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 Election
1. This action is in response to the provisional election mailed March 25, 2026.
(Group I) Claims 1-12 were provisionally elected rendering (Groups II-III) Claims 13-16 to non-elected inventions.
RESPONSE TO REQUEST FOR RECONSIDERATION
2. Applicant's election with traverse of method of making an optical recording medium (Group II) is acknowledged. The traversal is on the ground(s) that
the requirement is improper at least because it does not explain with any particularity how/why the identified Groups lack a "special technical feature". Instead, the requirement, in a conclusory manner, alleges that "claims 1, 13 and 14 are either obvious over or anticipated by WO 2021/167090 (abstract, paragraphs 1-26 and claims 1-5)". Moreover, the requirement does not explain how the flat portions of the first main surface and the third main surface are bonded by covalent bonding via a molecular adhesive, as encompassed by the present claims, are either obvious over or anticipated by WO 2021/167090. The lack of an explanation renders the requirement deficient because it fails to demonstrate that the identified Groups listed in the Official Action do not relate to a single general inventive concept under PCT Rule 13.1. In response to Applicant’s argument, the inventions listed as Groups I through III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Claims 1, 13 and 14 are either obvious over or anticipated by WO 2021/167090 (abstract, paragraphs 1-26 and claims 1-5). Accordingly, the special technical feature linking the three inventions, an optical sheet with a concavo-convex structure , does not provide a contribution over the prior art, and no single general inventive concept exists. Consequently, a lack of unity exists. Additionally, the phrase, “bonded by covalent bonding via a molecular adhesive” introduces a process limitation to the product claim. 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.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
3. The references disclosed within the information disclosure statement (IDS) submitted on July 11, 2025, and December 17, 2025, have been considered and initialed by the Examiner.
Claim Rejections – 35 USC 112
4. 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.
5. Claims 3 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
In claim 3, the phrase, “the point of maximum penetration” is indefinite. There is insufficient antecedent basis for this limitation in the claim, as claim 2 does not recite a point of maximum penetration.
Claim Rejections – 35 USC § 103
6. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
7. Claims 1-2, 4-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al. (WO 2021/167090).
Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v), where Mizuno discloses an adhesive layer (abstract, par. 117, Examples 5a, 6a and 7a), where Figure 4 is shown below:
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, as in claims 1, 7-9. In claim 1, the phrase, “bonded by covalent bonding via a molecular adhesive” introduces a process limitation to the product claim. 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.
Concerning claim 2, Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v) (abstract, par. 117, Examples 5a, 6a and 7a). In claim 2, the phrase, “ when a distance from an opening face defined by an opening of the dent to a deepest portion of the dent is defined as A and a point at which a distance from the opening face to the third main surface of the second optical sheet that has penetrated into the dent takes a maximum value B is defined as a point of maximum penetration, B/A is 0.2 or less” constitutes a “capable of” limitation and that such a recitation that an element is ‘capable of’ performing a function is not a positive limitation but only requires the ability to so perform.
Concerning claim 4, Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v) (abstract, par. 117, Examples 5a, 6a and 7a). Mizuno does not explicitly disclose the distance between the flat portions and third main surface; however, distance modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04.
Concerning claim 5, Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v), where Mizuno discloses an adhesive layer (abstract, par. 117, Examples 5a, 6a and 7a), where Figure 4 is shown below:
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. Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v) (abstract, par. 117, Examples 5a, 6a and 7a). Mizuno does not explicitly disclose the distance between the flat portions and third main surface; however, distance modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04.
In claim 5, the phrase, “ when a distance from an opening face defined by an opening of the dent to a deepest portion of the dent is defined as A and a point at which a distance from the opening face to the third main surface of the second optical sheet that has penetrated into the dent takes a maximum value B is defined as a point of maximum penetration, B/A is 0.2 or less” constitutes a “capable of” limitation and that such a recitation that an element is ‘capable of’ performing a function is not a positive limitation but only requires the ability to so perform.
In claim 5, the phrase, “bonded by covalent bonding via a molecular adhesive” introduces a process limitation to the product claim. 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.
Concerning claim 6, Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v), where Mizuno discloses an adhesive layer (abstract, par. 117, Examples 5a, 6a and 7a). In claim 6, the phrase, “bonded by covalent bonding via a molecular adhesive” introduces a process limitation to the product claim. 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.
Concerning claim 11, Mizuno discloses an optical stack (Figs. 4-7A) comprising: ii) a first optical sheet (10b) having a first main surface (12s) with a concavo-convex structure and a second main surface (18s) on an opposite side from the first main surface; and iii) a second optical sheet (30) having a third main surface that is disposed on a side of the first main surface of the first optical sheet, wherein, iv) the concavo-convex structure of the first main surface includes a plurality of dents (14) and flat portions between two dents that are adjacent to each other of the plurality of dents, for each of the plurality of dents (Figs. 4, 6), v), where Mizuno discloses an adhesive layer (abstract, par. 117, Examples 5a, 6a and 7a), where Figure 4 is shown below:
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. In claim 11, the phrase, “first optical sheet is formed of a cured material of a curable resin” introduces a process limitation to the product claim. 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.
Concerning claim 12, Mizuno does not appear to explicitly teach the haze of the optical stack, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the optical stack is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the optical stack discussed above would be expected to meet the claimed haze.
Claim Objection
8. Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art does not teach or suggest the recited optical stack further including the flat portions and the third main surface have at least one reactive group selected from the group consisting of a hydrocarbon group, a carbonyl group, and a hydroxyl group, and form covalent bonding with the molecular adhesive.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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