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 .
Withdrawn Rejections
The objection of claim 14 of record in the previous Office Action mailed 1/30/2026 has been withdrawn due to Applicant's amendment filed on 4/30/2026.
The 35 U.S.C. 112(b) rejection of claims 7, 10, 12, 14, 15, 21-24, 27 and 28 of record in the previous Office Action mailed 1/30/2026 has been withdrawn due to Applicant's amendment filed on 4/30/2026.
The 35 U.S.C. 102(a)(1) rejection of claims 1-18 and 21-29 as anticipated by Yamamoto et al. (US 2016/0024335) of record in the previous Office Action mailed 1/30/2026 has been withdrawn due to Applicant's amendment filed on 4/30/2026.
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.
Claims 1-3, 5-15, 29, 35, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishiyama et al. (CN 105026963A) [hereinafter Nishiyama].
Regarding claim 1, Nishiyama discloses a black coating (paragraph [0043]) comprising, a cured solid film (light shielding layer) formed from a curable composition mixed with metal oxide nanoparticles (paragraph [0071]) and black pigment (paragraph [0077]), the cured solid film having a metal oxide nanoparticle weight percentage greater than 45% (paragraph [0081]), and an optical density of more than 2 at wavelengths between 400 and 740 nm (paragraph [0063]).
Regarding claim 2, Nishiyama discloses the cured solid film having a refractive index of more than 1.75, the refractive index being measured at 589 nm (paragraphs [0067-0071] and [0083]).
Regarding claim 3, Nishiyama discloses the cured solid film having a thickness of 1 to 300 µm (paragraph [0112]).
Regarding claim 5, Nishiyama discloses the metal oxide nanoparticles consisting of aluminum oxide and having a Z-average particle diameter of 1 to 200 nm (paragraphs [0071-0073]).
Regarding claim 6, Nishiyama discloses the black coating has a refractive index, wherein a complex part of the refractive index is lower than 0.05 (paragraphs [0048-0052]).
Regarding claim 7, Nishiyama discloses the curable composition comprising curable components, and a weight ratio of the metal oxide nanoparticles to the curable components amounts to from 95:5 to 50:50 (paragraphs [0081-0083]).
Regarding claim 8, Nishiyama discloses the black pigment is selected from the group consisting of carbon black, organic pigments, metal complex dyes, metal oxide particles, and combinations thereof (paragraph [0077]).
Regarding claim 9, Nishiyama teaches the black pigment used is carbon black (paragraph [0077]) which is the same pigment of the claimed black coating, therefore the black coating is deemed to have a diffuse reflectance lower than 1.5%.
Regarding claim 10, Nishiyama discloses the cured solid film is disposed on an optical substrate, and wherein a refractive index of the cured solid film can differ by no more than +0.4 units from that of the optical substrate, the refractive index being measured at 589 nm, since the refractive index for the cured solid film and the substrate are substantially equal (paragraphs [0068-0083] and [0117]).
Regarding claim 11, Nishiyama discloses the cured solid film being deposited on an optical substrate or a stack of optical substrates having a refractive index of more than 1.75 (paragraph [0117]).
Regarding claim 12, a total reflection at an interface between the optical substrate and the cured solid film is deemed less than 2% at 400-700 nm, since the materials forming the substrate and the film are substantially identical to that of the claimed substrate and claimed film.
Regarding claim 13, Nishiyama discloses the composition comprising curable monomers and one or more photopolymerization initiators (paragraphs [0106-0110]).
Regarding claim 14, Nishiyama discloses the curable composition comprising 0 to 50 parts by weight of a curable polymer, curable monomers in an amount of up to 50 parts by weight, 50 to 100 parts by weight of metal oxide nanoparticles, and 0.1 to 20 parts by weight of black pigment, the metal oxide nanoparticles and black pigment being mixed with the curable polymer and curable monomers (paragraphs [0080-0083] and [0106-0108]). Additionally, it is to be noted that the curable polymer does not need to be present in the composition, since the composition can comprise 0 parts by weight of a curable polymer.
Regarding claim 15, Nishiyama discloses the curable polymer exhibiting one or several reactive groups selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, methacrylate and combinations thereof; and wherein the curable polymer comprises a prepolymer having a molecular weight of 500 to 2500 g/mol (paragraphs [0103-0108]); and the curable monomers are selected from compounds having crosslinkable reactive groups, selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, methacrylate and combinations thereof (paragraphs [0103-0108]).
Regarding claim 29, Nishiyama discloses an optical substrate comprising a black coating according to claim 1 (paragraphs [0071-0073]).
Regarding claim 35, Nishiyama discloses the black pigment comprises particles having an average particle size of 10 to 100 nm (paragraph [0079]).
Regarding claim 37, Nishiyama discloses a composition for coating an optical substrate, the composition comprising 0 to 50 parts by weight of a curable polymer, curable monomers in an amount of up to 50 parts by weight, 50 to 100 parts by weight of metal oxide nanoparticles, and 0.1 to 20 parts by weight of black pigment, wherein the metal oxide nanoparticles and black pigment are mixed with the curable polymer and curable monomers (paragraphs [0080-0083] and [0106-0108]), and the composition is solvent free, since it is optional (paragraph [0129]).
Regarding claim 38, Nishiyama discloses the composition is solvent free, since it is optional (paragraph [0129]).
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, 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 16-18, 21-23, 25-28, 37 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Kariya et al. (WO2019/188851A1) [hereinafter Kariya].
Regarding claim 16, Kariya discloses a composition for coating an optical substrate (paragraphs [0103-0106]), the composition comprising 0 to 50 parts by weight of a curable polymer (paragraph [0068]), curable monomers in an amount of up to 50 parts by weight (paragraph [0058]), metal oxide nanoparticles (paragraphs [0026-0032]), 0.1 to 20 parts by weight of black pigment (paragraph [0025]), and 0.1 to 25% parts by weight of one or more photopolymerization initiators (paragraphs [0071-0074]), the metal oxide nanoparticles and black pigment being mixed with the curable polymer and curable monomers (abstract; claims 1-9).
However, Kariya fails to specifically teach 50 to 100 parts by weight of metal oxide nanoparticles.
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 amount of metal oxide nanoparticles in Kariya to be 50 to 100 parts by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05.
Regarding claim 17, Kariya discloses the curable polymer is selected from prepolymers having a molecular weight of 500 to 100,000 g/mol and exhibiting one or several reactive groups selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, hydride, thiol, methacrylate and combinations thereof (paragraphs [0059-0067]).
Regarding claim 18, Kariya discloses the curable monomers exhibit one or several reactive groups selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, hydride, thiol, methacrylate and combinations thereof (paragraphs [0053-0058]).
Regarding claim 21, Kariya discloses the black pigment is present in a concentration of 0.1 to 10% calculated from a total weight of the composition excluding solvent (paragraph [0025]).
Regarding claim 22, Kariya discloses the composition further comprising a solvent to modify a viscosity of the composition, the solvent optionally also being capable of dissolving the black pigment (paragraphs [0041-0048]).
Regarding claim 23, Kariya discloses a solids content of the composition is 60 to 100% by weight, wherein a remainder of the composition comprises a solvent (paragraphs [0025], [0032] and [0048]).
Regarding claim 25, Kariya discloses the composition comprising one or more additives capable of adjusting properties of the composition, and wherein the properties are selected from the group consisting of wetting, adhesion, thixotrophy, foaming and combinations thereof (paragraph [0085]).
Regarding claim 26, Kariya discloses the composition having a dynamic viscosity of 5 mPas-1,000,000 mPas at 25o using a rheometer at 10s-1 shear rate (paragraph [0086]).
Regarding claim 27, Kariya discloses the composition comprising 1 to 15 parts by weight of a curable polymer (paragraph [0068]), 10 to 40 parts by weight of the curable monomers (paragraph [0058]), metal oxide nanoparticles (paragraphs [0026-0032]), 0.1 to 20 parts by weight of black pigment (paragraph [0025]), and 0.1 to 25% parts by weight of one or more photopolymerization initiators (paragraphs [0071-0074]), and optionally 0.1 to 50% of a solvent, calculated from a total weight of the composition (paragraphs [0041-0048]).
However, Kariya fails to specifically teach 50 to 100 parts by weight of metal oxide nanoparticles.
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 amount of metal oxide nanoparticles in Kariya to be 50 to 100 parts by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05.
Regarding claim 28, Kariya fails to teach the composition comprising less than 5% solvent, if present, calculated from a total weight of the composition. 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 amount of solvent, if present, in Kariya to be less than 5%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05.
Regarding claim 37, Kariya discloses a composition for coating an optical substrate, the composition comprising 0 to 50 parts by weight of a curable polymer (paragraph [0068]), curable monomers in an amount of up to 50 parts by weight (paragraph [0058]), metal oxide nanoparticles (paragraphs [0026-0032]), and 0.1 to 20 parts by weight of black pigment (paragraph [0025]), wherein the metal oxide nanoparticles and black pigment are mixed with the curable polymer and curable monomers, and wherein the composition can be solvent free, since it is optional (paragraph [0041]).
However, Kariya fails to specifically teach 50 to 100 parts by weight of metal oxide nanoparticles, and less than 4% solvent, if present.
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 amount of metal oxide nanoparticles in Kariya to be 50 to 100 parts by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05. Furthermore, 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 amount of solvent, if present, in Kariya to be less than 4%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05.
Regarding claim 38, Kariya teaches the solvent is optional in the composition (paragraph [0041]). If the solvent is present, Kariya fails to teach the composition comprising less than 2% solvent, calculated from a total weight of the composition. 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 amount of solvent in Kariya to be less than 2%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05.
Allowable Subject Matter
Claim 36 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 following is a statement of reasons for the indication of allowable subject matter: The cited prior art fails to teach or reasonably suggest all the distinct features recited in claim 36.
Response to Arguments
Applicant’s arguments, see pages 2-4, filed 4/30/2026, with respect to the 35 U.S.C. 102(a)(1) rejection of claims 1-18 and 21-29 as anticipated by Yamamoto et al. (US2016/0024335) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nishiyama et al. (CN 105026963A) and in view of Kariya et al. (WO2019/188851A1), which are presented above.
Conclusion
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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