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 1-3, in the reply filed on 27 April 2026, is acknowledged. The traversal is on the grounds that search and examination of both groups would not be an undue burden. This is not found persuasive because, as outlined in the Office Action mailed 27 February 2026, Groups I and II have acquired a separate status in the art in view of their different classification and due to their recognized divergent subject matter. A product and a process would require different fields of search as being drawn to different limitations and therefore having different terminology associated with them. Any one of these reasons are held to be sufficient to demonstrate a serious search burden. See MPEP § 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 27 April 2026.
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.
Claims 1-3 are rejected under 35 U.S.C. 112(a) as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without undue experimentation as to how the transparent protection film is configured to have the desired transmittance (paragraph 0040 of the instant specification), how the surface ductility is obtained or measured (paragraph 0041 of the instant specification), and the exact materials used (e.g., paragraph 0034 of the instant specification discloses mixed or doped metal oxides but not the extent of doping or proportions of the mixed metals), or the sequence of multiple metal oxide nanolayers (e.g., whether the multilayer disclosed in paragraph 0028-0031 of the instant specification are the same or different material layers), which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Claims 1-3 recites limitations that are disclosed verbatim in the instant specification but without additional enabling details as outlined above. The instant specification does not provide sufficient details for how to configure the transparent protective film to have the desired transmittance, to obtain the instantly claimed surface ductility, or what exact materials are used for comparison to determine if the properties are necessarily present in prior art. Furthermore, it is not clear what the applicant considers to be the inventive aspects as the instant application discloses that the bendable display device is fabricated based on materials and techniques which are commercially available (paragraph 0032 of the instant specification).
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.
The factual inquiries 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (US 10,151,024) in view of Chaturvedi et al. (US 2016/0154508) and in view of Tatami et al. (US 2011/0177314).
Claim 1: Ueda teaches transparent conductive films in which a transparent electrode layer formed of a conductive oxide such as indium tin oxide (ITO) is formed on a transparent substrate are widely used for a touch panel (i.e. a display device, understood to be configured to display visual images) (Col. 1, l. 12-19). The transparent substrate is preferably colorless and transparent in a visible light region and has flexibility so that the transparent electrode layer can be deposited by a roll-to-roll method (Col. 5, l. 5-21) (i.e. a bendable display device since the substrate is flexible). The transparent electrode layer is a stack of an underlying conductive layer and a main conductive layer, each being an indium-tin composite oxide thin-film, wherein the underlying conductive layer has a thickness of 0.5 nm to 4 nm and the main conductive layer has a thickness of 8 nm to 25 nm (Col. 5, l. 55-67). The transparent electrode layer is formed using a roll-to-roll sputtering apparatus including three or more deposition chambers (Col. 6, l. 1-24) (i.e. a multi-layered metal oxide nanostructure due to being deposited in multiple chambers and having a thickness in the nanometer range). The thickness of these layers, even for multiple layers, as outlined above, overlaps the instantly claimed range of a thickness of less than 1000 nm. The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. However, although the transparent film substrate is preferably colorless, transparent, and has durability and flexibility (Col. 5, l. 5-21), Ueda does not teach the substrate to be a flexible glass material.
In a related field of endeavor, Chaturvedi teaches touch displays are typically built using multiple films and attached to a display device (paragraph 0003). The touch component may be applied to a flexible glass substrate and include a transparent conductor material such as indium tin oxide (paragraph 0057) (i.e. the display device includes a display glass panel that comprises flexible glass materials). The flexible glass substrate may have a thickness of about 0.3 mm or less, including for example about 0.01-0.05 mm etc., which may be produced in a fusion process because such glass sheets have surfaces with superior flatness and smoothness (paragraph 0055). Use of thin flexible glass substrates allows for continuous roll-to-roll processing (paragraph 0065). Chaturvedi further teaches that a flexible glass substrate can be advantageous over standard polymer substrates for higher processing temperatures, nearly zero birefringence, and neutral color (paragraph 0054).
As Ueda and Chaturvedi both teach a transparent conductive film of indium tin oxide on a transparent substrate for a touch panel/display, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the touch panel of Ueda by substituting the transparent substrate to be a flexible glass substrate as taught by Chaturvedi because a thin flexible substrate both allows for roll-to-roll processing and higher processing temperatures and has nearly zero birefringence over polymer substrates, and one would have had a reasonable expectation of success. However, these references do not teach the transparent conductive film of indium tin oxide as being a protection film or suggest the film as having ductility.
In a related field of endeavor, Tatami teaches a transparent conductive film used for an electrode of a touch panel (paragraph 0001). Tatami teaches the transparent conductive film should have excellent pen sliding durability as not to cause damages such as cracks and peeling (paragraph 0003). The transparent conductive oxide preferably contains indium oxide as a main component and 0.5-8% tin oxide (i.e. indium tin oxide) (paragraph 0047), and should have a thickness of 10 to 200 nm (paragraph 0048). Thicker films lower the total light transmittance, whereas the total light transmittance is preferably 60-95%, which overlaps the instantly claimed range. See MPEP § 2144.05. Tatami teaches the transparent conductive oxide as mainly crystalline with a low coefficient of variation of a circle-equivalent diameter of crystal grains so that the force from a sliding pen becomes even and therefore suppresses cracking or whitening (paragraph 0044). Suppressed cracking is considered to teach a desirable amount of surface ductility and being a transparent protection film.
As Ueda, Chaturvedi, and Tatami all teach a transparent conductive oxide of indium tin oxide for a touch panel/display, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the touch panel of Chaturvedi-modified Ueda to include where the indium tin oxide is deposited to be mainly crystalline with a low coefficient of variation of diameter of crystal grains so that the transparent conductive oxide has excellent pen sliding durability (i.e. has surface ductility and is a protection film) as taught by Tatami, and one would have had a reasonable expectation of success. Furthermore, the thickness of the layers of indium tin oxide taught by Ueda overlaps the thickness taught by Tatami as having a transmittance that overlaps the instantly claimed range, and therefore is considered to have a substantially identical transmittance. These references do not teach a specific surface ductility of bending radius, but these properties are considered to be present in the touch panel of Tatami-modified Chaturvedi-modified Ueda because the materials and structure are substantially identical to the display device of the instant application, as outlined above, and substantially identical materials have substantially identical properties. See MPEP § 2112.01.
Claim 2: Ueda teaches the transparent electrode layer is a stack of an underlying conductive layer and a main conductive layer, each being an indium-tin composite oxide thin-film, wherein the underlying conductive layer has a thickness of 0.5 nm to 4 nm and the main conductive layer has a thickness of 8 nm to 25 nm (Col. 5, l. 55-67). Chaturvedi teaches the touch component may be applied to a flexible glass substrate and include a transparent conductor material such as indium tin oxide (paragraph 0057). Tatami teaches the transparent conductive oxide preferably contains indium oxide as a main component and 0.5-8% tin oxide (i.e. indium tin oxide) (paragraph 0047).
Claim 3: Ueda teaches that the transparent electrode layer can be deposited by a roll-to-roll method (Col. 5, l. 5-21), and Chaturvedi teaches that use of thin flexible glass substrates allows for continuous roll-to-roll processing (paragraph 0065). Roll-to-roll processing is considered to be fabricating by in-situ deposition. It is noted that the limitations recited in claim 3 are product-by-process limitations and are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP § 2113.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ahn et al. (US 2023/0209872) teaches a flexible display device capable of folding or rolling without breaking and having a thin film glass layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784
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