DETAILED ACTION
An amendment, amending claim 1, was entered on 6/17/26.
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 .
Response to Arguments
Applicant argues that Nakayama does not teach combining a first solvent having a high solubility for the resin base material with a second solvent having a relatively low solubility for the base resin, as claimed. Applicant further argues that one of ordinary skill in the art would not have been motivated to have selected the claimed combination of solvents from the laundry list in Nakayama. This is not persuasive. Nakayama teaches that a wide variety of solvents are suitable including, e.g., diglyme, ethylene glycol monoethyl ether acetate, ethylene glycol monobutyl acetate, monohydric alcohols, higher alcohols and ether alcohols, and that two or more of these solvents can be used in combination. Thus, Nakayama teaches a list of solvents which substantially overlaps with the claimed solvents and explains that using multiple solvents is within the scope of their invention. A person of ordinary skill in the art would have been motivated to have selected two of these solvents as claimed. If applicant is able to show some unexpected results which stem from a specific selection of solvents having high solubility for the resin base and low solubility for the base resin, such evidence would be considered. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim Objections
Claims 10-12 are objected to because of the following informalities: claims 10-12 are designated as “(Original)”, but should be listed as “(Withdrawn)”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US 2016/0170094) in light of Akihito et al. (JP 2013203774, machine translation).
Claims 1, 3 and 7: Nakayama teaches an application liquid for treating an optical member (Abst.), comprising: silica particles having a size of 12-60 nm (¶ 0028); a silicate hydrolysis condensate (¶ 0038) and a mixture of solvents (¶ 0063), wherein the mixture of solvents is selected from a list of solvents including methanol and diglyme (diglyme has a higher boiling point, 162˚C, than methanol, 148˚C)(¶ 0063). Thus, because Nakayama teaches that the solvent can be a mixture of multiple solvents including methanol and diglyme, it would have been obvious to one of ordinary skill at the time of filing to have selected methanol and diglyme as the mixture of solvents.
Nakayama is silent regarding the ratio of first solvent to second solvent. Akihito teaches an application liquid for treating an optical member (Abst.) which includes silica chain particles, a silicate condensate and a mixture of solvents, such as an alcohol and a glycol ether (Abst.; p. 2). Akihito further explains that suitable mixtures of these solvents can range of 20-80 wt% glycol ether (Abst.). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 20-30 wt% diglyme in the liquid of Nakayama with the predictable expectation of success.
Nakayama teaches that the content of the condensate in the final product of 5-40 wt% (¶ 0040). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included 5-20 wt% condensate in the application liquid with the predictable expectation of success.
Claim 6: Nakayama teaches that the silica particles are chain particles (¶ 0033).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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