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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR § 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
In the present application, restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, Applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Restriction to one of the following inventions is required:
Group I. Claims 1-10, 13, 50 and 54-56 are drawn to a film having a specified in-plane phase difference, classified in CPC class code G02B 5/3083.
Group II. Claims 21 and 22 are drawn to a film having a specified color index, classified in CPC class code G02B 27/005.
Group III. Claim 35-37 are drawn to an adhesive comprising polyester having a specified phase signal ratio, classified in CPC class code G02B 1/04.
Lacking Same or Corresponding Special Technical Features
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The technical features of Groups I, II and III have only the following common elements, which are disclosed in the prior art by U.S. Pat. Appl. Pub. No. 2012/0276479 A1 of Yoo et al.:
A film comprising at least one polyester (solidified polyester resin; paragraph [0069] of Yoo);
wherein: a biomass content of the film is 10% or more (Examples 1, 2, 4-6 have a biomass content ranging from 40% to 68%; paragraphs [0068], [0105] and TABLE 1 of Yoo);
and a total transmittance of the film is 70% or more (Examples 1, 2, 4-6 are categorized as transparent, not opaque, and not hazy; paragraphs [0069]-[0072] and TABLE 1 of Yoo).
Thus, there is a lack of unity of invention a posteriori because even though the inventions of Group I, Group II, and Group III each require the combination of technical features listed above, this combination of technical features is not a special technical feature as it does not make a contribution over the prior art in view of U.S. Pat. Appl. Pub. No. 2012/0276479 A1 of Yoo et al.
There is also a search burden due to the different class code classifications of the inventions, and the significant differences in claimed subject matter, wherein prior art search results for each of the inventions would not necessarily yield relevant search results for the others of the inventions, i.e., necessitating different search queries.
For example, independent Claim 1 requires searching for in-plane phase difference, wherein such searching is not required for independent Claims 21 and 35 which do not require such limitation. Similarly, independent Claim 21 requires searching for a specific yellowness index, wherein such searching is not required for independent Claims 1 and 35 which do not require such color requirements. Additionally, independent Claim 35 requires searching for a specific phase signal ratio, wherein such searching is not required for independent Claims 1 and 21 which do not require such limitation.
Furthermore, there is nothing of record to show that the inventions as claimed to be obvious variants of each other.
Thus, there is a serious search burden on the examiner if such claims are not restricted, for at least the reasons explained above, including with regard to the separate classification and different fields of search for the claims.
Applicant’s Response Information
Applicant is advised that the reply to this requirement to be complete must include: (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention (as recited above).
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Telephone Call
A telephone call was placed to Applicant’s representative on September 14, 2026 to offer the opportunity for an oral election to the above restriction requirement. Applicant requested an email with further details regarding the restriction requirement. After consultation with Applicant, Applicant’s representative was able to indicate that Applicant elects Group I (corresponding to Claims 1-10, 13, 50 and 54-56), with traverse (see attached email correspondence). Claims 1-10, 13, 50 and 54-56 will be examined on the merits in the present Office Action.
The Office notes that in the response to this Office Action and the written Restriction Requirement presented herein, Applicant must distinctly and specifically point out any supposed errors in the restriction requirement, or else the election will be treated as an election without traverse (see MPEP § 818.01(c)).
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, 2, 6, 10, 13 and 54-56 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al., U.S. Pat. Appl. Pub. No. 2012/0231255 A1.
Regarding Claim 1, Tanaka discloses: An optical film for placing at least one functional layer thereon, the optical film comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
at least one polyester (polycarbonate resin film; Abstract and paragraphs [0031], [0171] of Tanaka);
wherein: a biomass content of the optical film is 10% or more (isosorbide [a plant derived monomer] may be used in amounts such as 89.44 parts by weight relative to 37.83 parts by weight of 1,4-cyclohexanedimethanol and 191.02 parts by weight of diphenyl carbonate, i.e., approximately 28%; paragraphs [0001]-[0004], [0076], [0200]-[0212] of Tanaka);
a total transmittance of the optical film is 70% or more (transmittance of 92% or 93%; paragraphs [0239], [0250] and TABLE 3 of Tanaka); and
an in-plane phase difference of the optical film is 3,000 nm or more and 30,000 nm or less, or the in-plane phase difference of the optical film is 1,500 nm or less (phase difference [retardation] may be 30 to 400 nm, or other ranges depending on the use of the optical film; paragraphs [0032], [0048], [0052]-[0054], [0058]-[0061], [0199], [0241] and TABLE 3 of Tanaka; compare to the method of determining “in-plane phase difference (Re)” in paragraph [0066] of Applicant’s originally-filed specification).
Regarding Claim 2, Tanaka discloses the limitations of Claim 1 and further discloses: wherein the optical film contains a biomass material-derived polyester (polycarbonate resin film, wherein isosorbide [a plant derived monomer] may be used for fabrication; paragraphs [0001]-[0004], [0076], [0200]-[0212] of Tanaka; Abstract and paragraphs [0031], [0171] of Tanaka).
Regarding Claim 6, Tanaka discloses the limitations of Claim 1 and further discloses: wherein: the optical film consists of a polyester film containing the polyester or includes a polyester film containing the polyester and at least one easily adhesive layer provided on the polyester film (the optical film [“transparent film”] of Tanaka may consist of the polycarbonate resin film, however, note also that the transparent film of Tanaka can be laminated to a known iodine-containing or dye-containing polarizing plate, i.e., polarizer, through a pressure-sensitive adhesive; Abstract and paragraphs [0031], [0063], [0171], [0248] of Tanaka).
Regarding Claim 10, Tanaka discloses the limitations of Claim 6 and further discloses: An optical multilayer body comprising: the optical film according to claim 6; and at least one functional layer provided on the optical film (the optical film [“transparent film”] of Tanaka may be laminated to a known iodine-containing or dye-containing polarizing plate, i.e., polarizer, through a pressure-sensitive adhesive; Abstract and paragraphs [0062], [0063], [0067], [0171], [0248] of Tanaka).
Regarding Claim 13, Tanaka discloses the limitations of Claim 1 and further discloses: wherein the in-plane phase difference is 300 nm or more and 1,450 nm or less (phase difference [retardation] may be 30 to 400 nm, or other ranges depending on the use of the optical film; paragraphs [0032], [0048], [0052]-[0054], [0058]-[0061], [0199], [0241] and TABLE 3 of Tanaka; compare to the method of determining “in-plane phase difference (Re)” in paragraph [0066] of Applicant’s originally-filed specification).
Regarding Claim 54, Tanaka discloses the limitations of Claim 1 and further discloses: A surface plate for an image display device, the surface plate comprising: a resin plate or glass plate; and the optical film according to claim 1, disposed on the plate (examples of optical films to which the transparent film of the invention can be applied include member films or sheets which representatively are for liquid-crystal displays, such as retardation films, viewing-angle enlargement films, polarizer-protective films, prism sheets, diffusion sheets, reflection sheets, and films for preventing surface reflection; paragraph [0067] of Tanaka).
Regarding Claim 55, Tanaka discloses the limitations of Claim 1 and further discloses: An image display device comprising: a display element; and the optical film according to claim 1, disposed on the display element (the transparent film of the invention can be used, for example, as the color compensation plate of an STN liquid-crystal display device and laminated to a polarizing plate to give an elliptical polarizer; paragraphs [0065]-[0067] of Tanaka).
Regarding Claim 56, Tanaka discloses the limitations of Claim 1 and further discloses: A polarizing plate comprising a polarizer, a first transparent protective plate disposed on one surface of the polarizer, and a second transparent protective plate disposed on the other surface of the polarizer, wherein: at least one of the first transparent protective plate or the second transparent protective plate is the optical film according to claim 1 (the transparent film of the invention may be used and laminated, for example, as protective films, and specifically as polarizer-protective film which is a component of a polarizing plate; paragraphs [0065], [0067] of Tanaka).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Motoyoshi et al., U.S. Pat. Appl. Pub. No. 2013/0005939 A1.
Regarding Claim 1, Motoyoshi discloses: An optical film for placing at least one functional layer thereon, the optical film comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
at least one polyester (optical film comprising a copolycarbonate; Abstract and paragraphs [0015]-[0017], [0023] of Motoyoshi);
wherein: a biomass content of the optical film is 10% or more (copolycarbonate composed of unit (A) and unit (B), wherein a preferred unit (B) is (B1) obtained from biomass, and a preferred ratio of units (A) and (B) is a content of (B) of 10 to 70 mol%; paragraphs [0023], [0063]-[0066], [0072]-[0074], [0127] of Motoyoshi);
a total transmittance of the optical film is 70% or more (light transmittance of 85% or more; paragraphs [0120]-[0122] of Motoyoshi); and
an in-plane phase difference of the optical film is 3,000 nm or more and 30,000 nm or less, or the in-plane phase difference of the optical film is 1,500 nm or less (a retardation exhibition capability [Δn] is defined as an in-plane retardation [phase difference] divided by thickness, and a preferred value of Δn is 0.05, and thus when 0.05 is multiplied times an exemplary thickness of 100 um [100,000 nm], a resulting value of 5,000 nm is obtained for the in-plane retardation [phase difference]; paragraphs [0120]-[0122], [0143]-[0145] of Motoyoshi; compare to the method of determining “in-plane phase difference (Re)” in paragraph [0066] of Applicant’s originally-filed specification).
Regarding Claim 3, Motoyoshi discloses the limitations of Claim 1 and further discloses: wherein the in-plane phase difference is 4,000 nm or more and 15,000 nm or less (a retardation exhibition capability [Δn] is defined as an in-plane retardation [phase difference] divided by thickness, and a preferred value of Δn is 0.05, and thus when 0.05 is multiplied times an exemplary thickness of 100 µm [100,000 nm], a resulting value of 5,000 nm is obtained for the in-plane retardation [phase difference]; paragraphs [0120]-[0122], [0143]-[0145] of Motoyoshi; compare to the method of determining “in-plane phase difference (Re)” in paragraph [0066] of Applicant’s originally-filed specification).
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka, or as being unpatentable over Tanaka in view of Shigamatsu, WIPO publication WO 2019/131621 A1 (citations below are to the English translation provided herewith, retrieved from http://worldwide.espacenet.com).
Regarding Claims 4 and 5, Tanaka discloses the limitations of Claim 1, but does not appear to disclose: wherein a Martens hardness on at least one surface of the optical film is 110 N/mm2 or more and 170 N/mm2 or less, and wherein a percentage of elastic deformation work on at least one surface of the optical film is 60% or more and 70% or less.
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 Tanaka discloses the importance of durability, flexibility, and keeping photoelastic coefficient within a suitable range, noting that an uneven change in retardation can thereby be avoided, as well as enabling film applications (see, e.g., paragraphs [0042], [0055], [0111], [0118], [0123], [0190]-[0195] and TABLE 3 of Tanaka).
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 the claimed hardness and elastic deformation in accordance with mere discovery workable or optimal ranges to keep the optical film of Tanaka remaining durable but also flexible, and thus suitable for application as a film.
Furthermore, Shigamatsu is related to Tanaka with respect to polymer layers for display device.
Shigamatsu teaches: wherein a Martens hardness on at least one surface of the optical film is 110 N/mm2 or more and 170 N/mm2 or less, and wherein a percentage of elastic deformation work on at least one surface of the optical film is 60% or more and 70% or less (resin compositions for display device may have a Martens hardness of preferably 150 N/mm2 to 170 N/mm2, and an elastic deformation work ratio of preferably 50% to 70%; pages 1, 17 and 18 of Shigamatsu).
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 hardness and elastic deformation values of Shigamatsu for the device of Tanaka because such values were in fact known in the prior art for transparent layers of display device, and known to provide suitable scratch-resistance and self-recovery from deformation, as taught in pages 1, 17 and 18 of Shigamatsu.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Delevati, U.S. Pat. Appl. Pub. No. 2022/0213357 A1.
Regarding Claims 7-9, Tanaka discloses the limitations of Claim 6, but does not appear to explicitly disclose: wherein resin constituting the easily adhesive layer is a biomass material-derived resin, a fossil fuel-derived resin, or a mixed resin including a biomass material-derived resin and a fossil fuel-derived resin.
Delevati is related to Tanaka with respect to adhesives and biomass polymers.
Delevati teaches: wherein resin constituting the easily adhesive layer is a biomass material-derived resin, a fossil fuel-derived resin, or a mixed resin including a biomass material-derived resin and a fossil fuel-derived resin (adhesive biobased content may range from 5% to 99%, and specifically a ratio of biobased to fossil content may range from 7:93 to 90:10; paragraphs [0018], [0027], [0030] of Delevati).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select either extreme of predominantly biomass resin or predominantly fossil fuel resin, or a substantial mixture of each as in Delevati for the adhesive of Tanaka because although the fossil sources may be more commonly used and thus more widely available and/or less costly, products derived from natural sources have increasingly been a widely preferred alternative as an effective means of reducing the atmospheric carbon dioxide concentration increase, and thereby effectively preventing the expansion of the so-called greenhouse effect, as taught in paragraph [0014] of Delevati.
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Matsumura et al., U.S. Pat. Appl. Pub. No. 2024/0052205 A1.
Regarding Claim 50, Tanaka discloses the limitations of Claim 1, but does not appear to disclose: wherein the optical film contains a recycled material-derived polyester.
Matsumura is related to Tanaka with respect to display device utilizing polyester layers.
Matsumura teaches: wherein the optical film contains a recycled material-derived polyester (polyester resin may be recycled from plastic bottle, and suitable diffusion film or lens film for display device may thus be formed; paragraphs [0001], [0045] of Matsumura).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the recycled material of Matsumura for the optical film of Tanaka because the crystallinity of polyesters used in plastic bottles is controlled in order to improve the appearance of the bottles, and as a result, a polyester containing 10 mol % or less of an isophthalic acid component may be used, wherein the range of isophthalic acid is suitable in terms of laminate strength, avoiding thermal shrinkage, and avoiding thickness unevenness, as taught in paragraphs [0045]-[0051] of Matsumura.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RYAN S DUNNING/Primary Examiner, Art Unit 2872
