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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12, in the reply filed on 3/26/206 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine all claims together. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in page 4 of the previous Office Action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/26/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/848,073, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, present claim 1 recites an organic matrix-based material “coated with at least one layer comprising an amorphous fluoropolymer having patterned sub-wavelength features configured such that the features align with a light emission surface of an optoelectronic device.” Although the prior-filed application discloses an organic matrix-based material coated with at least one layer comprising an amorphous fluoropolymer, there is no prior disclosure of the at least one layer “having patterned sub-wavelength features configured such that the features align with a light emission surface of an optoelectronic device” as claimed. Accordingly, the claimed subject matter is not entitled to the benefit of the prior application
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 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites an optoelectronic device comprising an organic matrix-based material “coated with at least one layer comprising an amorphous fluoropolymer having patterned sub-wavelength features configured such that the features align with a light emission surface of an optoelectronic device.” 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 optoelectronic devices within the scope of the claims can be used as claimed and whether the claims 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).
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 claim 1 encompasses any possible patterned features of any dimension because “sub-wavelength” is overly broad and encompasses all possible wavelengths (see rejection under 35 USC 112, incorporated herein by reference) and broadly any possible “align[ment]” of the features (factor (a)). Additionally, the specification provides no guidance for how to pattern or provide a pattern of sub-wavelength features at all, let alone how to align them with a light emission surface (factors (f) and (g)). The specification teaches at page 4, line 30+ that the fluoropolymer can be deposited by conventionally known methods, including dip-coating, spin-coating, spray-coating, etc. Such methods, however, would not appear to result in the claimed patterned sub-wavelength features. In reviewing the specification, the examiner finds the only description of any “pattern” or “pillars” or “nano-structure” (“features”) occurs at page 5, lines 27-31 and at page 14, line 26 through page 15, line 9, reproduced below with screenshots to recreate formulas:
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Additionally, Figure 3 depicts an array of squares:
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(The description of “figure 4” in page 15, lines 7-9 appears to be a typographical error that should be “figure 3” because no figure 4 has been filed.) Thus, there is no description of how to provide patterned sub-wavelength features or how to align such features with a light emission surface of an optoelectronic device. Importantly, even though the specification discloses “pillars,” there is no description of how such features are formed and there is no indication that the conventional coating techniques (e.g., spin-coating) would naturally arrive at such features. In view of the guidance to use conventional coating techniques which would not necessarily provide the patterned features and no further guidance as to how to provide the patterned features, one of ordinary skill would not readily arrive at an optoelectronic device as claimed without significant experimentation (factors (b), (c), (d), (h)). Additionally, to achieve the claimed invention with the limited guidance provided in the specification would require testing various methods of patterning 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 1-12.
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 1-12 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.
Claim 1 recites “patterned sub-wavelength features”. This phrase renders the claim indefinite because it is not clear what is meant or encompassed by the phrase. In view of the overall claimed “optoelectronic device”, the phrase is interpreted to refer to an optical, or electromagnetic, wavelength. Without further limitation, however, such wavelengths range from greater than 0 to infinity (i.e., there is no upper limit for wavelengths). Therefore, the claim appears to encompass patterned features having any possible dimension. For example, patterned features having a dimension of 10 mm would be less than (“sub-“) a 1 m wavelength; patterned features having a dimension of 1 m would be less than a 100 m wavelength; etc. It is unclear if the phrase is intended to refer to specific wavelengths or other defining features rather than the entirety of the electromagnetic spectrum. Dependent claims are rejected for the same reason.
For claim(s) 2-3, 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).
Claim 2 recites the broad recitation “a refractive index between 1.3 to 1.4”, and the claim also recites “particularly between 1.34 to 1.35” which is the narrower statement of the range/limitation.
Claim 3 recites the broad recitation “linear expansion coefficient of >50 ppm/K”, and the claim also recites “preferably >70 ppm/K” which is the narrower statement of the range/limitation.
Claim(s) 2-3 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 each claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 contains the trademark/trade names Teflon AF and Cytop. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the fluoropolymer and, accordingly, the identification/description is indefinite.
Claim 6 recites the limitation "the fluoropolymer coating" in line 2. There is insufficient antecedent basis for this limitation in the claim. Parent claim 1 describes an organic matrix-based material that is “coated with at least one layer comprising an amorphous fluoropolymer”. Claim 6 omits the “amorphous” feature and further makes it unclear if “the coating” is the same as “the at least one layer”.
Claim 9 recites “high or low refractive index nanoparticles.” The terms “high” and “low” are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear which values are considered “high” and which values are considered “low”.
Claim 10 recites the limitation "the fluoropolymer coating" in line 2. There is insufficient antecedent basis for this limitation in the claim. Parent claim 1 describes an organic matrix-based material that is “coated with at least one layer comprising an amorphous fluoropolymer”. Claim 6 omits the “amorphous” feature and further makes it unclear if “the coating” is the same as “the at least one layer”.
Claim 11 recites “The optoelectronic device according to claim 1, comprising more than one coated layer of fluoropolymer”. The claim is indefinite because it is not clear if refers to the “at least one layer comprising an amorphous fluoropolymer” recited in claim 1 or if it refers to newly recited additional layers. Additionally, if it does refer to the at least one layer recited in claim 1, it is not clear where the coating is positioned (e.g., must the additional layers be on the organic matrix-based material?). Furthermore, it is unclear if the additional coated layers also have “patterned sub-wavelength features configured such that the features align with a light emission surface of an optoelectronic device” as described in claim 1.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5, several lines, each polymer name (not tradenames) should be lower case (e.g., “Poly” should be “poly”).
Claim 5, line 7, “Poly/tetrafluoro-” should be “poly(tetrafluoro-”.
Claim 5, lines 1-2, “the fluoropolymer” should be “the amorphous fluoropolymer”.
Appropriate correction is required.
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.
Claim(s) 1-3, 5-6, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Brien (US 2006/0134323).
Regarding claim 1:
O’Brien discloses a display (optoelectronic device) comprising a substrate and a patterned amorphous fluoropolymer film [abstract; 0001-0004; 0017-0018]. The substrate comprises any of various polymers (organic matrix) [0018]. The patterns can have virtually any shape and the film can have essentially any thickness [0019-0021; 0038]. Therefore, the pattern has features of some dimension, which are encompassed by any “sub-wavelength” of the present claim (see rejection under 35 USC 112).
Regarding claims 2-3 and 5:
O’Brien teaches fluoropolymers include those presently claimed, including polychlorotrifluoroethylenes, polytetrafluoroethylenes, etc., including those sold under the tradenames TEFLON AF and CYTOP [0026; 0047]. The examiner submits each material disclosed by O’Brien that is the same as a material used in the present invention separately has properties of refractive index and linear expansion coefficient falling within the scope of the present claims because they are otherwise the same materials as used in the present invention.
Regarding claim 6:
O’Brien teaches the amorphous fluoropolymer film is antireflective [0014].
Regarding claim 10:
O’Brien teaches the fluoropolymer layer is essentially any thickness and provides several example ranges, including a range of 80-120 nm [0038].
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.
Claim(s) 4, 7-8, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien (US 2006/0134323) in view of Engl et al. (US 2011/0266576).
Regarding claims 4, 7-8, and 12:
O’Brien discloses a display (optoelectronic device) as previously explained. The layer of fluoropolymer can be applied to a variety of optical substrates [0018].
O’Brien is silent with regard to a semiconductor body or an organic matrix-based material comprising polysiloxane and converter particles as presently claimed.
Such features were known in the art to have utility. For example, Engl discloses an optoelectronic device comprising a light emitting semiconductor chip and a converter element, which converts light into different wavelengths, including blue light into yellow light [abstract; 0001-0005]. The converter element comprises silicone and converter particles [0007; 0027].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the fluoropolymer coating of O’Brien to other known optical articles, including the optoelectronic device taught by Engl, to provide the combination of properties taught by the references (e.g., antireflection, light emission, and wavelength conversion).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien (US 2006/0134323) in view of Garditz et al. (US 2007/0114520).
Regarding claim 9:
O’Brien discloses a display (optoelectronic device) as previously explained. The layer of fluoropolymer can be applied to a variety of optical substrates [0018].
O’Brien is silent with regard to an organic matrix-based material comprising “high or low” refractive index nanoparticles as claimed.
Such features were known in the art to have utility. For example, Garditz discloses a radiation emitting device, such as an OLED [abstract; 0002; 0018]. The device comprises a radiation out-coupling material comprising a polysilsesquioxane (organic matrix) and inorganic nanoparticles [0005-0016]. The nanoparticles have a refractive index higher than the matrix to provide scattering (diffusing) of the radiation [0020-0022].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the fluoropolymer coating of O’Brien to other known optical articles, including the optoelectronic device taught by Garditz, to provide the combination of properties taught by the references (e.g., antireflection, light emission, and radiation out-coupling).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien (US 2006/0134323).
Regarding claim 11:
O’Brien discloses a display (optoelectronic device) as previously explained. O’Brien teaches multiple layers of fluoropolymer, including those having different compositions, can be built up as desired [0019; 0022]. The reference further teaches layers of fluoropolymer can contain additional materials to provide a gradient change in refractive index [0013].
O’Brien does not explicitly describe multiple layers of fluoropolymer having differing refractive indexes.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use multiple layers of fluoropolymer and further use layers having different refractive indexes to provide a built-up film having a gradient in refractive indexes as suggested by O’Brien.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nilsen (US 2002/0044351) discloses a polarizer for liquid crystal displays [abstract; 0003-0004]. The polarizer comprises a subwavelength optical microstructure, such a linear moth-eye structure 12, formed in a plastic (organic matrix-based material) substrate 14 [0031; Fig. 1]. A further embodiment further provides a fill layer 44 comprising fluoropolymer to vary the reflection properties of the polarizer [0054; Fig. 14].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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