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 § 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 1-14 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.
Regarding claims 1-2, 6 and 9, the limitation “a 20% K value”, “a volume resistivity”, “an average particle diameter”, “a specific gravity” and “a CV value” do not refer to a particular structure or composition of the colored resin particle of claim 1. It is therefore unclear what structure or composition is being measured to determine the 20% K value, the volume resistivity, the average particle diameter and the CV value. Is it the resin of the resin particle, the colorant, the colored resin particle or even a separate structure in the vicinity or containing the colored resin particle?
Claim 3 contains the limitation “a lightness L0* of the colored resin particle before light irradiation” which defines the term “L0*”. However, there is no corresponding definition for “L540*” and it is therefore unclear if this refers to a similar definition of the form “a lightness of the colored resin particle after light irradiation with at an integrated light amount of 540 MJ/m2” or some other definition. Since the term can have potentially divergent interpretations, the metes and bounds of the claim are unclear and clarification of the limitation is required. For purposes of examination “L540*” is being interpreted as referring to the lightness of the colored resin particle after being irradiated at an integrated light amount of 540 MJ/m2.
Regarding claim 5, “are not included” and “are included” is unclear. Where or in what structure are the “particles” included? Which “particles” are being referred to specifically, the resin particle, the colorant or the colored resin particles? “The average particle diameter” lacks antecedent basis since it does not refer to which particle is being referred to. It appears as though Applicant is trying to refer to the size distribution of the colored resin particles being 1.2 times or more of the average particle diameter of the colored resin particle and will be interpreted as such.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “are included in an amount of 1000 pm”, and the claim also recites “are not included” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-14 are further rejected as being dependent on claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (U.S. App. Pub. No. 2020/0199454) in view of Wu (U.S. Pat. No. 6,187,440).
Regarding claim 1, Yamada et al. teaches composite particles for suppressing color unevenness in a light modulating material. (Abstract). The composite particles are resin particles including a pigment (i.e. a colorant). (Abstract and par. [0030]-[0032]).
Yamada et al. does not disclose the volume resistivity of the composite particles but disclose their use as spacers in light-modulating liquid crystal containing layers. (Fig. 1-2, par. [0022] and [0097])
Wu teaches polymer particles made of multi-functional methacrylates having uniform size and physical properties of use in liquid crystal displays (Abstract), similar to those disclosed in Yamada et al. Wu teaches that spacers should have a resistivity in the range of greater than 4x1015 Ohm.cm due to the importance in liquid crystal displays to avoid degradation of the liquid-crystal layer. (col. 7, lines 24-34).
It would have been obvious to one of ordinary skill in the art for controlling the volume resistivity of the composite particles of Yamada et al. which are used as spacers in the liquid crystal displays.
It would have been obvious to one of ordinary skill in the art to keep the resistivity of the composite particles of Yamada et al. in the range of greater than 4x1015 Ohm.cm in order to prevent degradation of the liquid crystal as taught in Wu.
Regarding claim 2, Yamada et al. discloses a 20% K value in the range of 5000 N/mm2 or more (par. [0044]), overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 3, with respect to the lightness of the resin particle of Yamada et al., the reference discloses that the pigmen preferably includes a black pigment such as carbon black with an average particle size of 50-300 nm and in an amount of 1-10% by weight. (par. [0079], [0084], [0088] and [0090]). The present application indicates that the ratio of L0* to L540* being 0.3 or more is the result of controlling the type and content of the colorant (Applicant’ specification, par. [0034]), that carbon black pigments result in improved values for L0* and L540* (par. [0081]). Furthermore, Example 1 of the present application includes a resin particle containing 5 parts by weight carbon black having a L0*/L540* in the range of 0.94. (see Table 1). This embodiment is explicitly contemplated by the disclosure of Yamada et al. and therefore although Yamada et al does not disclose all the characteristics and properties of the composite resin disclosed in the present claims, based on the substantially identical components used in the substantially identical amounts, the Examiner has a reasonable basis to believe that the properties claimed in the present invention is inherent in the composite resin disclosed by Yamada et al. Because the PTO has no means to conduct analytical experiments, the burden of proof is shifted to the Applicants to prove that the properties are not inherent. See In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Best, 195 USPQ 430 (CCPA 1977); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995).
Regarding claim 4, Yamada et al. discloses an average particle diameter of 10-100 micrometers (par. [0091]) which is a narrower range than the limitation 1 µm or more and 150 µm or less, thereby anticipating the present range.
Regarding claim 5, Yamada et al. discloses that the coefficient of variation of the composite particles should be 10% or less (par. [0039]) for improving the light modulating properties of the composite particle. Yamada et al. therefore recognizes a result effective and optimizable parameter in the narrowness of the particle size distribution of the composite particles such that particles having diameters of 1.2 times or more than the average particle size (i.e. a coefficient of variation of 20%) would not be present or present in a very small amount. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 6, Yamada et al. discloses that the coefficient of variation of the composite particles should be 10% or less (par. [0039]).
Regarding claim 7, Yamada et al. discloses that the pigment includes carbon black. (par. [0084]).
Regarding claim 8, Yamada et al. discloses a content of pigment in an amount of 1-10% by weight. (par. [0090]).
Regarding claim 9, Yamada et al. does not disclose the specific gravity of the composite particles.
Wu teaches that the spacer that are suitable for use may have specific gravity of 1.08 (Table 3).
It would have been obvious to one of ordinary skill in the art would have found it obvious to use a composite material having a specific gravity of 1.08 in view of the teachings of Wu that the value is suitable for similar materials used for the same purpose. One of ordinary skill in the art would therefore have a reasonable expectation of success that a specific gravity in the range of 1.08 would be desirable value for the composite particles of Yamada et al. for use as a spacer in a dimming layer. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 10-11, Yamada et al. teaches a resin material comprising a polyfunctional (meth)acrylate. (Example 1). The resin material is a polymer of divinyl benzene and the polyfunctional methacrylate and accounts for 47.5 x 2 = 95% by weight of the colored resin particles.
Regarding claims 12-14, Yamada et al. teaches using the composite particles as a spacer in a dimmer laminate including first and second base materials and a dimming layer containing the composite resin particles therebetween. (Fig. 1 and par. [0070]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (U.S. App. Pub. No. 2020/0199454) in view of Swiler et al. (U.S. App. Pub. No. 2002/0034644) and Sakurazawa et al. (JP2006-257143).
In the alternative to the inherency rejections as set forth above for claim 3, the claim is further rejected as follows:
Yamada et al. teaches composite particles for suppressing color unevenness in a light modulating material. (Abstract). The composite particles are resin particles including a pigment (i.e. a colorant). (Abstract and par. [0030]-[0032]).
With respect to the lightness of the resin particle of Yamada et al., the reference does not disclose a L0*/L540* in the range of 0.3 or more as claimed. It is noted that the ratio L0*/L540* represents the degradation of color of the particle when exposed to light in an amount of 540 MJ/m2.
Swiler et al. teaches a pigment composition based on rare-earth transition metal oxide as colorants which possess good stability. (Abstract). Swiler et al. teaches that colorants should be able to demonstrate a high degree of light fastness and temperature stability in order to be used in a wide variety of applications. (par. [0003]).
It would have been obvious to one of ordinary skill in the art to make the composite particles of Yamada et al. have a high degree of light fastness (i.e. resistance to light) such that exposure to light would not degrade the color thereof. One of ordinary skill in the art would have therefore optimized the degree of light fastness by, for example, selection of the type and quality of the colorant of Yamada et al. One of ordinary skill in the art would have found it obvious to optimize the light fastness of the composite particle in order to improve the quality and longevity of the composite particles and coloring material.
Furthermore, while Swiler et al. does not teach the L0*/L540* as claimed, Sakurazawa et al. teaches a cellulose acylate film for a liquid crystal display device. (Abstract). Sakurazawa et al. teaches that a test to determine light resistance of the film is determined the L*, a* and b* values in the L*a* b* color system before and after irradiation with a xenon light for 200 hours. (page 33, first and second full paragraphs). A “good” value for light resistance is such that the ΔE value as used in Formula 17, which includes difference in L* before and after, a* before and b* before and after. (page 33, middle paragraph paragraph). The ΔE should be 15 or less in order for the light resistance of the material to be high. Since the difference in L* before and after is a property which contributes to the final ΔE, it should be as low as possible in order to achieve a value of 15 or less. Therefore, a ratio of the before and after L* values should be as close to one as possible since a low difference would mean a ratio of close to 1.
One of ordinary skill in the art would have therefore optimized the degree of light fastness in the composite particles of Yamada et al. to be as high as possible such that a L0*/L540* as claimed would be as close to 1 as possible in order for the composite particles to be considered a material having good resistance to degradation of their color and lightness/darkness when exposed to light
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/711,984 (hereafter ‘984).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claims 1 and 3, ‘984 claims a colored resin particles comprising resin particle, a colorant and a L0*/L540* as claimed of 0.3 or more, overlapping with the presently claimed range. (claim 1). ‘984 further claims a volume resistivity of 1x1010 Ohm.cm. (claim 3).
Regarding claim 2, ‘984 claims a 20% K value of 100-5000 N/mm2. (claim 2).
Regarding claim 4, ‘984 claims an average particle diameter of 1-150 micrometers. (claim 4).
Regarding claim 5, ‘984 claims the content of particles having a particle diameter of 1.2 times or more the average particle diameter as not being included or included in an amount of 1000 ppm or less. (claim 5).
Regarding claim 6, ‘984 claims a CV of 10% or less. (claim 6).
Regarding claim 7, ‘984 claims a colorant selected from an organic black pigment, a titanium black particle and a carbon black particle. (claim 7).
Regarding claim 8, ‘984 claims a colorant amount of 20% by weight or less. (claim 8).
Regarding claim 9, ‘984 claims a specific gravity of 1.5 or less. (claim 9).
Regarding claims 10-11, ‘984 claims a compound derived from a polyfunctional (meth)acrylate compound in an amount of 50% by weight or more. (claims 10-11).
Regarding claim 12-14, ‘984 claims a spacer in a dimmer laminate having a first and second base material, the dimmer laminate disposed between the base materials. (claims 12-14).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 06/09/2026
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