DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, and 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for first and second layers comprising a resin formed from a polyamide and polyether block amide, does not reasonably provide enablement for any material that has the Shore Hardness and resulting flexural modulus. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1, 3-7, and 9-10 can be used as claimed and whether claims 1, 3-7, and 9-10 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1, 3-7, and 9-10, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1, 3-7, and 9-10 read on any material including silicones, rubbers, and other materials while the specification discloses first and second layers comprising a resin formed from a polyamide and polyether block amide.
(b) There is no direction or guidance presented for first and second layers comprising silicones, rubber, metals, ceramics and other polymeric materials.
(c) There is an absence of working examples concerning first and second layers comprising silicones, rubber, metals, ceramics and other polymeric materials.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1, 3-7, and 9-10.
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 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (WO 2021/153914) in view of Jeong (KR 10-2019-0080756). US20230241875 is the PG-Pub of the National Stage Application and used as the translation since the disclosure must be translated as-is into English. See MPEP 1893.01(d).
Jang discloses a cover film for an electronic device. Concerning claims 1 and 2, Jang discloses a multilayer film (FIG. 2(a); para. 0068-0259) comprising an optically clear adhesive layer (element 130) that has a low storage modulus (i.e. equivalent to claimed first layer) and an elastic layer (element 100) that comprises a polyether block amide resin that is the same material such as PEBAX® and VESTAMID® as that in the instant invention and has a Shore D hardness of 30 to 70 (para. 0141-0223). However, Jang is silent to the first layer comprising amide repeating units. With respect to claims 3 and 4, since the Shore D hardness overlaps the claimed range and the second layer can comprise the same materials, the resulting pencil hardness would overlap and include the claimed pencil hardness and since the first layer can be optically clear, the resulting transmittance of the film would be within the claimed range.
Concerning claim 5, the term “coextruded” is a product-by-process limitation and since the resulting structure of the layers share one surface with one another, the structure is the same as that claimed. Regarding claim 6, the elastic layer has a 20 to 2500 MPa at 0°C (para. 0094) and the adhesive layer has a difference in storage modulus between -100 to 100 kPa at the temperature range of -40°C to 80°C (para. 0257). Storage modulus is the ability of a material to store energy during deformation and recover to the original shape. A lower storage modulus material has the ability to conform to a surface. As such, the storage modulus of the adhesive since it is used to in flexible displays is necessarily lower at 0°C than the elastic layer, in order to stay conformed to the flexible display. With respect to claims 7 and 9, the cover film has a release film, wherein the release film is PET which has a storage modulus of 4 GPa at 0°C (FIG. 2(a), element 150; Table 1). Regarding claim 10, the cover film is a part of multilayer electronic device (FIG. 6). However, Jang is silent to the first layer comprising amide repeating units and properties thereof.
Jeong discloses an optically clear adhesive comprising amide repeat unit. Such a material allows for durability and cohesive power (p. 3, Advantageous effects). As such, it would have been obvious to one of ordinary skill in the art to use the optically clear adhesive of Jeong as the optically clear adhesive of Jang.
Allowable Subject Matter
Claim 8 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. The prior art is silent to the claimed materials for each layer as claimed in claim 8, resulting in the claimed material properties.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
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