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 .
Specification
The abstract of the disclosure is objected to because the abstract is formatted in such a manner that it contains more than one paragraph. Furthermore. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 contains the limitation “(partial)”. It is not clear if the limitation being written in parenthesis is intended to be interpreted as an optional limitation. The language is indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d) for similar limitations of the form “such as”, “or the like” an “for example”. Appropriate correction is required.
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 1-3, 5-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (U.S. App. Pub. No. 2012/0058347) in view of Horikawa et al. (WO 2021/095649).
Citations to Horikawa et al. refer to the machine translation document included with this office action.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 1 and 5, Fukushima et al. teaches a plastic article including
A resin substrate (Abstract, par. [0039])
A primer layer including a UV-absorptive vinyl copolymer and inorganic silica particles in amounts of 0.1 to 100 parts silica particles per 100 parts by weight of the vinyl copolymer resin, overlapping with the presently claimed range. (Abstract, par. [0041], [0055] and [0062]). The silica particles are disclosed to have a particle diameter of 1-100 nm. (par. [0059]). The vinyl copolymer includes 1-30% by weight of UV-absorptive alkoxysilyl-containing vinyl groups. (par. [0041]). The thickness of the primer layer lies in the range of 0.5-20 micrometers. (par. [0128]).
A hard coating composition including a silicone resin that is formed by condensation of a hydrolysable silicon compound having the general formula R1aSi(OR3)(4-a) with substituents overlapping with formula (1) as claimed (Abstract, par. [0068]-[0074]). The hard coating further includes colloidal particulate silicon dioxide. (par. [0070] and [0146]). The hard coating further includes a UV absorber. (par. [0078]). The hard coat may have a thickness of 5 micrometers (Table 8), lying within the presently claimed range.
Fukushima et al. does not disclose a photomodified layer on a surface-layer portion of the hardcoat layer.
Horikawa et al. teaches a resin molded article with a series of laminate layers on a substrate including a primer layer and silicone hard coat layer that is surface modified by UV irradiation (i.e. photomodified, as claimed) to form a SiO2 region on the surface of the silicone layer. (Abstract, page 1, 5th paragraph and page 3, 3rd paragraph. See also Fig. 2 of original document). Horikawa et al. teaches that this modification of the silicone layer results in improved weather resistance while retaining high abrasion resistance. (Abstract).
It would have been obvious to one of ordinary skill in the art to photomodify the silicone resin hardcoat layer disclosed in Fukushima et al. in view of the teachings of Horikawa et al.
One of ordinary skill in the art would have found it obvious to photomodify the surface of the hard coat silicone resin layer of Fukushima et al. in order to form a hard coat layer having improved weather resistance and abrasion resistance, as taught in the secondary reference.
Regarding claim 2, Horikawa et al. teaches that photomodifying the surface of the silicone hard coat layer results in the formation of silicon dioxide regions in the layer. (page 1, 5th paragraph). Furthermore, the inclusion of colloidal silica in the hard coating composition as disclosed in Fukushima et al. (par. [0055]) would result in the hard coating to include “silicon dioxide”, as claimed.
Regarding claim 3, Horikawa et al. teaches a UV absorber having the structure of formula (2) as claimed wherein at least one of the A1 to A10 groups include the alkoxysilane pendant group as claimed. (par. [0078]).
Regarding claims 6-7, Fukushima et al. discloses that the vinyl polymer includes UV-absorptive vinyl monomers including benzotriazole or benzophenone derivatives. (par. [0041]-[0042]).
Regarding claim 9, the thickness of the primer layer lies in the range of 0.5-20 micrometers (par. [0128]), overlapping with the presently claimed range, and the hard coat may have a thickness of 5 micrometers (Table 8), lying within the presently claimed range.
Regarding claim 10, the combination of Fukushima in view of Horikawa et al. would result in the formation of a photomodified laminate structure that includes a portion of the surface layer exposed to light having a wavelength of 200 nm or less, in particular 172 nm. (Horikawa et al., page 2, 2nd paragraph and page 3, 3rd paragraph).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (U.S. App. Pub. No. 2012/0058347) in view of Horikawa et al. (WO 2021/095649), further in view of Okada et al. (U.S. App. Pub. No. 2022/0288914).
Fukushima in view of Horikawa et al. is relied upon as described in the rejection of claim 1, above.
Fukushima in view of Horikawa et al. fails to teach a surface hardness of the hard coat layer of Fukushima et al. by nanoindentation.
Okada et al. teaches a laminated film structure applied on the surface of a substrate (Abstract) wherein the laminate includes a hard coat. (Abstract and par. [0002]). Okada et al. further teaches that the hardness of the uncured hard coat layer should lie int eh range of 0.1-0.4 GPa (par. [0019] and [0062]). Okada et al. teaches that the disclosed range allows for control of any potential defects on the surface of the laminate as well as control of appropriate tackiness and bonding properties. (par. [0062]).
It would have been obvious to one of ordinary skill in the art to optimize the hardness of the hard coat layer as measured by nanoindentation in Fukushima et al. such that it lies in the range taught by Okada et al.
One of ordinary skill in the art would have found it obvious to optimize the hardness of the hard coat layer in order to adjust the material properties thereof such as defect formation and tackiness, the prior art explicitly recognizing the result effective nature of the hardness of the coating on other material properties of the film. . As such, without showing unexpected results, the claimed hardness cannot be considered critical, since it has been held that where the general conditions of the 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 223).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (U.S. App. Pub. No. 2012/0058347) in view of Horikawa et al. (WO 2021/095649), further in view of Higuchi et al. (U.S. App. Pub. No. 2008/0096029).
Fukushima in view of Horikawa et al. is relied upon as described in the rejection of claim 1, above.
Fukushima in view of Horikawa et al. fails to teach a hindered amine light stabilizer in the primer composition.
Higuchi et al. teaches a primer composition for a polysiloxane hard coating composition including a vinyl polymer and fine silica particles, similar to the primer composition of Fukushima et al. (Abstract). Higuchi et al. teaches the inclusion of a hindered amine light stabilizer in the primer composition for improving the weatherability of the composition. (par. [0104]).
It would have been obvious to one of ordinary skill in the art to include a hindered amine light stabilizer in the primer composition of Fukushima in view of Horikawa et al. in view of the teachings of Higuchi et al.
One of ordinary skill in the art would have found it obvious to include a hindered amine light stabilizer in the primer composition disclosed in Fukushima in view of Horikawa et al. for the added benefit of improving the weatherability of the composition as taught in Higuchi et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/05/2026
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