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 a monomer mixture of 4-hydroxybutyl acrylate (and those recited in [0029] of present specification) in an amount of 10-40% by weight and a comonomer of 2-ethylhexyl acrylate (and those recited in [0033] of present specification) in an amount of 60-90% by weight and 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 hydroxyl group-containing (meth)acrylate in any amount, any type of a comonomer in any amount, and 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 monomer mixture comprising any type of hydroxyl group-containing (meth)acrylate in any amount, any type of a comonomer in any amount, and any type of nanoparticle while the specification discloses an adhesive film formed of an adhesive composition comprising a monomer mixture of 4-hydroxybutyl acrylate (and those recited in [0029] of present specification) in an amount of 10-40% by weight and a comonomer of 2-ethylhexyl acrylate (and those recited in [0033] of present specification) in an amount of 60-90% by weight and 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 hydroxyl group-containing (meth)acrylate in any amount, any type of a comonomer in any amount, and 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 hydroxyl group-containing (meth)acrylate in any amount, any type of a comonomer in any amount, and 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 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 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.
Claims 12-22 are rejected under 35 U.S.C. 103 as obvious over Lee et al (US 2014/0162044).
Regarding claims 12, 13, and 14, Lee et al. teaches an adhesive film formed of an adhesive composition (See Abstract) comprising a copolymer of a monomer mixture comprising a hydroxyl group-containing (meth)acrylate and a comonomer (paragraphs [0068] and [0070]), wherein an amount of the hydroxyl group-containing (meth)acrylate could be 28.5-49.5% (See Table 1) which overlaps the claimed range of about 10 to about 40 wt %, wherein the adhesive composition further includes nanoparticles having an average particle diameter of about 100 nm to about 500 nm (about 0.1 µm to about 0.5 µm, paragraph [0047]) which overlaps the claimed range of about 10 nm to about 400 nm. Lee et al. further teaches wherein the nanoparticles are present in an amount of about 0.15 wt% to about 14.5 wt% based on the total weight of the adhesive film (paragraph [0082]) which based on the amount of 1 to 90 parts of the monomer mixture (paragraph [0077]) and, therefore, includes an amount of 0.16 to 16 parts by weight relative to 100 parts by weight of the monomer mixture (0.15*100/90 = 0.16 to 14.5*100/90=16) which overlaps the claimed range of about 0.1 parts by weight to about 10 parts by weight relative to 100 parts by weight of the monomer mixture. 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 Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit creep and storage modulus values as presently claimed, absent evidence to the contrary.
Regarding claim 15, given that Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit creep value as presently claimed, absent evidence to the contrary.
Regarding claim 16, given that Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit T-peel strength values as presently claimed, absent evidence to the contrary.
Regarding claims 17, 18, and 19, given that Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit storage modulus values, including ratio of storage modulus and difference of storage modulus, as presently claimed, absent evidence to the contrary.
Regarding claim 20, given that Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit glass transition temperature as presently claimed, absent evidence to the contrary.
Regarding claim 21, given that Lee et al. teach adhesive film comprising materials and structure identical to those presently claimed, as well as amounts that are identical to those used in the present invention, the adhesive film of Lee et al. would necessarily exhibit haze value as presently claimed, absent evidence to the contrary.
Regarding claim 22, Lee et al. teaches a display member comprising: an optical film; and the adhesive film according to claim 1 attached to one or both surfaces of the optical film (paragraph [0112]).
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 12-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,999,879. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose an adhesive film.
Regarding the present claims, the conflicting claims are identical aside from the specific types of monomers. However, regarding limitations recited in the patented claims not found in the present claims, these limitations are encompassed by the present claims given that the present claims use the open language of "comprising".
Conclusion
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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