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 .
This office action is responsive to the Amendment and Remarks filed 8 September 2025. Claims 1-7 remain pending and presently under consideration in this application.
Response to Amendment
The rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7-9 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicants have amended the base independent claim 1 as follows and argue that said amendment sufficiently distinguishes the liquid crystal composition of the present claims from that of the prior art of record:
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111
881
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The aforementioned amendment introduces new considerations as follows under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph.
Response to Arguments
Applicant's arguments filed 8 September 2025 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7-9 of the previous office action on the merits, are moot as the aforementioned rejections have been withdrawn.
Applicant's arguments filed 8 September 2025 in response to the rejection of claims under 35 U.S.C. 102(a)(1) over Hayashi et al. (JP 2019-11467), as set forth in paragraph 13 of the previous office action on the merits, said arguments to the effect that the invention as now claimed, i.e., reciting “provided that Z1 and Z2 in Formulae (Ar-1) to (Ar-5) each independently represent a hydrogen atom or a methyl group”, have been fully considered but they are not persuasive, as the scope of the protection sought is not clear.
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 1-7 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.
Amended claim 1 is rejected as being vague and indefinite when it recites “provided that Z1 and Z2 in Formulae (Ar-1) to (Ar-5) each independently represent a hydrogen atom or a methyl group”; the scope of the protection sought is not clear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “Z1, Z2, Z3, and Z4 each independently represent a hydrogen atom, a monovalent aliphatic hydrocarbon group having 1 to 20 carbon atoms, a monovalent alicyclic hydrocarbon group having 3 to 20 carbon atoms, a monovalent aromatic group having 6 to 18 π electrons, a halogen atom, a cyano group, a nitro group, —OR7, —NR8R9, —SR10, —COOR11, or —COR12, where R7 to R12 each independently represent a hydrogen atom or an alkyl group having 1 to 6 carbon atoms, provided that Z1 and Z2, or Z3 and Z4 may be bonded to each other to form an aromatic ring”, and the amended claim also now recites “provided that Z1 and Z2 in Formulae (Ar-1) to (Ar-5) each independently represent a hydrogen atom or a methyl group” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Amended claim 1 fails to particularly point out and distinctly claim each of the substituents Z1 and Z2 in group represented by formula (Ar-4) in the claimed compound of formula (I-1).
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.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (Japanese Patent No. JP 2019-11467).
Hayashi et al. discloses a compound, the corresponding use thereof said compound in a polymerizable composition, the corresponding use thereof said polymerizable composition to form an optically anisotropic film, as well as the corresponding use thereof said optically anisotropic film to form an optical film and a polarizing plate, characterized in that said compound is inclusive of the compound of the present formula (I-1), as represented therein by the general formula
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78
769
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(p. 2) comprising groups inclusive of the present formulae (Ar-1) thru (Ar-5), as respectively represented therein by:
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330
248
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335
227
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(p. 2)
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326
541
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368
224
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(p.3), and more specifically, as represented therein by the compounds of the following formulae
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265
672
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(p. 18)
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673
826
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(p. 18) , as well as
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770
880
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(p. 19), wherein
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33
828
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155
828
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(p. 20), or
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34
828
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150
829
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(p. 22), or
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28
832
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130
827
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(p. 28).
Allowable Subject Matter
Claims rewritten to be limited to the compound of formula 12
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279
737
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would be allowable.
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 Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
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