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 .
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 and 17 are rejected on the grounds of non-statutory double patenting as being unpatentable over Claims 1-20 (or specific claims thereof) of U.S. Patent No. 12,147,011 of Wako et al. (reference patent; see table below). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the elements of Claims 1-15 and 17 is met by corresponding claims from among Claims 1-20 of the patent of Wako, as correlated below.
Claim Number of Present Application
Claim Element(s) of the Present Application
Corresponding Claim Language of U.S. Patent No. 12,147,011 of Wako et al.
Notes
1
An optical laminate comprising:
Claims 1-20 recite (but see especially Claims 1 and 17): An optical laminate comprising
a transparent substrate
a transparent substrate and a resin coating provided on at least one surface of the transparent substrate
an adhesion layer provided on at least a surface of the transparent substrate
an adhesion layer provided on a surface of the resin coating
an optical layer provided on a surface of the adhesion layer on a side opposite to the transparent substrate
an optical layer provided on a surface of the adhesion layer on a side opposite to the transparent substrate
wherein, the adhesion layer is formed of a metal material
wherein, the adhesion layer is formed of a metal selected from the group consisting of Al and In
the adhesion layer has a thickness of 8 nm or less
the adhesion layer has a thickness of 1 nm or more and 8 nm or less
the metal material has a melting point in a range of 100°C or more and 700°C or less
metal selected from the group consisting of Al and In
2
wherein the transparent substrate is a resin film
Claims 1-20 recite (but see especially Claims 1, 11 and 17): resin coating … transparent substrate is a resin film
3
wherein the optical layer is an oxide layer
Claims 1-20 recite (but see especially Claims 1 and 17): the optical layer is an oxide layer … the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated, and one high refractive index layer formed of niobium oxide is provided
4
wherein the optical layer is an oxide layer
Claims 1-20 recite (but see especially Claims 1 and 17): the optical layer is an oxide layer … the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated, and one high refractive index layer formed of niobium oxide is provided
5
wherein the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
Claims 7-10, 13-15 and 17-20 recite (but see especially Claims 7, 13 and 17): wherein the optical layer is an alternate laminate having four or more layers in which high refractive index layers and low refractive index layers are alternately laminated … the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
6
wherein the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
Claims 7-10, 13-15 and 17-20 recite (but see especially Claims 7, 13 and 17): wherein the optical layer is an alternate laminate having four or more layers in which high refractive index layers and low refractive index layers are alternately laminated …the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
7
wherein the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
Claims 7-10, 13-15 and 17-20 recite (but see especially Claims 7, 13 and 17): wherein the optical layer is an alternate laminate having four or more layers in which high refractive index layers and low refractive index layers are alternately laminated … the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
8
wherein the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
Claims 7-10, 13-15 and 17-20 recite (but see especially Claims 7, 13 and 17): wherein the optical layer is an alternate laminate having four or more layers in which high refractive index layers and low refractive index layers are alternately laminated … the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated
9
wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
Claims 2, 6, 8, 10, 12-16 and 18 recite: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
10
wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
Claims 2, 6, 8, 10, 12-16 and 18 recite: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
11
wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
Claims 2, 6, 8, 10, 12-16 and 18 recite: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
12
wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
Claims 8, 10, 14 and 18 recite: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm
13
An article comprising the optical laminate according to claim 1
Claims 5 and 6 recite: An article comprising the optical laminate according to claim 1
14
An article comprising the optical laminate according to claim 2
Claims 5 and 6 recite: An article comprising the optical laminate according to claim 1
15
An article comprising the optical laminate according to claim 3
Claims 5 and 6 recite: An article comprising the optical laminate according to claim 1
17
An article comprising the optical laminate according to claim 9
Claim 6 recites: An article comprising the optical laminate according to claim 1
Claim Rejections - 35 USC § 102
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 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ono, US 2018/0148609 A1 (cited in the IDS of September 25, 2024).
Regarding Claim 1, Ono discloses: An optical laminate comprising (the Examiner notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a transparent substrate (matrix material 30 and hard coat layer 10 thereon, wherein matrix material 30 serves as a base or substrate of an anti-reflective film, and may include polyethylene terephthalate [PET], resin having an alicyclic structure in the main chain with cycloolefin as a monomer [COP], resin obtained by addition polymerization of cyclic olefin [for example, norbornenes] and α-olefin [for example, ethylene] [COC], and triacetyl cellulose [TAC], and wherein hard coat layer 10 is provided on an upper surface of matrix material 30, wherein hard coat layer 10 may comprise metal oxide particles 11 dispersed in a resin material, and may have high transparency; paragraphs [0021], [0022], [0039], [0040] and FIG. 3 of Ono);
an adhesion layer provided on at least a surface of the transparent substrate (adhesion layer 12 is provided on an upper surface of hard coat layer 10; FIG. 3 of Ono); and
an optical layer provided on a surface of the adhesion layer on a side opposite to the transparent substrate (an anti-reflective layer 40 may be provided on a surface [upper surface] of adhesion layer 12 which is opposite to matrix material 30; paragraphs [0037], [0039] and FIG. 3 of Ono); wherein,
the adhesion layer is formed of a metal material (adhesion layer 12 is constituted by a metal or metal oxide in an oxygen-deficient state [e.g., “x” may equal zero, where “x” represents oxygen content] of the same metal as the metal oxide particles 11, wherein the metal oxide particles may comprise alumina [Al2O3 / aluminum oxide]; Abstract and paragraphs [0031], [0035], [0039], [0058] and FIG. 3 of Ono);
the adhesion layer has a thickness of 8 nm or less (film thickness of adhesion layer 12 is preferably 1 to 10 nm; paragraphs [0036], [0041], [0069], [0075] and FIG. 3 of Ono); and
the metal material has a melting point in a range of 100°C or more and 700°C or less (adhesion layer 12 is constituted by a metal or metal oxide in an oxygen-deficient state [e.g., “x” may equal zero, where “x” represents oxygen content] of the same metal as the metal oxide particles 11, wherein the metal oxide particles may comprise alumina [Al2O3 / aluminum oxide], and thus adhesion layer 12 may be aluminum [Al], and wherein Applicant has identified aluminum [Al] as a metal material having a melting point between 100°C and 700°C; see Abstract and paragraphs [0031], [0035], [0039], [0058] and FIG. 3 of Ono; and see paragraphs [0037], [0040] on pages 13-16 of Applicant’s originally-filed specification).
Regarding Claim 2, Ono discloses the limitations of Claim 1 and further discloses: wherein the transparent substrate is a resin film (matrix material 30 may include polyethylene terephthalate [PET], resin having an alicyclic structure in the main chain with cycloolefin as a monomer [COP], resin obtained by addition polymerization of cyclic olefin [for example, norbornenes] and α-olefin [for example, ethylene] [COC], and triacetyl cellulose [TAC], and hard coat layer 10 may include any of several types of resins; paragraphs [0021], [0022], [0039], [0040] and FIG. 3 of Ono).
Regarding Claims 3 and 4, Ono discloses the limitations of Claim 1 and 2 and further discloses: wherein the optical layer is an oxide layer (the anti-reflective layer 40 may comprise a high refractive index layer and a low refractive index layer deposited in alternation by sputtering, wherein the high refractive index dielectric is preferably Nb2O5 or TiO2, and the low refractive dielectric is preferably SiO2; paragraph [0042] and FIG. 3 of Ono).
Regarding Claims 5-8, Ono discloses the limitations of Claims 1-4 and further discloses: wherein the optical layer is an alternate laminate in which high refractive index layers and low refractive index layers are alternately laminated (the anti-reflective layer 40 may comprise a high refractive index layer and a low refractive index layer deposited in alternation by sputtering, wherein the high refractive index dielectric is preferably Nb2O5 or TiO2, and the low refractive dielectric is preferably SiO2, and wherein four layers of anti-reflective layer 40 are explicitly shown in FIG. 3 of Ono; paragraphs [0042], [0069] and FIG. 3 of Ono).
Regarding Claims 13-16, Ono discloses the limitations of Claims 1-3 and 5 and further discloses: An article comprising the optical laminate according to claims 1-3 and 5 (the anti-reflective film may be used to improve scratch resistance, for example, in a touch panel, such as in a display device, e.g., smartphone or personal computer; paragraph [0044] of Ono).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
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 9-12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ono, or are unpatentable over Ono in view of Watanabe, US 2004/0076835 A1 (cited in the IDS of September 25, 2024).
Regarding Claims 9-12 and 17, Ono discloses the limitations of Claims 1-3, 5 and 9, and further discloses: that the layers of Ono are transmissive and may be incorporated into a transmissive article (see, e.g., paragraphs [0022], [0040], [0044] of Ono, noting that the disclosed anti-reflective film may be favorably used as a laminated film, for example, in a touch panel, and especially in an image display element such as a liquid crystal or organic EL display element, enabling incorporation into a smartphone or personal computer), however, Ono does not appear to disclose a specific numerical value of transmittance, such that: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955).
In the present case, the general conditions of the claim are disclosed in the prior art because Ono discloses a very low reflectance of 0.5%, wherein the purpose of such low reflectance is to prevent glare, but also to ensure a high transmittance because the laminate of Ono is favorably used as an upper layer in a display device, e.g., smartphone or personal computer, in which a maximum amount of light is desirably transmitted in order to be received by a person viewing the device (see, e.g., paragraphs [0044], [0069] of Ono).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a minimum transmittance, such as the claimed transmittance, for the laminate of Ono in accordance with routine optimization of an upper layer of a display device to ensure that most light of a display device reaches the viewer of the device, as evidenced by paragraphs [0044], [0069] of Ono.
Furthermore, Watanabe is related to Ono with respect to anti-reflection layers for display surface.
Watanabe teaches: wherein the optical laminate has a transmittance of 91% or more for light with a wavelength of 550 nm (anti-reflection film 11 having 95% transmissivity at 550 nm; paragraphs [0002], [0050], [0057], [0062], [0067] and TABLE 2 and FIG. 3 of Watanabe).
Thus, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the claimed high transmittance for the laminate of Ono because such transmittance values were in fact known for anti-reflective articles, and known to be desirable for displaying a high quality picture, as taught in paragraphs [0002], [0050], [0057], [0062], [0067] and TABLE 2 and FIG. 3 of Watanabe.
Examiner Note – Consider Entirety of References
Although various text and figures of the cited references have been specifically cited in this Office Action to show disclosures and teachings which correspond to specific claim language, Applicant is advised to consider the complete disclosure of each reference, including portions which have not been specifically cited by the Examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN S DUNNING whose telephone number is 571-272-4879. The examiner can normally be reached Monday thru Friday 10:30AM to 7:00PM Eastern Time Zone. 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, BUMSUK WON can be reached at 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872
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