DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 17-32 in the reply filed on 9/15/2026 is acknowledged. The traversal is on the ground(s) that Applicant is intending to preserve rejoinder. This is not found persuasive because the independent claim is not found to be allowable.
The requirement is still deemed proper and is therefore made FINAL.
Claims 33-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/15/2026.
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 17-18, 22-23, 27, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogane (US 20130222916).
Ogane discloses an AR film. Concerning claim 17, Ogane discloses the AR film comprises a low refractive index film that has a refractive index of 1.27 and 1.28 (para. 0061, 0071, and 0082). As a note with respect to the first and second layers as claimed, Examiner notes that Example 1 of the instant application recites the low refractive index film having two layers is formed by a single spin coating step of a single composition and the boundary surface can be an actual one or imaginary boundary. Given that Ogane discloses a coating that is less than 200 nm and is produced by a single spin coating step, the resulting film would have the claimed first and second layers (para. 0036-0040 and Examples). The low refractive index film comprises a binder and hollow particles (FIG. 1; abstract, para. 0022-0032). Further, Ogane discloses the number density of the voids is 26 voids/µm2 for example (para. 0063) and the content of voids is from 5 to 25 vol% (para. 0035).
Concerning claim 22, the hollow particles have an average particle diameter of 15 nm to 100 nm, specifically 55 nm (Example 1; para. 0026). With respect to claims 23 and 27, the content of binder to hollow particles is from 0.2 to 0.8, wherein the content of binder is from 15 to 40 wt% and the content of hollow particles is from 50 to 85 wt% and the ratio is calculated from the above (para. 0037-0038). In regard to claim 32, the coated substrate is applied to an optical device, wherein the recitation of “optical device” would meet the limitations as claimed (para. 0086).
Claims 17 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makino et al. (EP 3373048).
Makino discloses an optical member comprises a substrate upon which a low refractive coating is disposed, wherein the coating has a refractive index from 1.21 to 1.27 and the optical member is a lens and the like (abstract; para. 0131).
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.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ogane (US 20130222916) in view of Makino et al. (EP 3373048).
Ogane discloses the above but is silent to the distribution structure of the voids as claimed.
Makino discloses an optical member comprising a coating comprising a plurality of chain particles and a binder, wherein the resulting coating has voids that are distributed such that the number of voids near the surface is less than that of the interior, resulting in a film that has excellent antifouling and antireflection effects (para. 0127-0129). As such, it would have been obvious to one of ordinary skill in the art to have a greater number of voids near the substrate, in order to have excellent antifouling and antireflection effects. With respect to claim 20, it would have been obvious to one of ordinary skill in the art to have the claimed ratio of the cross-sectional area of the voids in the first layer be greater than that of the second layer, in order to have excellent antifouling and antireflection effects as recited above.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ogane (US 20130222916).
Ogane discloses the above, including the thickness of the coating is up to 200 nm, resulting in a first layer thickness that can include and encompass the claimed range, given the above process is the same as that disclosed.
Claims 24 and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Ogane (US 20130222916) in view of Kamitani et al. (US 6465108).
Ogane discloses the above but is silent to the claimed substrate roughness and water contact angle and the underlayer as claimed.
Kamitani discloses a substrate coated with a silica basecoat. Concerning claims 24, 29, and 31, Kamitani discloses a substrate coated with a silica basecoat, resulting in a contact angle from 27° to 31° and a surface roughness of 0.1 to 0.5 nm (col. 7, lines 5-28; Table 2), wherein such a coated substrate allows for improved durability, hydrophilicity, and surface smoothness (cols. 2-7). As such, it would have been obvious to one of ordinary skill in the art to use the substrate of Kamitani as the substrate of Ogane, in order to take advantage to the above stated benefits. With respect to claim 30, since the roughness is the same as that claimed, the average roughness would be within the claimed range.
Claims 25-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Ogane (US 20130222916) in view of Kobori et al. (US 20170131439).
Ogane discloses the above, including the binder being selected depending upon the wear resistance, adhesive force, and environmental reliability which can be an alkoxysilane hydrolytic condensate, which can be considered to be the claimed silica (para. 0030). However, Ogane is silent to the claimed polysilsesquioxane and contents thereof.
Kobori discloses a low refractive index layer comprising at least 5.0 wt% polysilsesquioxane, wherein the polysilsesquioxane improves the strength of the coating (para. 0102-0103). Given that Ogane discloses the content of hollow particles are balanced with the content of the binder, in order to produce the refractive index (Ogane; para. 0032-0038) and Kobori discloses the content of polysilsesquioxane is at least 5 wt% for improving strength (Kobori; para. 0102-0103), one of ordinary skill in the art would have been motivated to have the claimed ratios and amounts, in order to produce a low refractive index layer that has improved strength with the desired refractive index.
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 17-24 and 29-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12181630. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a low refractive index layer having overlapping values of the claimed physical and optical properties.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12181630 in view of Ogane (US 20130222916). The claims disclose the addition of hollow particles but is silent to the claimed content of hollow particles. Ogane discloses the content of hollow particles is from 50 to 85 wt% to produce the void size and resulting refractive index (para. 0034-0038). As such, it would have been obvious to one of ordinary skill in the art to have the claimed range of hollow particles.
Claims 25-26 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12181630 in view of Ogane (US 20130222916) and Kobori et al. (US 20170131439). The ‘630 claims recite the low refractive layer comprises a binder. However, the claims are silent to the claimed binder.
Ogane discloses the above, including the binder being selected depending upon the wear resistance, adhesive force, and environmental reliability which can be an alkoxysilane hydrolytic condensate, which can be considered to be the claimed silica (para. 0030). However, Ogane is silent to the claimed polysilsesquioxane and contents thereof.
Kobori discloses a low refractive index layer comprising at least 5.0 wt% polysilsesquioxane, wherein the polysilsesquioxane improves the strength of the coating (para. 0102-0103). Given that Ogane discloses the content of hollow particles are balanced with the content of the binder, in order to produce the refractive index (Ogane; para. 0032-0038) and Kobori discloses the content of polysilsesquioxane is at least 5 wt% for improving strength (Kobori; para. 0102-0103), one of ordinary skill in the art would have been motivated to have the claimed ratios and amounts, in order to produce a low refractive index layer that has improved strength with the desired refractive index.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
