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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an adhesive film formed of an adhesive composition comprising nanoparticles having a core-shell structure composed of a core of polybutyl acrylate and shell of poly(methyl methacrylate) and having a weight ratio of the core to the shell of 7:3, and an index of refraction of 1.47 (and those recited in [0053], [0058], [0063]-[0064] of present specification), does not reasonably provide enablement for any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of nanoparticle. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 12-22 can be used as claimed and whether claims 12-22 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 12-22, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 12-22 read on any adhesive film formed of an adhesive composition comprising nanoparticles having a core-shell structure composed of a core of polybutyl acrylate and shell of poly(methyl methacrylate) and having a weight ratio of the core to the shell of 7:3, and an index of refraction of 1.47 (and those recited in [0053], [0058], [0063]-[0064] of present specification).
(b) There is no direction or guidance presented for any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of nanoparticle.
(c) There is an absence of working examples concerning any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of nanoparticle.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 12-22.
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.
Claim(s) 12-22 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 2016/0122600).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) 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 thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claims 12 and 13, Moon et al. teaches an adhesive film (paragraph [0003]) formed from an adhesive composition including a monomer mixture including a hydroxyl group-containing (meth)acrylate and a comonomer; and organic particles, the organic particles having an average particle diameter of about 10 nm to about 400 nm (See Abstract), wherein an amount of hydroxyl group-containing (meth)acrylate is about 5 wt % to about 40 wt % (paragraph [0015]). The hydroxyl group-containing (meth)acrylate may be a C.sub.1 to C.sub.20 alkyl group-containing (meth)acrylic acid ester having at least one hydroxyl group, a C.sub.5 to C.sub.20 cycloalkyl group-containing (meth)acrylic acid ester having at least one hydroxyl group, or a C.sub.6 to C.sub.20 aryl group-containing (meth)acrylic acid ester having at least one hydroxyl group (paragraph [0059]). The comonomer may include one or more of an alkyl (meth)acrylate monomer, an ethylene oxide-containing monomer, a propylene oxide-containing monomer, an amine group-containing monomer, an amide group-containing monomer, an alkoxy group-containing monomer, a phosphoric acid group-containing monomer, a sulfonic acid group-containing monomer, a phenyl group-containing monomer, or a silane group-containing monomer (paragraph [0014]). 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); see MPEP 2144.05.
Given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have a creep and storage modulus as presently claimed, absent evidence to the contrary. Further, Moon et al. teaches wherein the adhesive film may have a storage modulus of about 20 kPa to about 500 kPa at −20° C (paragraph [0018]).
Regarding claim 14, Moon et al. teaches the organic particles may be present in an amount of about 0.1 parts by weight to about 15 parts by weight based on 100 parts by weight of the monomer mixture (paragraph [0011]).
Regarding claim 15, given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have a creep as presently claimed, absent evidence to the contrary.
Regarding claim 16, given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have a T-peel strength as presently claimed, absent evidence to the contrary. Further, Moon et al. teaches wherein the adhesive film may have a T-peel strength of about 400 gf/in to about 4,000 gf/in, as measured at 25° C. with respect to a corona-treated polyethylene terephthalate film and a T-peel strength of about 200 gf/in to about 3,000 gf/in, as measured at 60° C. with respect to a corona-treated polyethylene terephthalate film (paragraphs [0021]-[0022]).
Regarding claim 17, given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have storage moduli as presently claimed, absent evidence to the contrary.
Regarding claim 18, given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have a T-peel strength as presently claimed, absent evidence to the contrary. Further, Moon et al. teaches wherein a ratio of storage modulus at 25° C. to storage modulus at −20° C. of the adhesive film may range from about 1:1 to about 1:4 (paragraph [0019]).
Regarding claim 19, given that Moon et al. teaches adhesive film comprising materials and structure including nanoparticles and amount of hydroxyl group-containing (meth)acrylate as presently claimed, the adhesive film would necessarily have a storage modulus difference as presently claimed, absent evidence to the contrary.
Regarding claim 20, Moon et al. teaches wherein the adhesive film may have a glass transition temperature of about 0° C. or less (paragraph [0016]).
Regarding claim 21, Moon et al. teaches wherein the adhesive film may have a thickness of about 100 μm and a haze of about 5% or less (paragraph [0023]).
Regarding claim 22, Moon et al. teaches a display member, including an optical film; and the adhesive layer formed on one or both surfaces of the optical film (paragraph [0033]).
Response to Arguments
Applicant’s arguments filed 08/05/82026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With respect to the 35 USC 112(a) rejection of record, Applicant argues that the specification describes suitable nanoparticle characteristics, including specific average particle sizes, specific refractive index differences relative to the copolymer, core-shell structures, relative glass transition temperatures, exemplary nanoparticle materials, and suitable concentration ranges.
However, the rejection of record is a scope of enablement rejection. That is, it is the Examiner’s position that while the claims are enabled for specific types of nanoparticles, as set forth on page 8 of Applicant’s Remarks, the claims are not enabled to broadly recite any nanoparticle.
More specifically, in In re Wands, the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying all these factors to the present invention, it is noted that the specification provides no direction or working examples (factors (f) and (g)) regarding adhesive comprising any type of nanoparticle. Furthermore, in view of the breadth of claim 1 (factor (a)) which encompasses adhesive comprising any type of nanoparticle, the quantity of experimentation (factor (h)) involved in order to reach a usable embodiment having the claimed properties would be great. Further, the claimed properties would not be readily arrived at for the full scope of nanoparticles as claimed by one having ordinary skill in the art without significant guidance (factors (b), (c), and (d)). Additionally, to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various nanoparticles without any apparent predictability (factor (e)).
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 12-22.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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