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 Objections
Claim 14 is objected to because of the following informalities: the recitation “composition” in line 2 is repeated twice; and the recitation “parts” in line 6 is repeated twice. Appropriate correction is required.
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 7, 10, 12, 14, 15, 21-24. 27 and 28 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.
Claim 7 recites the limitation "the photocurable composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the weight ratio" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitations "the refractive index" in line 2 and “said refractive index” in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitations "the total reflection", “the optical substrate” and “the coating film” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Claim 14 recites the limitation "the photocurable composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the curable polymer" in lines 3 and 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the curable monomers" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the total weight of the composition excluding solvent" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation “comprising black pigment in concentration of 0.1 to 10%” which is deemed indefinite, since it is unclear if this black pigment is referring to the black pigment recited in claim 16 or a different black pigment.
Claim 22 recites the limitation "the viscosity" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "the solids content" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation "the total weight of the composition of a photopolymerization initiator or a combination of photopolymerization initiators" in lines 2-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the total weight of the composition" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation "the total weight of the composition" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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 1-18 and 21-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto et al. (US 2016/0024335) [hereinafter Yamamoto].
Regarding claim 1, Yamamoto discloses a black coating (paragraph [0015]) comprising, a cured solid film (light shielding film) formed from a curable composition mixed with metal oxide nanoparticles (titania; paragraphs [0037-0040]) and black pigment (black dye; paragraph [0041-0042]; Examples 2-5), the cured solid film having a metal oxide nanoparticle weight percentage greater than 45% (abstract; paragraph [0038]).
Regarding claim 2, Yamamoto discloses the film having a refractive index of more than 1.75, the refractive index being measured at 589 nm (paragraph [0063]).
Regarding claim 3, Yamamoto discloses the film having a thickness of 1 to 300 µm (paragraph [0062]).
Regarding claim 4, the film of Yamamoto inherently has an optical density of more than 2, at wavelengths between 400 and 740nm, since the black pigment is present in concentration of 0.1 to 10% (paragraph [0042]).
Regarding claim 5, Yamamoto discloses the metal oxide nanoparticles consisting of titanium dioxide and having a Z-average particle diameter of 1 to 200 nm (paragraphs [0037-0040]).
Regarding claim 6, Yamamoto discloses the black coating having a refractive index and wherein a complex part of the refractive index is lower than 0.05 (paragraphs [0010], [0063] and [0072]).
Regarding claim 7, Yamamoto discloses the curable composition comprising curable components, and the weight ratio of the metal oxide nanoparticles to the curable components amounts to from 95:5 to 50:50 (paragraphs [0038] and [0050]).
Regarding claim 8, Yamamoto discloses the black pigment is metal complex dyes (paragraph [0041]).
Regarding claim 9, Yamamoto discloses the black pigment is selected to obtain a black coating with a diffuse reflectance lower than 1.5%, since the material used for the black pigment and the amount present in the film is substantially identical to that of the claimed black pigment (paragraphs [0010], [0041-0042], [0063] and [0072]).
Regarding claim 10, Yamamoto discloses the film is disposed on an optical substrate, and wherein the refractive index of the film can differ no more than +0.4 units from that of the optical substrate, the refractive index being measured at 589 nm, since the materials forming the substrate and the film are substantially identical to that of the claimed substrate and film (paragraphs [0010], [0063] and [0072]).
Regarding claim 11, Yamamoto discloses the film being deposited on an optical substrate or a stack of optical substrates having a refractive index of more than 1.75 (paragraphs [0071-0073]).
Regarding claim 12, the total reflection at an interface between the optical substrate and the coating film is inherently less than 2% at 400-700 nm, since the materials forming the substrate and the coating film are substantially identical to that of the claimed substrate and claimed coating film.
Regarding claim 13, claim 13 defines the product by how the product was made. The limitation “cured by photo-activation" is deemed a process limitation. Thus, claim 13 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies forming a cured solid film. As shown above, Yamamoto suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claim 14, Yamamoto 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 (dye), the metal oxide nanoparticles and black pigment (dye) being mixed with the curable polymer and curable monomers (paragraphs [0034-0036], [0038] and [0042]). 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, Yamamoto 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; 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 (paragraph [0034]).
Regarding claim 16, Yamamoto discloses a composition for an optical substrate (Fig. 4), the composition (light shielding film) comprising 0 to 50 parts by weight of a curable polymer (paragraph [0034]), curable monomers in an amount of up to 50 parts by weight (paragraph [0034]), 50 to 100 parts by weight of metal oxide nanoparticles (paragraph [0038]), and 0.1 to 20 parts by weight of black pigment (black dye; paragraphs [0015] and [0042]), the metal oxide nanoparticles and black pigment (dye) being mixed with the curable polymer and curable monomers (claim 15). 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 17, Yamamoto 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 (paragraph [0034]). 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 18, Yamamoto discloses the curable monomers exhibit one or several reactive groups, selected from the group consisting of epoxy, glycidyl, vinyl, allyl, acrylate, methacrylate and combinations thereof (paragraph [0034]).
Regarding claim 21, Yamamoto discloses black pigment in concentration of 0.1 to 10%, calculated from the total weight of the composition excluding solvent (paragraph [0042]).
Regarding claim 22, Yamamoto discloses the composition further comprising a solvent to modify the viscosity of the composition, the solvent optionally also being capable of dissolving the black pigment (paragraphs [0043-0047] and [0058]).
Regarding claim 23, Yamamoto discloses the solids content of the composition is 60 to 100% by weight, wherein a remainder of the composition comprises a solvent (paragraphs [0036], [0038], [0042] and [0047]).
Regarding claim 24, Yamamoto discloses the composition further comprising 0.1 to 25% of the total weight of the composition of a photopolymerization initiator or a combination of photopolymerization initiators (paragraphs [0049-0050]).
Regarding claim 25, Yamamoto 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 (paragraphs [0054-0055]).
Regarding claim 26, Yamamoto 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 [0017]; claim 9).
Regarding claim 27, Yamamoto discloses a composition (light shielding film) comprising 1 to 15 parts by weight of the curable polymer (paragraph [0034]), 10 to 40 parts by weight of the curable monomers (paragraph [0034]), 50 to 100 parts by weight of the metal oxide nanoparticles (paragraph [0038]), and 0.1 to 20 parts by weight of the black pigment (black dye; paragraphs [0015] and [0042]), and optionally 0.1 to 50% of a solvent, calculated from the total weight of the composition (paragraph [0047]).
Regarding claim 28, Yamamoto discloses the composition comprising less than 5% of a solvent, calculated from the total weight of the composition (paragraph [0047]).
Regarding claim 29, Yamamoto discloses an optical substrate comprising a black coating according to claim 1 (paragraphs [0071-0073]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/
Primary Examiner, Art Unit 1781