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 .
Status of Claims
Claims 1-15 are pending.
Claim 4 is objected to because it has been deemed to contain allowable subject matter.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/9/2025 has been considered by the examiner.
Drawings
The drawings were received on 18 November 2024. These drawings are accepted.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4 is objected to for at least the reason that the prior art fails to teach or suggest that the first particles in the matrix are formed via phase separation of silicone polyoxamide from a solution of silicone polyoxamide and acrylate during solvent evaporation, as generally set forth in claim 4, the invention including the limitations recited in claim 1, from which claim 4 depends.
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 1-3 and 9-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an optical film wherein each of the matrix and the plurality of first particles comprises a silicone polyoxamide and an acrylate polymer, does not reasonably provide enablement for all optical films comprising a matrix and a plurality of first particles that meet the functional limitations of claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The breadth of independent claim 1 is such that any optical film comprising a matrix and a plurality of particles, the particles being at least slightly elongated, can meet the claimed structure of the claim. The state of the prior art is such that there are a wide variety of materials that can be used for a matrix and for particles. The present specification only provides for an optical film comprising silicone polyoxamide and an acrylate polymer (see at least page 1, lines 20-21). Lacking further working examples, one of ordinary skill in the art would be required to perform undue experimentation in order to determine which combination of matrix and particle materials can be used to obtain an optical film that meets the functional limitations of haze and depolarization ratio.
Claims 2-3 and 9-15 depend from claim 1 and thus inherit the deficiencies of claim 1.
The examiner notes that claim 4 requires specific materials for the matrix and particles and thus is enabled by the specification.
Claims 5-8 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 5 requires that each of the matrix and the plurality of first particles comprises an acrylic polymer. However, the specification only describes acrylate polymers being used for the matrix and particles (see at least page 1, lines 20-21). Acrylic polymers are described as being used for second particles/beads (see at least page 12, line 32) or for a substrate (see at least page 19, lines 12-15).
Claims 6-8 depend from claim 5, and therefore inherit the deficiencies of claim 5 through their dependencies.
Claim Rejections - 35 USC § 103
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 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.
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 1-2 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0068421 to Tse et al., made of record in the IDS filed 6/9/2026 (hereafter Tse).
Regarding claim 1, Tse discloses an optical film comprising a matrix and a plurality of first particles dispersed in the matrix (see at least paragraph [0007], where the light diffusive adhesive film comprises an adhesive matrix and light diffusing particles), such that in a cross-section of the optical film parallel to a thickness direction of the optical film, each first particle has a global maximum first dimension X1 along a first direction and a maximum second dimension X2 along an orthogonal second direction, X1 greater than X2 (see at least paragraph [0016], where the particles can be a variety of shapes, such as generally spherically shaped), wherein the haze value is not less than 20% and depolarization is less than about 10% (see at least the abstract).
Tse does not specifically disclose that X1 is greater than X2 by at least 10%.
However, it would have been obvious to one of ordinary skill in the art to modify the particles of Tse so that given dimensions X1 and X2, X1 is greater than X2 by at least 10% for the purpose of using particles that are generally spherically shaped.
[AltContent: oval][AltContent: oval]For demonstration purposes, the examiner has reproduced below a circle (1x1) alongside a shape that would be considered generally circular (1x1.1) with a difference in a first and second dimension of 10%.
Tse does not specifically disclose that for substantially normally incident light and for at least a first wavelength in a first wavelength range from about 400 nm to about 700 nm, the optical film has an optical haze and a depolarization ratio, a ratio of the depolarization ratio to the optical haze being less than about 0.1.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Among the benefits of a ratio of the depolarization ratio to the optical haze being less than about 0.1 include optimizing the light diffusion properties of the film while maintaining other properties of transmitted light, such as polarization.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical film of Tse so that for substantially normally incident light and for at least a first wavelength in a first wavelength range from about 400 nm to about 700 nm, the optical film has an optical haze and a depolarization ratio, a ratio of the depolarization ratio to the optical haze being less than about 0.1 for the purpose of optimizing the light diffusion properties of the film while maintaining other properties of transmitted light, such as polarization.
Additionally, it is noted that the claimed and prior art products are identical or substantially identical in structure or composition, as set forth in the claims. It is emphasized that "[w]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP § 2113; In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original, MPEP §2114). Specifically, the claim does not provide any structural features, such as any materials, which would distinguish the claim from the prior art in terms of structure rather than merely function.
Regarding claim 2, Tse discloses all of the limitations of claim 1.
Tse does not specifically disclose that the first directions of at least some of the first particles make oblique angles with at least one major surface of the optical film.
However, given a random assortment of first particles, one of ordinary skill in the art would expect that the first directions of at least some of the first particles make oblique angles with at least one major surface of the optical film.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical film of Tse so that the first directions of at least some of the first particles make oblique angles with at least one major surface of the optical film for the purpose of providing a random assortment of the first particles within the optical film.
Regarding claims 9-11, Tse discloses all of the limitations of claim 1.
Tse does not specifically disclose that the ratio of the depolarization ratio to the optical haze is less than about 0.05, or less than about 0.025, or between about 0.005 and about 0.01.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Among the benefits of a ratio of the depolarization ratio to the optical haze being less than about 0.05, or less than about 0.025, or between about 0.005 and about 0.01 include optimizing the light diffusion properties of the film while maintaining other properties of transmitted light, such as polarization.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical film of Tse so that for substantially normally incident light and for at least a first wavelength in a first wavelength range from about 400 nm to about 700 nm, the optical film has an optical haze and a depolarization ratio, a ratio of the depolarization ratio to the optical haze being less than about 0.05, or less than about 0.025, or between about 0.005 and about 0.01 for the purpose of optimizing the light diffusion properties of the film while maintaining other properties of transmitted light, such as polarization.
Regarding claim 12, Tse discloses all of the limitations of claim 1.
Tse also discloses that the optical haze is at least about 25% (see at least page 7, Table 1, where the haze % is greater than 25% for examples 1-11).
Regarding claims 13-15, Tse discloses all of the limitations of claim 1.
Tse also discloses that the depolarization ratio is less than about 5% or less than about 3% or less than about 2% (see at least page 7, Table 1, where the depolarization is 1% for example 5 and 3% for examples 1 and 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2006/0226562 to Johnson et al. discloses a diffuse reflective polarizing film with orientable polymer blends comprising a matrix and a plurality of first particles dispersed in the matrix, such that in a cross-section of the optical film parallel to a thickness direction of the optical film, each first particle has a global maximum first dimension X1 along a first direction and a maximum second dimension X2 along an orthogonal second direction, X1 greater than X2 by at least 10% (see at least Fig. 1 and paragraph [0086]).
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/A.W.B./ Examiner, Art Unit 2872
/Derek S. Chapel/ Primary Examiner, Art Unit 2872
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