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 Arguments
Applicant’s arguments filed 07/02/2026 have been fully considered but they are not persuasive.
The applicant argues that none of the cited references teach the thickness of the buffer layer is smaller than that of the base portion. The examiner respectfully disagrees. The applicant should note that the ink receiving layer 130 below the micro space 132 has different thicknesses and one of those thicknesses is bigger than the thickness of the buffer layer. In other words, Kim et al. (figure 3) teaches a base portion (portion of the ink receiving layer 130 below the micro space 132) disposed between the plurality of accommodating portions and the buffer layer (a protective layer 123), wherein the thickness of the buffer layer is smaller than that of the base portion. 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 base layer as taught by Kim et al. in order to prevent the conductive material layer from being damaged by more stably blocking the direct physical contact between the material layer and the colored charged particles.
The applicant further argues that the claimed thickness relationship achieves an unexpected technical effect and the Action effectively selects a buffer-layer thickness from Shiota and then reconstructs the claimed relative thickness relationship using hindsight with Applicant’s specification as a roadmap. The examiner respectfully disagrees. Sato et al. (figures 1 and 10) discloses an optical path control member as claimed including a light conversion unit (13-14; The electrophoretic element is a mixture of light beam blocking electrophoretic particles 140 (colored charged particles) having charges of a specific polarity and dispersion medium 141; see at least paragraph 0067) disposed on the buffer layer. The examiner merely relies on Shiota (figure 23) for the teaching of wherein a thickness of the buffer layer is 0.1 μm or less (The film thickness of the first interlayer insulating film 61 is formed to have the film thickness of 100 nm; see at least paragraph 0147). 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 buffer layer as taught by Sato et al. in order to avoid contact between the electrophoretic member and first transparent electrode and provide the light-modulating element whose transmittance in the narrow viewing field mode and the wide viewing field mode being stable.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill before the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would recognize combining Sato et al. in view of Shiota, with Kim et al., in order to avoid contact between the electrophoretic member and first transparent electrode and provide the light-modulating element whose transmittance in the narrow viewing field mode and the wide viewing field mode being stable and prevent the conductive material layer from being damaged by more stably blocking the direct physical contact between the material layer and the colored charged particles.
The applicant further argues that Fan et al. does not disclose the surface resistance as presented in claim 3. The examiner respectfully disagrees. Sato et al. is silent regarding wherein a surface resistance of the buffer layer is 120Ω/□ to 180Ω/□. Fan et al. (figure 3) teaches wherein a surface resistance of the buffer layer is 120Ω/□ to 180Ω/□ (104-106 Ω/□; see at least abstract). 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 buffer layer as taught by Fan et al. in order to achieve a buffer layer having good flatness, low production cost and high efficiency. In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a surface resistance of the buffer layer being 120Ω/□ to 180Ω/□, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
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.
The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
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 1-2, 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2019/0179208) in view of Shiota (US 2017/0097554); further in view of Kim et al. (KR 10-2015-0125051).
Regarding claim 1, Sato et al. (figures 1 and 10) discloses an optical path control member comprising:
a first substrate (16);
a first electrode (15) disposed on the first substrate;
a buffer layer (SiO2; insulating film 18) disposed on the first electrode;
a light conversion unit (13-14; The electrophoretic element is a mixture of light beam blocking electrophoretic particles 140 (colored charged particles) having charges of a specific polarity and dispersion medium 141; see at least paragraph 0067) disposed on the buffer layer;
a second electrode (12) disposed on the light conversion unit; and
a second substrate (11) disposed on the second electrode.
Sato et al. (figures 1 and 10) discloses wherein the light conversion unit comprises a plurality of accommodating portions (14) spaced apart from each other in a first direction; a plurality of partition wall portions (13) disposed between the plurality of accommodating portions to partition the plurality of accommodating portions. However, Sato et al. is silent regarding a thickness of the buffer layer is 0.1 μm or less and a base portion disposed between the plurality of accommodating portions and the buffer layer, wherein the thickness of the buffer layer is smaller than that of the base portion.
Shiota (figure 23) teaches wherein a thickness of the buffer layer is 0.1 μm or less (The film thickness of the first interlayer insulating film 61 is formed to have the film thickness of 100 nm; see at least paragraph 0147). 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 buffer layer as taught by Sato et al. in order to avoid contact between the electrophoretic member and first transparent electrode and provide the light-modulating element whose transmittance in the narrow viewing field mode and the wide viewing field mode being stable.
Kim et al. (figure 3) teaches a base portion (portion of the ink receiving layer 130 below the micro space 132) disposed between the plurality of accommodating portions and the buffer layer (a protective layer 123), wherein the thickness of the buffer layer is smaller than that of the base portion. 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 base layer as taught by Kim et al. in order to prevent the conductive material layer from being damaged by more stably blocking the direct physical contact between the material layer and the colored charged particles.
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 2, Shiota (figure 23) teaches wherein the thickness of the buffer layer is 0.02 μm to 0.1 μm (The film thickness of the first interlayer insulating film 61 is preferable to fall within a range of 10 nm to 1000 nm; see at least paragraph 0147).
Regarding claim 5, Sato et al. discloses the claimed invention except for the thickness of the base portion being 10% or less of that of the light conversion unit. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the thickness of the base portion being 10% or less of that of the light conversion unit, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
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 6, Sato et al. discloses the limitations as shown in the rejection of claim 1 above. However, Sato et al. is silent regarding wherein a thickness of at least one of the first electrode and the second electrode is greater than that of the buffer layer and smaller than that of the base portion. Kim et al. (figure 3) teaches wherein a thickness of at least one of the first electrode and the second electrode is greater than that of the buffer layer and smaller than that of the base portion (thickness of electrode 122 is greater thickness of layer 123 and smaller than thickness of base portion 130). 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 base layer as taught by Kim et al. in order to prevent the conductive material layer from being damaged by more stably blocking the direct physical contact between the material layer and the colored charged particles.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a thickness of at least one of the first electrode and the second electrode being greater than that of the buffer layer and smaller than that of the base portion, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
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 7, Shiota (figure 23) teaches an adhesive layer disposed between the light conversion unit and the second electrode (insulating film 63 can act as an adhesive layer), wherein the thickness of the buffer layer is smaller than that of the adhesive layer (The film thickness of the first interlayer insulating film 61 is formed to have the film thickness of 100 nm and the film thickness of the third interlayer insulating film 63 is preferable to fall within a range of 10 nm to 1000 nm; see at least paragraphs 0147 and 0169).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2019/0179208) in view of Shiota (US 2017/0097554) and Kim et al. (KR 10-2015-0125051); further in view of Fan et al. (CN 11-0254018).
Regarding claim 3, discloses the limitations as shown in the rejection of claim 1 above. However, Sato et al. is silent regarding wherein a surface resistance of the buffer layer is 120Ω/□ to 180Ω/□. Fan et al. (figure 3) teaches wherein a surface resistance of the buffer layer is 120Ω/□ to 180Ω/□ (104-106 Ω/□; see at least abstract). 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 buffer layer as taught by Fan et al. in order to achieve a buffer layer having good flatness, low production cost and high efficiency.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a surface resistance of the buffer layer being 120Ω/□ to 180Ω/□, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
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
THIS ACTION IS MADE FINAL. 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 mailing 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
Prosecution Insights