerizable liquid crystal compound in each of the liquid crystal droplets of the second region.
“[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). See MPEP §2113.
Regarding claim 5, Chen (figures 1-2) discloses wherein a difference between the haze of the first region and the haze of the second region is increased by application of a voltage.
The limitation, “wherein a difference between the haze of the first region and the haze of the second region is increased by application of a voltage” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wen et al. 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.
Regarding claim 6, Chen (figures 1-2) discloses wherein the liquid crystal polymer in each of the liquid crystal droplets of the first region is in a non-aligned state.
“[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). See MPEP §2113.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 112327522).
Regarding claim 3, Wen et al. discloses the limitations as shown in the rejection of claim 1 above. However, Wen et al. is silent regarding wherein the second region has a content weight ratio between the non-polymerizable liquid crystal compound and the polymerizable liquid crystal compound (non-polymerizable liquid crystal compound:polymerizable liquid crystal compound) of from 99:1 to 70:30. Wen et al. (figure 1) discloses wherein the second region has a content weight ratio between the non-polymerizable liquid crystal compound and the polymerizable liquid crystal compound (non-polymerizable liquid crystal compound:polymerizable liquid crystal compound) of from 99:1 to 70:30 (4:1; see at least page 6, 6th paragraph). 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 ratio as taught by Wen et al. in order to achieve a liquid crystal film can be used for invisible anti-fake or temperature control display field.
One of ordinary skill in the 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
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 571-272-97911. 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
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