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 with traverse of Group I in the reply filed on 13 August 2026 is acknowledged. The traversal is on the ground(s) that no examination burden. This is not found persuasive because the respective scopes of claims 1 and 13 are indeed different, not to mention that Applicant has not provided articulated arguments against the reference cited.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2022/092319 A1 (referenced below using its English-language counterpart publication, U.S. 2024/0018035 A1, “Kamitani ‘035”).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Considering claims 1-3, Kamitani ‘035 discloses an antimicrobial film formed from condensation of silanes and antimicrobial ions in the form of cupric ions, wherein the antimicrobial film can be rendered to be anti-glare by structuring the antimicrobial film as one having recesses and protrusions via usage of silica particles. (Kamitani ‘035 ¶¶ 0134 and 0149-0162; and Table 2).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by U.S. 2018/0015691 A1, “Nagasaki”).
Considering claim 1, Nagasaki discloses an antibacterial film having an antiglare function, the antibacterial film formed a curable organic composition containing antibacterial agent in the form of silver and ions thereof, wherein the antibacterial film can be attached to a glass substrate. (Nagasaki ¶¶ 0037-0067 and 0125-0137 and Table 1).
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2018/0015691 A1, “Nagasaki”)
Considering claim 2, Nagasaki is analogous art, for it is directed to the same field of endeavor as that of the instant application (antibacterial and/or antiglare films). Nagasaki discloses its silver-based antibacterial agent can be in the form of metallic silver, silver ions, or silver salts. (Nagasaki ¶ 0041). Both ions and salts contain ionic silver, and with these being two of the three types of silver-based species named, silver ion is considered to be disclosed with sufficient specificity or alternatively obvious in view of express teachings from the reference. As the silver is located on inorganic particles having size of less than 1 µm, the sizing selected specifically for anti-glare purposes, Nagasaki is considered to have disclosed inorganic oxide fine particles. (Id. ¶ 0039 and 0044-0047). Lastly, the curable organic composition forms a polymeric matrix with network bonds. Nagasaki thus anticipates or alternatively renders obvious claim 2.
Considering claim 3, Nagasaki expressly discloses that the inorganic particles contribute to the formation of moderate unevenness, which produces protrusions and valleys. (Id. ¶ 0016). with silver being Nagasaki discloses an antibacterial film having an antiglare function, the antibacterial film formed a curable organic composition containing antibacterial agent in the form of silver and ions thereof, wherein the antibacterial film can be attached to a glass substrate. (Nagasaki ¶¶ 0037-0067 and 0125-0137 and Table 1).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2013/0142994 A1 (“Wang”)
Considering claim 1, Wang discloses a coating 7 located upon a glass substrate, the coating 7 having a textured outermost surface, the coating 7 simultaneously exhibiting antiglare and anti-microbial properties. (Wang ¶¶ 0021-0024, 0035, 0038, 0039, and 0055). Wang is analogous art, for it is directed to the same field of endeavor as that of the instant application (antibacterial and/or antiglare films). Wang discloses that the surface texturing is responsible for reducing glare, and Wang discloses introduction of copper or silver species to impart antibacterial properties. (Id. ¶¶ 0039 and 0054). As specific implementation for implementing a layer having both antiglare and antibacterial properties is expressly disclosed, a layer having both properties is considered to be disclosed with sufficient specificity or alternatively obvious in view of express teachings from the reference.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above, and further in view of U.S. 2022/0235232 A1 (“Zhang”) and JP 2007/308584 A (referenced below using its machine translation, “JP ‘584”).
Considering claim 2, Wang as discussed above discloses its coating 7 can be formed from sol gel process using precursors such as silanes and contain particles. (Wang ¶¶ 0044, 0061, and 0065). As such, using silanes to form the bulk (matrix) of coating 7 is at least obvious. Wang differs from the claimed invention, as although silver and particles are disclosed, Wang does not disclose a) ionic silver and b) inorganic oxide fine particles.
Re: deficiency a), Zhang teaches an anti-microbial coating formed from silanes and containing silver ions. (Zhang ¶¶ 0022-0024 and 0028-0034). As such, Zhang is considered to have taught a specific implementation of incorporation of (anti-microbial) silver species in a siloxane network formed from silanes. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the specific implementation taught in Zhang to form the coating 7 of Wang, as the antimicrobial coating of Zhang has improved durability. (Zhang ¶¶ 0022 and 0115).
Re: deficiency b), JP ‘584 discloses an anti-glare film containing hollow silica particles having diameter of up to 300 nm, wherein the particles are arranged in a manner as to form alternating protrusions and recesses, wherein the particles are shown to be stacked and form of planar local maximum (viz. plateau), and wherein the recesses contain only matrix and particles that are not stacked. (JP ‘584 ¶¶ 0057-0063 and Fig. 1, reproduced infra). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included the surface texturing and the particles of JP ‘584 to the coating 7 of Wang, as JP ‘584 teaches this arrangement is particularly effective in reducing glare. (JP ‘584 ¶ 0061). Alternatively, person having ordinary skill in the art would have been motivated to use the surface texturing and the particles of JP ‘584 to the coating 7 of Wang, as JP ‘584 is considered to have demonstrated that this configuration is known in the art for anti-glare films. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
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Claims 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above, Zhang, JP 2007/308584 A (referenced below using its machine translation, “JP ‘584”), as applied to claim 2 above, and further in view of WO 2019/240178 A1 (referenced below using its English-language counterpart publication U.S. 2021/0255364 A1, “Yabuta”).
Considering claims 3-5, 9, and 12, as discussed in the rejection of claim 2 above, the coating 7 of Wang modified by JP ‘584 has protrusions with a plateau shape and recesses that contain only matrix and particles that are not stacked. However, the references are silent re: plan view configuration of the protrusions and recesses.
However, an anti-glare film in which a recess surrounds a protrusion and/or wherein a protrusion surrounds a recess is well-known in the art, as taught in Yabuta. (Yabuta Figs. 1 and 2). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have arranged the protrusions and recesses in the coating 7 of Wang and JP ‘584 according to the configuration of Yabuta, for improved antiglare performance. (Yabuta ¶ 0032).
Considering claims 6 and 7, these are readily derived from the surface roughness parameters taught in Yabuta, such as average roughness and RSm. (Id. ¶¶ 0036-0040). Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here 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”; MPEP 2144.05 II.A.
Considering claim 8, as the silver ions are well-mixed in the coating formulation taught in Zhang, they are contained where ever the resulting siloxane matrix is. Both JP ‘584 and Yabuta shows recesses where the matrix is exposed.
Considering claims 10 and 11, these features are taught in Yabuta. (Yabuta Figs. 1 and 2).
Double Patenting Rejection
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 18/282,700 (currently allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4, and 6 recite all limitations found in claims 1-3 of the Instant Application. Though anti-glare is not recited, the gloss values recited in claim 4 of the ‘700 Application is in line with what is deemed anti-glare by the Instant Application.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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