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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6) in the reply filed on April 17th, 2026, is acknowledged.
Claims 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 17th, 2026.
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 1-6 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.
Claim 1 recites the phrase “having a maximum value of a heat shrinkage rate of 1.2% or less after the hard coat film is heat-treated at 150⁰C to 200⁰C for 1 minute to 30 minutes,” which renders the claim indefinite. It is unclear as to whether or not the heat treatment should be taken as positively recited by the claim – it is unclear if the claim is directed to a hard coat film which is capable of undergoing heat-treatment and resulting in the claimed heat shrinkage property, or if instead, the claim is directed to a hard coat film which has already undergone the claimed heat treatment with the resulting heat shrinkage. In other words, it is unclear if the claimed hard coat film has undergone the specified heat treatment. The present specification does not provide any further guidance to rectify this issue. In the interest of compact prosecution, the claim will be interpreted as specifying a film which is capable of undergoing the claimed heat treatment.
Claims 2-6 are rejected as indefinite due to dependence on indefinite claim 1.
Claim 4 recites the phrases “the hard coat layer A” and “the hard coat layer B,” but these limitations lack antecedent basis. As best understood, claim 3 recites a hard coat layer A and a hard coat layer B. However, such hard coat layers are not recited by independent claim 1, from which claim 4 depends. It follows that claim 4 does not appropriately define DA or DB (as the hard coat layers are not defined). In the interest of compact prosecution, claim 4 will be interpreted as directed to any two hard coat layers implied by the phrase “hard coat layers” in claim 1.
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 Matsumoto et al (WO2020122114A1). Matsumoto is read from an English machine translation which has been placed in the Application File.
With regards to claim 1, Matsumoto discloses a substrate with a formed transparent conductive layer comprising a substrate film 12, a second resin layer 16 formed as a hard coat located on one side of the substrate film 12, and a third resin layer 18 formed as a hard coat on the side of the substrate 12 opposite the second resin layer 16 (i.e., a hard coat film comprising hard coat layers on both surfaces of a base material film) (Matsumoto – hereinafter with reference to the English translation for text: abstract; page 5, “The second resin layer 16 is preferably a hard coat layer”; page 6, “The third resin layer 18 is preferably a hard coat layer” and “Fig. 3 shows a transparent conductive layer forming substrate 30…”; Fig. 3). Matsumoto discloses the second resin layer 16 and third resin layer as each made of the same composition, which is curable by irradiation with ultraviolet rays (i.e., each hard coat layer contains an ionizing radiation curable composition), contains a (meth)acrylate having a methacryloyl group (i.e., the composition meets condition (I): the ionizing radiation curable resin contains an acrylic resin including a (meth)acryloyl group), and contains inorganic particles of 120 to 400 nm (i.e., the composition meets condition (II): the ionizing radiation curable resin composition contains inorganic fine particles – note that the present specification defines “inorganic fine particles” as inorganic particles having a diameter of 1 to 500 nm, and therefore, the inorganic particles of Matsumoto are considered inorganic fine particles) (Matsumoto: page 5, “The second resin layer 16 is disposed between” and “Examples of the ultraviolet curable resin…”; page 6, “The third resin layer 18 is made of a cured product…”; page 9, “In the above embodiment, the surface irregularities…”). It is submitted that the hard coat film of Matsumoto is capable of undergoing the claimed heat-treatment as Matsumoto discloses immersing its hard coat film in a constant temperature bath at 150⁰C for 1 hour (i.e., if the card coat film of Matsumoto is capable of undergoing heat treatment at 150⁰C for 1 hour, it follows that it is capable of withstanding heat treatments of lower intensity, such as a heat treatment at 150⁰C for 1 minute) (Matsumoto: page 10, “Using each of the produced transparent conductive layer forming substrates…”). With regards to the claimed heat shrinkage rate, it is noted that this limitation is rather broad in that it does not specify any of the conditions for heat shrinkage (i.e., such as temperature or duration). Technically, any sort of heating method which controls for shrinkage is within the scope of the claim (for example, placing the hard coat film of Matsumoto within a frame which holds its machine and transverse directions constant, then exposing the only the conductive layer in the hard coat film of Matsumoto, which does not exhibit heat shrinking, to air barely above room temperature for 1 ms, is within the scope of the claimed heat shrinkage). In other words, since the film of Matsumoto may be exposed to a “heat shrinkage” method which results in zero maximum shrinkage, or an incredibly small amount of maximum shrinkage (such as 0.1% shrinkage), the claimed heat shrinkage property is met by Matsumoto.
With regards to claim 4, Matsumoto discloses each of the second resin layer 16 and third resin layer 18 (i.e., having film thicknesses DA and DB, respectively) as having the same thickness, or in other words, a film thickness ratio of 100% (i.e., assume DA = DB -> (DA/DB) x 100 -> substitution leads to (DA/DA) x 100 -> 1 x 100 -> 100%) (Matsumoto: page 6, “The thickness of the third resin layer 18 is not particularly limited…”).
With regards to claim 5, the substrate film 12 (i.e., base material film) is made of, for example, polyethylene terephthalate (Matsumoto: page 3, “Examples of the polymer material of the base film 12…”).
With regards to claim 6, the inorganic fine particles may include an oxide of silicon (i.e., silica) (Matsumoto: page 4, “The types of inorganic particles…”).
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto as applied to claim 1 above.
With regards to claim 2, Matsumoto discloses a hard coat film as applied to claim 1, the hard coat film containing inorganic fine particles (see above discussion). Matsumoto does not appear to explicitly recite an amount of particles ranging from 1% by mass to 60% by mass relative to a solid content of the composition. However, Matsumoto teaches that the inorganic particles may be added for the purpose of adjusting refractive index, and the amount and type of inorganic particles influences the achieved refractive index and transparency (Matsumoto: page 4, “The inorganic particles are added…” and “Inorganic particles capable of optically adjusting…”). In addition, Matsumoto more broadly teaches that the introduction of particles leads to the formation of surface irregularities, which enables improved adhesion to adjacent layers (Matsumoto: page 4, “The inorganic particles are added…”). Based on the foregoing, a person of ordinary skill in the art would have found it obvious to have optimized the amount of inorganic fine particles within the composition of Matsumoto, in order to achieve a target refractive index and/or improve adhesion between adjacent layers by a desired degree. See MPEP 2144.05.
With regards to claim 3, Matsumoto discloses the second resin layer as having the same thickness as the third resin layer (i.e., a film thickness of a hard coat layer A, denoted DA, and a thickness of a hard coat layer B, denoted DB, are the same), and this thickness ranges from 0.005 microns or more and 10 microns or less (i.e., each of DA and DB range from 0.005 microns to 10 microns) (see above discussion; Matsumoto: “The thickness of the second resin layer 16…”). The ranges for DA and DB according to Matsumoto overlap the claimed ranges for DA and DB (each being from 0.5 microns to 12.0 microns), thereby establishing a prima facie case of obviousness. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN WEYDEMEYER whose telephone number is (571)270-1907. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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, Maria V. Ewald can be reached at (571) 272-8519. 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.
/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
Prosecution Insights