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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
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 (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 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) 1, 3-8, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arayama et al. (WO 2014/034814 A1: citations from EP 2891685 A1).
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.
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.
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) 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) 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(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.
Applicant is reminded of MPEP 2113: "[E]ven though product-by-process claims are limited by and defined by the process; determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The liquid crystal film of Arayama et al. has not been shown to be different than the instant liquid crystal film.
Conclusion
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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/CHANCEITY N ROBINSON/ Primary Examiner, Art Unit 1737