DETAILED ACTION
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee (US 20140307205).
Banerjee discloses an optical film comprising a plurality of polymeric layers. Concerning claim 1, Banerjee discloses the film is comprised of multiple stacks of alternating layers with spacer layers disposed between the multiple stacks, wherein the spacer layers provide an increase in strength for the film and the thickness of the spacer layers is such as to barely affect the optical properties and the stacks correspond to different bandwidths that do not overlap (para. 0040-0135; FIG. 1). Given that Banerjee discloses the thickness of the spacer layer is such as to barely affect the optical properties, it would have been obvious to one of ordinary skill in the art to have the claimed thickness values, average thickness, and differences thereof, in order to minimize the effects of the desired optical properties.
With respect to claim 2, given that the thickness of the spacer layers are adjusted as to not significantly affect the optical properties (para. 0043) and the thickness of each layer in the optical film affects the resulting optical properties (para. 0097-0107), it would have been obvious to one of ordinary skill in the art to have the claimed average thickness with respect to the layers disposed between the first and second spacer layers and the layers between the spacer thickness. Regarding claim 3, the spacer layer can be disposed between the first and second stacks and the second and third stack (para. 0041). The term “may be” implies that the scope of the disclosure of Banerjee includes those that do not have a spacer layer between the first and second stacks. As such, the embodiment as claimed would still be taught by the disclosure of Banerjee for the above reasons.
Concerning claims 4 and 5, each stack has at least 4 layers as shown in Figure 1, which would meet the limitations as claimed. Regarding claim 6, a HLHL structure meets the limitations, wherein it is noted that for the claimed ABCB, A and C are each the high index layer and B is the low index layer. Examiner notes that the claims do not differentiate between A and C and as such, they can be the same material and therefore, meet the limitations as claimed.
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12072519. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an optical film having overlapping thickness values with the claimed optical properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783