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 15 January 2026, wherein claims 2 and 16-20 were canceled. Subsequently, claims 1 and 3-15 are pending and presently under consideration in this application.
Response to Amendment
The rejection of claims 16 and 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 7 and 8 of the previous office action on the merits, is hereby withdrawn in view of applicant’s cancellation of the same.
The rejection of claims 1 and 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 4 and 7 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicant’s amendments have failed to satisfactorily address the rejection of claims 1 and 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 5/6 and 8 of the previous office action on the merits.
Response to Arguments
Applicant's arguments filed 15 January 2026 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 5, 6 and 8 of the previous office action on the merits, said arguments to the effect that claims have been amended to satisfactorily address the rejections therein, have been considered, but are not persuasive. Please see paragraphs 11-16 for additional comments.
Applicant's arguments filed 15 January 2026 in response to the rejection of claims under 35 U.S.C. 102(a)(1) over Sato et al. as set forth in paragraph 12 of the previous office action on the merits, said arguments to the effect that Sato et al. fails to disclose that the liquid crystal composition is characterized by comprising a combination of a monofunctional polymerizable compound and a polyfunctional polymerizable compound, have been fully considered but they are not persuasive, as applicant’s arguments are not commensurate in scope with the claims as presently written.
Applicant's arguments filed 15 January 2026 in response to the rejection of claims on the ground of nonstatutory double patenting, as set forth in paragraph 14 of the previous office action on the merits, said arguments to the effect that said rejection “will be held in abeyance until any of the pending claims is deemed to be allowable”, have been fully considered but they are not persuasive.
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 and 3-15 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 “a liquid crystal composition including at least one polymerizable liquid crystal compound, wherein the polymerizable liquid crystal compound comprises a monofunctional polymerizable liquid crystal compound, the polymerizable liquid crystal compound further comprises a polyfunctional polymerizable liquid crystal compound”; 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, amended claim 1 recites the broad recitation “liquid crystal composition including at least one polymerizable liquid crystal compound”, and the amended claim also recites “wherein the polymerizable liquid crystal compound comprises a monofunctional polymerizable liquid crystal compound, the polymerizable liquid crystal compound further comprises a polyfunctional polymerizable liquid crystal compound” 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 the minimum number of polymerizable liquid crystal compounds required in the liquid crystal composition in line 2.
Amended claim 1 is rejected as being vague and indefinite when it recites “the polymerizable compound further comprises a polyfunctional polymerizable liquid crystal compound having two or more polymerizable groups”(emphasis added); the scope of the protection sought is not clear. Initially, how can the polymerizable compound ”further comprise” another compound? Amended claim 1 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal diffraction element, i.e., that the liquid crystal composition (of line 2) comprises a combination of at least one monofunctional polymerizable liquid crystal compound and at least one polyfunctional polymerizable liquid crystal compound. Also, a polyfunctional polymerizable liquid crystal compound by definition contains at least two polymerizable groups.
Amended claim 1 is rejected as being vague and indefinite when it recites “both of Expressions (1) and (2) are satisfied in an infrared absorbance spectrum of the optically-anisotropic layer when a measurement sample obtained by powdering the optically-anisotropic layer is measured by Fourier transform infrared spectroscopy” (emphasis added); the scope of the protection sought by an expression “satisfied in an infrared absorbance spectrum” by an arbitrary “measurement sample” is not clear. For convenience, the dictionary definition of satisfied is include with this office action. The claim is drawn to a liquid crystal diffraction element, and yet the expression(s) recited as limitation for the claimed element are based on (satisfied in ?) a (arbitrary) measurement sample obtained by powdering the optically-anisotropic layer and measuring the infrared absorbance spectrum. Claim 1 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal diffraction element.
Amended claim 1 is rejected as being vague and indefinite when it recites “where an area of a peak having a maximum absorption point in a range of 2200 cm-1 to 2230 cm-1 is represented by A (cm-1), an area of a peak having a maximum absorption point in a range of 1630 cm-1 to 1640 cm-1 is represented by B (cm-1)” (emphasis added); the scope of the protection sought is not clear. Claim 1 fails to particularly point out and distinctly claim the area of the peak in each of “A”, “B” and subsequently “Expression (1)” and “Expression (2)” for the claimed liquid crystal diffraction element, much less the contents of the claimed liquid crystal diffraction element.
Amended claim 1 is rejected as being vague and indefinite when it recites “a mass of the measurement sample is represented by M (mg)” (emphasis added); the scope of the protection sought is not clear. The arbitrary “a measurement sample” is “obtained” by “powdering the optically-anisotropic layer, and yet the claim is drawn to a liquid crystal diffraction element. Amended claim 1 is not a product by process claim, so as such the recited actions of obtaining, measuring, and/or powdering are not clear. Claim 1 fails to particularly point out and distinctly claim “M”, i.e., the mass of the measurement sample in each of “Expression (1)” and “Expression (2)” for the claimed liquid crystal diffraction element, much less the contents of the claimed liquid crystal diffraction element.
Amended claim 4 is rejected as being vague and indefinite when it recites “wherein Expression (3) is satisfied in the absorbance spectrum” (emphasis added), and “Expression (3)”; the scope of the protection sought is not clear, in part as the definition of the expression is based on a measurement obtained by powdering the optically-anisotropic layer and the claim itself is drawn to a liquid crystal diffraction element. Claim 1 fails to particularly point out and distinctly claim each of “A”, “M” and subsequently “Expression (3)” in the claimed liquid crystal diffraction element, much less the contents of the claimed liquid crystal diffraction element.
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 and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,271,096. Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a liquid crystal diffraction element and corresponding use thereof said liquid crystal diffraction element in each of an optical element containing a silicon oxide layer, an image display unit, a head-mounted display, a beam steering, and a sensor, characterized in that said liquid crystal diffraction element comprises an optically-anisotropic layer that is formed of a liquid crystal composition including a polymerizable liquid crystal compound which encompasses both a monofunctional polymerizable liquid crystal compound and a polyfunctional polymerizable liquid crystal compound, and chiral agent, wherein the optically-anisotropic layer has a liquid crystal alignment pattern in which an orientation of an optical axis derived from the polymerizable liquid crystal compound changes while continuously rotating in at least one in-plane direction.
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 and 3-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Sato et al. (WO 2022/050321 A1; for applicant’s convenience, reference is made to the English language equivalent U.S. Patent No. 12,271,096).
Sato et al. teaches a liquid crystal diffraction element and corresponding use thereof said liquid crystal diffraction element in each of an optical element containing a silicon oxide layer, an image display unit, a head-mounted display, a beam steering, and a sensor, characterized in that said liquid crystal diffraction element comprises:
an optically-anisotropic layer that is formed of a liquid crystal composition including a polymerizable liquid crystal compound, wherein said polymerizable liquid crystal compound is represented by formula I (column 31, line 63)
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56
681
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, which encompasses both a monofunctional polymerizable liquid crystal compound and a polyfunctional polymerizable liquid crystal compound, and chiral agent (column 34, line 10),
wherein the optically-anisotropic layer has a liquid crystal alignment pattern in which an orientation of an optical axis derived from the polymerizable liquid crystal compound changes while continuously rotating in at least one in-plane direction.
Sato et al. teaches that infrared light (column 22, line 65) may be used depending on the application for the liquid crystal diffraction element (column 22, line 48). Sato et al. discloses all the limitations of a claim except a property or function, i.e., comparable to the presently claimed Expressions, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Although Sato et al. does not specify the claimed Expressions, since a composition of matter is claimed, and Sato et al. discloses the claimed components as well as the fact that the optically-anisotropic layer of the liquid crystal diffraction element has a liquid crystal alignment pattern in which an orientation of an optical axis derived from the polymerizable liquid crystal compound changes while continuously rotating in at least one in-plane direction, it is asserted that the liquid crystal diffraction element of Sato et al. inherently possesses the recited Expressions, and that the claimed liquid crystal diffraction element lacks novelty, absent object evidence to the contrary. Assuming arguendo that the liquid crystal diffraction element of Sato et al. does not inherently possess the recited Expressions, then Sato et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the components therein with reasonable expectation of achieving the advantages generally taught therein, absent object evidence to the contrary.
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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737