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 .
Claims 1-20 are currently pending. Claims 19-20 have been added as new. Claims 1 and 17 have been amended.
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.
Claims 1-16 and 19 are 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.
Independent claim 1 recites “A1 represents a monovalent group having at least one kind of group selected from the group consisting of … a urea group, a urethane group…, an imide group…, a sulfonamide group,..” However, the claim as written is indefinite and unclear. It is well understood in the art that a urea group, a urethane group, an imide group and a sulfonamide group are all divalent groups and cannot be monovalent. Therefore, appropriate correction is required.
Claims 2-16 and 19 depend on claim 1; therefore, the claims are also indefinite and rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. 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.
Claim(s) 1, 3-8, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1) in view of Watano et al. (WO 2021/020287 A1; see attached English Machine Translation for citations).
Regarding claims 1 and 3-8, Arayama et al. teach a composition ( dispersion composition; see abstract, claims and examples) comprising: particles having a refractive index of 1.8 or more (metal oxide particles having a refractive index is 1.90 to 2.70 [0024] encompassing the instant claimed range of 1.8 or more); a polymer compound represented by formula 1 [0008 ]:
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[0037-0122], wherein m + n satisfied 3 to 10 [0079] meeting the limitation of the polymer compound represented by formula (1)
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as recited by instant claim 1; and a solvent [0163-0165]. Arayama et al. teach the particles have an average primary particle size of 1 nm to 300 nm ( 1 nm to 100 nm; [0021] which encompasses the instant claimed ranged of claim 3). The polymer compound has a weight average molecule weight from 3,000 to 10,0000 ( 3,000 to 20,000 [0122] which encompasses the instant claimed range of claim 4). Furthermore , A1 of the polymer compound is a group having a functional group having a pka of 5 [0069]. Arayama et al. also teach the particles are at least one kind of particle selected from the group consisting of zirconium oxide particles and titanium oxide particles [0018 & 0029-0031].
Although Arayama et al. do not explicitly recite the polymer compound represented by Formula (1) has liquid crystallinity as instantly claimed, the polymer compound represented by Formula (1) recited by Arayama et al. and the polymer compound represented by Formula (1) as recited by the instant claims are the same. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. However, it is the position of the examiner that those characteristics are inherent. A reference that is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claims 17-18, Arayama et al. teach a dispersant ( see abstract, claims and examples) , comprising a polymer compound represented by formula 1 [0008]:
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[0037-0122], wherein m + n satisfied 3 to 10 [0079] and least one of n A1’s is a C1-C12 alkyl group having from 1 to 3 carboxylic acid groups or a C6-C10 aryl group having from 1 to 3 carboxylic acid groups [0042-0048] meeting the limitation of the polymer compound represented by formula (1)
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as recited by instant claims 17 and 18.
Further regards to claims 1 and 17, Arayama et al. do not explicitly recite the least one mesogen structure selected from the group consisting of a biphenyl structure, a phenyl benzoate, a cyclohexyl benzoate structure, an azobenzene structure, a stilbene structure, a terphenyl structure, an anthracene structure, derivatives thereof, and structures formed by connecting two or more of these mesogen structures via a connecting group as instantly claimed. It is noted that Arayama et al. recognize that Formula (1) has at least a heterocyclic structure that may further have a substitutent and be for example an aryl group having 6 to 16 carbon atoms such as a phenyl group [0065] or a divalent linking group that may be an aryl group having 6 to 16 carbon atoms such as a phenyl group [0078] or aromatic group preferably having 5 to 20 carbon atoms such as phenylene group [0102]. Nonetheless, the examiner has added Watano et al. to teach it is well-known to one of ordinary skilled in the art of optical elements to include a dispersant comprising a polymer compound as a whole has at least one mesogen structure selected from biphenyl group, terphenyl group a phenyl benzoate group or azobenzene group in view in exhibiting liquidity ( see page 8, lines 4-20). Arayama et al. and Watano et al. are analogous art in the optical element field. Therefore, it would have been obvious to one of ordinary skilled in the art to modify the polymer compound dispersant of Arayama et al. to include a mesogen as taught by Watano et al. as a biphenyl group, terphenyl group a phenyl benzoate group or azobenzene group in view in exhibiting liquidity and routine experimentation
Claim(s) 2 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1) in view of Watano et al. (WO 2021/020287 A1; see attached English Machine Translation for citations) as applied to claim 1 above, and further in view of Kim et al. (CN 104335108 A; see attached English Machine Translation CN 1043354108).
Regarding claim 2, Arayama et al. do not explicitly disclose the composition further comprises a liquid crystal compound as recited by instant claim 2. Nonetheless, Arayama et al. recognize the composition is a dispersion composition that is curable and can be used in a liquid crystal display device ( fig. 1 and abstract) and other components may necessary be included [0168]. However, the examiner has added Kim et al. to teach it is well-known to one of ordinary skilled in the art to include a liquid crystal compound in a dispersion composition [0037 & 0043] in view of aiding in curing. Arayama et al. and Kim et al. are analogous art in the dispersion composition field. Therefore, it would have been obvious to one of ordinary skilled in the art at the time of the invention to modify the composition of Arayama et al. to include a liquid crystal compound as taught by Kim et al. in view in aiding in curing.
Regarding claims 9-13, Arayama et al. teach the particles have an average primary particle size of 1 nm to 300 nm ( 1 nm to 100 nm; [0021] which encompasses the instant claimed ranged of claim 3). The polymer compound has a weight average molecule weight from 3,000 to 10,0000 ( 3,000 to 20,000 [0122] which encompasses the instant claimed range of claim 4). Furthermore , A1 of the polymer compound is a group having a functional group having a pka of 5 [0069]. Arayama et al. also teach the particles are at least one kind of particle selected from the group consisting of zirconium oxide particles and titanium oxide particles [0018 & 0029-0031].
Although Arayama et al. do not explicitly recite the polymer compound represented by Formula (1) has liquid crystallinity as instantly claimed, the polymer compound represented by Formula (1) recited by Arayama et al. and the polymer compound represented by Formula (1) as recited by the instant claims are the same. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. However, it is the position of the examiner that those characteristics are inherent. A reference that is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
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.
Claim(s) 14-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1).
Regarding claims 14-16, Arayama et al. teach a liquid crystal film [0390-0399 and fig. 1]. Arayama et al. teach a film comprising a liquid crystal layer curing the liquid crystal film ([0170-0171 & 0324-0328 and examples & fig. 1) . Arayama et al. teach a display device comprising the film [0392-0399 and fig. 1].
Examiner notes claim 14 recites product by process language, “obtained by removing at least a part of the solvent from the composition according to claim 2." The composition is not a positive recitation in claim 14.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed 05/19/2026, with respect to the rejection(s) of claim(s) 1, 3-8 and 17-18 under 35 U.S.C. 102(a)(1) as being anticipated by Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1) have been fully considered and are persuasive due to claims amendments.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., suppressing deterioration of alignment, haze value, liquid crystal alignment) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1).
It is noted that applicants failed to provide any arguments regarding claims 14-16 “product by process” language in claims. Therefore, the 102/13 rejection is maintained in view of Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1). Examiner suggests deleting the “product by process” claim language and amending to recite “comprising”.
Allowable Subject Matter
Claim 20 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANCEITY N ROBINSON/ Primary Examiner, Art Unit 1737
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