DETAILED ACTION
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 .
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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, 3-7 and 10-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (WO 2020/121112).
Regarding claim 1, Schmidt discloses, a coated microstructured film (Fig. 3) comprising:
a) a plurality of microstructures (330) extending across a first surface of the microstructured film (360); and
b) a coating (345) disposed on a first portion of at least some of the microstructures (332, 333), the coating comprising a polymer that is the reaction product of a composition comprising at least one of a phenol or a polyphenol (Pg. 9, lines 24-33 and Pg. 10, lines 18-21), and wherein a second portion lacks some or all of the coating (see 320).
Regarding claim 3, Schmidt discloses, a metal disposed on the polymer (Pg. 10, lines 7-10).
Regarding claim 4, Schmidt discloses, the metal is present as a discontinuous layer (see 330).
Regarding claim 5, Schmidt discloses, the metal comprises silver, nickel, gold, copper, cobalt, chromium, zinc, tin, iron, platinum, palladium, ruthenium, rhodium, iridium, osmium or combinations thereof (Pg. 10, lines 7-10).
Regarding claim 6, Schmidt discloses, the microstructures (330) comprise a plurality of ribs (330) alternated with channels extending across the first surface of the microstructured film (300), wherein each of the ribs comprises side walls (332, 333) and a top surface (320) and each of the channels comprises a bottom surface (305); and wherein the first portion on which the coating is disposed comprises the side walls of the ribs (345) and the second portion comprises the top surfaces of the ribs and the bottom surfaces of the channels (Pg. 9, lines 24-33 and see Fig. 3).
Regarding claim 7, Schmidt discloses, the ribs have a width parallel to the first surface and a height orthogonal to the first surface (Pg. 9, lines 18-33 and see Fig. 3).
Regarding claim 10, Schmidt discloses, the microstructures comprise a two-dimensional (x- & y-axes) array of projections (330) arranged across the first surface of the microstructured film; wherein each of the projections comprises a base (305), a top (320), and one or more sides (332, 333) connecting the top to the base (Pg. 9, lines 24-33 and see Fig. 3); and wherein the first portion on which the coating is disposed comprises the sides and the second portion comprises the top (Pg. 9, lines 24-33 and see Fig. 3).
Regarding claim 11, Schmidt discloses, the microstructured film comprises a microstructured layer with first and second major surfaces (332, 333), wherein the microstructures comprise a plurality of cavities (301a, b) extending between the first and second major surfaces (see Fig. 3); wherein each cavity comprises a first opening, a second opening and at least one side wall extending between the first opening and the second opening (Pg. 9, lines 24-35 and see Fig. 3); and wherein the first portion on which the coating is disposed comprises the at least one side wall (Pg. 9, lines 24-35 and see Fig. 3) and the second portion comprises at least one of the first major surface or the second major surface of the microstructured layer (Pg. 9, lines 24-35 and see Fig. 3).
Regarding claim 12, Schmidt discloses, the coated microstructured film exhibits a transmission of visible light of 75% or greater at a viewing angle of 0 degrees (Pg. 24, lines 5-11 and Fig. 6).
Regarding claim 13, Schmidt discloses, a metal disposed on the second portion of at least some of the microstructures (Pg. 15, lines 7-12).
Regarding claim 14, Schmidt discloses, an organic polymeric material disposed on the coated microstructures (Pg. 9, lines 24-33 and see 345).
Regarding claim 15, Schmidt discloses, a method of making a coated microstructured film (Fig. 3), the method comprising:
obtaining a microstructured film (300) comprising a plurality of microstructures (330) extending across a first surface of the microstructured film (360);
applying a coating (345) of a composition comprising at least one of a phenol or a polyphenol to at least some of the microstructures (Pg. 9, lines 24-33 and Pg. 10, lines 18-21) across the first surface of the microstructured film (332, 333); and
removing at least a portion of the coating from a second portion of the microstructures to provide the coating disposed on a first portion of the coated microstructures (see 320 associated text).
Regarding claim 16, Schmidt discloses, applying the coating comprises contacting the first surface of the microstructured film with the composition (Pg. 15, lines 7-22) and applying agitation to the composition during the contacting, wherein the phenol or the polyphenol is polymerized during the contacting of the composition with the first surface of the microstructured film to form a polymer (Pg. 15, lines 7-22).
Regarding claim 17, Schmidt discloses, the composition further comprises an oxidant (Pg. 21, lines 5-15).
Regarding claim 18, Schmidt discloses, applying the coating occurs in a container and the first surface of the microstructured film is oriented normal to a floor of the container (Pg. 15, lines 16-22).
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 (i.e., changing from AIA to pre-AIA ) 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (WO 2020/121112) as applied to claim 1 above, in view of Nam (WO 2016/072730).
Schmidt remains as applied to claim 1 above.
Schmidt does not disclose the composition comprises polydopamine, pyrogallol, gallic acid, tannic acid, or combinations thereof.
Nam teaches, from the same field of endeavor that in a coated microstructure that it would have been desirable to make the composition comprises polydopamine, pyrogallol, gallic acid, tannic acid, or combinations thereof (Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention make the composition comprises polydopamine, pyrogallol, gallic acid, tannic acid, or combinations thereof as taught by the coated microstructured film of Nam in the coated microstructured film of Schmidt since Nam teaches it is known to include this feature in a coated microstructured film for the purpose of providing a low cost coated microstructured film.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (WO 2020/121112) as applied to claim 1 above, in view of Takada (RE 45642).
Schmidt remains as applied to claim 1 above.
Schmidt does not disclose the microstructures comprise a facet and a side wall meeting the facet at a ridge of the microstructure and wherein the facet and the side wall define an oblique angle therebetween; and wherein the first portion on which the coating is disposed comprises the side wall and the second portion comprises the facet.
Takada teaches, from the same field of endeavor that in a coated microstructured film (Figs. 3A-B) that it would have been desirable to make the microstructures comprise a facet and a side wall meeting the facet at a ridge (see surface opposite of 15) of the microstructure and wherein the facet and the side wall define an oblique angle therebetween (see surface opposite of 15); and wherein the first portion on which the coating is disposed comprises the side wall and the second portion comprises the facet (Figs. 3B-C).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the microstructures comprise a facet and a side wall meeting the facet at a ridge of the microstructure and wherein the facet and the side wall define an oblique angle therebetween; and wherein the first portion on which the coating is disposed comprises the side wall and the second portion comprises the facet as taught by the coated microstructured film of Takada in the coated microstructured film of Schmidt since Takada teaches it is known to include these features in a coated microstructured film for the purpose of providing a reliable coated microstructured film with enhanced mechanical strength.
Regarding claim 9, Schmidt in view of Takada discloses and teaches as set forth above, Takada further teaches, from the same field of endeavor each of the microstructures is a) a linear prism having a substantially same angle between the optical facet and the side wall (Figs. 3B-C) or b) a linear Fresnel element (Figs. 3B-C).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the coated microstructured film of Takada in the coated microstructured film of Schmidt since Takada teaches it is known to include these features in a coated microstructured film for the purpose of providing a reliable coated microstructured film with enhanced mechanical strength.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (WO 2020/121112) as applied to claim 15 above, in view of Schmidt et al. (US 2021/0333624).
Schmidt remains as applied to claim 15 above.
Schmidt does not disclose exposing the coated microstructures to a metal salt solution to dispose a metal on the coating.
Schmidt teaches, from the same field of endeavor that in a method of making a coated microstructured film exposing the coated microstructures to a metal salt solution to dispose a metal on the coating (Para. 0078-0079).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make exposing the coated microstructures to a metal salt solution to dispose a metal on the coating as taught by the method of making a coated microstructured film of Schmidt in the method of making a coated microstructured film of Schmidt since Schmidt teaches it is known to include this feature in a method of making a coated microstructured film for the purpose of providing a coated microstructured film that is effectively coated and delivers reduced high angle light leakage and ghosting.
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments that Schmidt does not disclose the coating [comprises] a polymer that is the reaction product of a composition comprising at least one of a phenol or a polyphenol. The Examiner points out that while not objectionable, the Office reminds Applicant that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161 ; IN re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. Note that applicant has the burden of proof in such cases, as the above case law makes clear. Thus, no patentable weight will be given to those process steps which do not add structural limitations to the final product.
Furthermore, the Examiner points out that for a product-by-process claim and even 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.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the coating polymer is chemically derived from (i.e., is a reaction product of) a phenol/polyphenol-containing composition) are not recited in the rejected claim(s). 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).
In response to applicant's argument that Nam is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the examiner points out that Nam relates to a coated microstructure. In response to applicant's argument that Nam is directed to polydopamine-mediated redox growth of branched metal nanostructures on metal substrates (e.g., "a substrate surface having at least a first metal surface," forming a "polydopamine coating layer," and then oxidizing catechol to quinone to "induc[e] oxidative nano peeling due to oxidative collapse of the polydopamine coating layer" while reducing a metal precursor (see, page 2 of Nam)). Nam's stated focus is plasmon particles for photodynamic/photothermal therapy and SERS, which the Examiner points out is a recitation of the intended use. In addition, the Examiner points out that the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., selectively removing polyphenol coatings from horizontal microstructure surfaces (e.g., by RIE) while leaving sidewalls coated (e.g., EX1 (RIE "indicating substantial removal of the polydopamine from the horizontal surfaces"); EX3 and FIG. 6B (after removal from the top surface, "the resulting microstructure includes a coating on a side wall"))) are not recited in the rejected claim(s). 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 08/03/2026
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