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 .
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 (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.
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) 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Keeffe (U.S. 2018/0129080).
Regarding claim 6, O’Keeffe discloses a switchable light modulator (207, Fig. 7; page 4, para [0109]; page 7, para [0141]) having a first substrate (107, Fig. 7; page 7, para [0141]) and a second substrate (106, Fig. 7; page 7, para [0141]) with opposite major surfaces spaced apart by one or more polymer structures (71, Fig. 7; page 7, para [0140]; page 8, para [0155]), wherein the polymer structures (71, Fig. 7) comprise wall features (71a, Fig. 7; page 6, para [0139]) defining a plurality of cavities (83, Fig. 7; page 6, para [0139]) that contain a modulating fluid (10, Fig. 7; page 6, para [0132]; page 1, para [0010]) in discrete volumes (Fig. 7; page 6, para [0132]),
wherein one or more cavities (83, Fig. 7) include a centrally-located post (71b, Fig. 7; page 6, para [0139]) with a recess (recess of 71b, Fig. 7) in the post (71b, Fig. 7), wherein the recess contains a cast part (1072, Fig. 7; page 7, para [0143]) that is bonded to the second substrate (106, Fig. 7; page 7, para [0143]).
Regarding claim 7, O’Keeffe discloses a switchable light modulator with all the limitations of claim 6 above and further discloses wherein the post (71b, Fig. 7) is optically transparent (since microstructure 71 can be transparent with refractive index matching, Fig. 7; page 7, para [0140]; page 12, para [0188]) and the cast part (1072, Fig. 7) obscures light and includes a colorant (Fig. 7; page 12, para [0188]).
Regarding claim 8, O’Keeffe discloses a switchable light modulator with all the limitations of claim 6 above and further discloses wherein the switchable light modulator (207, Fig. 7) has a first state that strongly attenuates light (Fig. 7; page 4, para [0110]), and a second state that is substantially transparent to visible light (Fig. 7; page 4, para [0110]).
Regarding claim 9, O’Keeffe discloses a switchable light modulator with all the limitations of claim 6 above and further discloses wherein the modulating fluid (10, Fig. 7; page 6, para [0132]; page 1, para [0010]) includes electrophoretic particles (page 8, para [0149]).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,147,108. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
[AltContent: textbox (Claim 3 of U.S. Patent 12,147,108 discloses:
A method of making a switchable light modulator comprising:
providing a first substrate including a first major surface;
coupling a polymer film to the first major surface;
embossing the polymer film to create a plurality of cavities, wherein the embossing process creates a polymer wall structure surrounding each cavity, the polymer wall structure having a top and a bottom wherein the top of the polymer wall structure includes a mould part defining a recess along the top of the polymer wall structure, and wherein the embossing process also creates a peripheral edge seal including the polymer wall structure having the mould part;
providing a modulating fluid in discrete volumes within the plurality of cavities and adjacent the peripheral edge seal;
depositing a fluid pre-cursor in the recess of the polymer wall structure;
disposing a second substrate having a second major surface atop the polymer wall structure of the cavities and the peripheral edge seal such that the second major surface contacts the fluid pre-cursor;
curing the fluid pre-cursor, thereby sealing the cavities and the peripheral edge seal to the second major surface; and
wherein disposing the second substrate further includes compressing the polymer wall structure between the first and second substrates with a roller.)][AltContent: textbox (Claim 1 of Application 18/921,090 discloses:
A method of making a switchable light modulator comprising:
providing a first substrate including a first major surface;
coupling a polymer film to the first major surface;
embossing the polymer film to create a plurality of cavities, wherein the embossing process creates a polymer wall structure surrounding each cavity, the polymer wall structure having a top and a bottom wherein the top of the polymer wall structure includes recesses along the top of the polymer wall structure;
providing a modulating fluid in discrete volumes within the plurality of cavities;
depositing a fluid pre-cursor in the recess of the polymer wall structure;
disposing a second substrate having a second major surface atop the polymer wall structure of the cavities wherein the second major surface contacts the fluid pre-cursor;
compressing the polymer wall structure between the first and second substrates with a roller; and
curing the fluid pre-cursor, thereby sealing the cavities.)]
Therefore, Claim 1 of Application 18/921,090 is disclosed in Claim 3 of U.S. Patent 12,147,108.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,147,108 in view of O’Keeffe (U.S. 2018/0129080) because of the following reasons:
[AltContent: textbox (Claim 2 of U.S. Patent 12,147,108 discloses:
The method of making a switchable light modulator of claim 1, wherein curing the fluid pre-cursor comprises heating the fluid pre-cursor or exposing the fluid pre-cursor to UV light.)][AltContent: textbox (Claim 2 of Application 18/921,090 discloses:
The method of making a switchable light modulator of claim 1, wherein curing the fluid pre-cursor comprises heating the fluid pre-cursor or exposing the fluid pre- cursor to UV light.)]
Claim 2 of U.S. Patent 12,147,108 does not expressly disclose compressing the polymer wall structure between the first and second substrates with a roller. However, O’Keeffe discloses a method of making a switchable light modulator (203, Fig. 3; page 4, para [0109]; page 5, para [0128]) comprising a step of compressing a polymer wall structure (70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) between first and second substrates (101 and 100, Fig. 3; page 6, para [0132]) with a roller (Fig. 3; page 6, para [0134]) in order to seal a plurality of cavities (80, Fig. 3; page 6, para [0133]) and to remove excess fluid from the cavities (Fig. 3; page 6, para [0134]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the method of making a switchable light modulator of Claim 2 of U.S. Patent 12,147,108 with the step of compressing a polymer wall structure (O’Keeffe: 70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) of O’Keeffe between first and second substrates (O’Keeffe: 101 and 100, Fig. 3; page 6, para [0132]) with a roller (O’Keeffe: Fig. 3; page 6, para [0134]) in order obtain the benefits of sealing the plurality of cavities (O’Keeffe: 80, Fig. 3; page 6, para [0133]) of U.S. Patent 12,147,108 and to remove excess fluid from the cavities (O’Keeffe: Fig. 3; page 6, para [0134]) as taught by O’Keeffe (page 6, para [0134]). Therefore, Claim 2 of Application 18/921,090 is disclosed in Claim 2 of U.S. Patent 12,147,108 in view of O’Keeffe (U.S. 2018/0129080).
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,147,108 in view of O’Keeffe (U.S. 2018/0129080) because of the following reasons:
[AltContent: textbox (Claim 4 of U.S. Patent 12,147,108 discloses:
The method of making a switchable light modulator of claim 1, wherein the polymer film is optically transparent.)][AltContent: textbox (Claim 3 of Application 18/921,090 discloses:
The method of making a switchable light modulator of claim 1, wherein the polymer film is optically transparent.)]
Claim 4 of U.S. Patent 12,147,108 does not expressly disclose compressing the polymer wall structure between the first and second substrates with a roller. However, O’Keeffe discloses a method of making a switchable light modulator (203, Fig. 3; page 4, para [0109]; page 5, para [0128]) comprising a step of compressing a polymer wall structure (70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) between first and second substrates (101 and 100, Fig. 3; page 6, para [0132]) with a roller (Fig. 3; page 6, para [0134]) in order to seal a plurality of cavities (80, Fig. 3; page 6, para [0133]) and to remove excess fluid from the cavities (Fig. 3; page 6, para [0134]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the method of making a switchable light modulator of Claim 4 of U.S. Patent 12,147,108 with the step of compressing a polymer wall structure (O’Keeffe: 70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) of O’Keeffe between first and second substrates (O’Keeffe: 101 and 100, Fig. 3; page 6, para [0132]) with a roller (O’Keeffe: Fig. 3; page 6, para [0134]) in order obtain the benefits of sealing the plurality of cavities (O’Keeffe: 80, Fig. 3; page 6, para [0133]) of U.S. Patent 12,147,108 and to remove excess fluid from the cavities (O’Keeffe: Fig. 3; page 6, para [0134]) as taught by O’Keeffe (page 6, para [0134]). Therefore, Claim 3 of Application 18/921,090 is disclosed in Claim 4 of U.S. Patent 12,147,108 in view of O’Keeffe (U.S. 2018/0129080).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,147,108 in view of O’Keeffe (U.S. 2018/0129080) because of the following reasons:
[AltContent: textbox (Claim 5 of U.S. Patent 12,147,108 discloses:
The method of making a switchable light modulator of claim 1, wherein the modulating fluid includes electrophoretic particles, liquid crystals, a combination of polar and non-polar liquids, an electrochromic fluid, a thermochromic fluid, or a photochromic fluid.)][AltContent: textbox (Claim 4 of Application 18/921,090 discloses:
The method of making a switchable light modulator of claim 1, wherein the modulating fluid includes electrophoretic particles, liquid crystals, a combination of polar and non-polar liquids, an electrochromic fluid, a thermochromic fluid, or a photochromic fluid.)]
Claim 5 of U.S. Patent 12,147,108 does not expressly disclose compressing the polymer wall structure between the first and second substrates with a roller. However, O’Keeffe discloses a method of making a switchable light modulator (203, Fig. 3; page 4, para [0109]; page 5, para [0128]) comprising a step of compressing a polymer wall structure (70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) between first and second substrates (101 and 100, Fig. 3; page 6, para [0132]) with a roller (Fig. 3; page 6, para [0134]) in order to seal a plurality of cavities (80, Fig. 3; page 6, para [0133]) and to remove excess fluid from the cavities (Fig. 3; page 6, para [0134]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the method of making a switchable light modulator of Claim 5 of U.S. Patent 12,147,108 with the step of compressing a polymer wall structure (O’Keeffe: 70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) of O’Keeffe between first and second substrates (O’Keeffe: 101 and 100, Fig. 3; page 6, para [0132]) with a roller (O’Keeffe: Fig. 3; page 6, para [0134]) in order obtain the benefits of sealing the plurality of cavities (O’Keeffe: 80, Fig. 3; page 6, para [0133]) of U.S. Patent 12,147,108 and to remove excess fluid from the cavities (O’Keeffe: Fig. 3; page 6, para [0134]) as taught by O’Keeffe (page 6, para [0134]). Therefore, Claim 4 of Application 18/921,090 is disclosed in Claim 5 of U.S. Patent 12,147,108 in view of O’Keeffe (U.S. 2018/0129080).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,147,108 in view of O’Keeffe (U.S. 2018/0129080) because of the following reasons:
[AltContent: textbox (Claim 6 of U.S. Patent 12,147,108 discloses:
The method of making a switchable light modulator of claim 1, wherein the first substrate or the second substrate comprises a flexible transparent material.)][AltContent: textbox (Claim 5 of Application 18/921,090 discloses:
The method of making a switchable light modulator of claim 1, wherein the first substrate or the second substrate comprises a flexible transparent material.)]
Claim 6 of U.S. Patent 12,147,108 does not expressly disclose compressing the polymer wall structure between the first and second substrates with a roller. However, O’Keeffe discloses a method of making a switchable light modulator (203, Fig. 3; page 4, para [0109]; page 5, para [0128]) comprising a step of compressing a polymer wall structure (70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) between first and second substrates (101 and 100, Fig. 3; page 6, para [0132]) with a roller (Fig. 3; page 6, para [0134]) in order to seal a plurality of cavities (80, Fig. 3; page 6, para [0133]) and to remove excess fluid from the cavities (Fig. 3; page 6, para [0134]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the method of making a switchable light modulator of Claim 6 of U.S. Patent 12,147,108 with the step of compressing a polymer wall structure (O’Keeffe: 70, Figs. 2a and 3; page 5, para [0129]; page 8, para [0155]) of O’Keeffe between first and second substrates (O’Keeffe: 101 and 100, Fig. 3; page 6, para [0132]) with a roller (O’Keeffe: Fig. 3; page 6, para [0134]) in order obtain the benefits of sealing the plurality of cavities (O’Keeffe: 80, Fig. 3; page 6, para [0133]) of U.S. Patent 12,147,108 and to remove excess fluid from the cavities (O’Keeffe: Fig. 3; page 6, para [0134]) as taught by O’Keeffe (page 6, para [0134]). Therefore, Claim 5 of Application 18/921,090 is disclosed in Claim 6 of U.S. Patent 12,147,108 in view of O’Keeffe (U.S. 2018/0129080).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL CHANG LEE whose telephone number is (571)270-7923. The examiner can normally be reached M-F 10am-6pm.
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/PAUL C LEE/Primary Examiner, Art Unit 2871
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