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 .
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 1-6 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 pre-AIA the applicant regards as the invention.
Claim 1 appears to define the invention in terms of functional language, by reciting a desired physical attribute (adhesive force) without reciting the physical structure or chemical composition (or process steps, for product-by-process) which results in such physical attribute. Specifically, Claim 1 recites: “an adhesive force of the adhesive layer to float glass after allowing to stand at 23°C and a relative humidity of 50% for 24 hours is 1 N/25 mm or more, and an adhesive force of the adhesive layer to the float glass after allowing to stand at 80°C for 168 hours is 18 N/25 mm or less”.
As explained in MPEP §2173.05(g), notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite (see In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear (see Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008), noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty” (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Furthermore, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim (citing Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc)).
In the present case, other than the generic structure of “substrate” and “adhesive layer”, Claim 1 merely recites a goal of the invention, or a desired outcome of the invention, rather than reciting a physical structure, chemical composition, and/or process steps (for product-by-process) which accomplishes the goal or desired outcome. Claim 1 states that an adhesive force of the adhesive layer to float glass after allowing to stand at 23°C and a relative humidity of 50% for 24 hours is 1 N/25 mm or more, and an adhesive force of the adhesive layer to the float glass after allowing to stand at 80°C for 168 hours is 18 N/25 mm or less. Thus, it appears that Applicant’s goal or desired outcome is a window film having a minimum adhesive force after a short duration at room temperature, and a maximum adhesive force after a longer duration at an elevated temperature. However, a film’s strength of adhesion is a natural consequence of the thickness of the adhesive layer, the material(s) of which the adhesive layer is made, the process steps by which the adhesive layer is formed, or other structural, compositional, or treatment factors. Yet, in the present case, Applicant has not specified in Claim 1 any physical structure, chemical composition, or process steps which will result in the desired time-dependent / temperature-dependent minimum / maximum adhesive force.
MPEP §2173.05(g) instructs patent examiners to “consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting.
Because Claim 1 fails to specify physical structure and/or chemical composition relating to the claimed window film, and only states a desired result or desired outcome, which is insufficient to inform one of ordinary skill in the art as to any required structure or materials, Claim 1 is indefinite as presently written.
Claims 2-6 inherit the deficiencies of Claim 1. Claims 2 and 3 are similarly indefinite based on similar claim language relating to desired attributes of adhesive force and storage elastic modulus (wherein “storage elastic modulus” is desired physical attribute, and Claim 2 does not appear to recite any physical structure, chemical composition, or process steps for a product-by-process, which results in such physical attribute).
Appropriate correction is required.
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 1-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sato et al., US 2024/0168209 A1.
Regarding Claim 1, as best understood, Sato discloses: A window film comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a substrate (substrate layer 2; paragraph [0234] and FIG. 4 of Sato); and
an adhesive layer disposed on one of main surfaces of the substrate (adhesive layer 6 is disposed at a lower main surface of substrate layer 2; paragraph [0234] and FIG. 4 of Sato);
wherein an adhesive force of the adhesive layer to float glass after allowing to stand at 23°C and a relative humidity of 50% for 24 hours is 1 N/25 mm or more, and an adhesive force of the adhesive layer to the float glass after allowing to stand at 80°C for 168 hours is 18 N/25 mm or less (because the layered article of Sato satisfies all of the physical structure and chemical composition requirements of the claim, it is presumed that the layered article of Sato exhibits the same adhesion characteristics, specifically adhesion strength with respect to float glass after exposure to certain temperatures and humidities for certain lengths of time; see rejection of Claim 1 based upon 35 USC 112(b) above; see also MPEP § 2112.01, Sections I and II, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding Claim 2, as best understood, Sato discloses the limitations of Claim 1 and further discloses: wherein a ratio of a storage elastic modulus of the adhesive layer at 23°C to a storage elastic modulus of the adhesive layer at 80°C is 3.5 or less (because the layered article of Sato satisfies all of the physical structure and chemical composition requirements of the claim, it is presumed that the layered article of Sato exhibits the same durability and flexibility characteristics, specifically a small difference in storage elastic modulus at room temperature versus elevated temperatures; see rejection of Claim 1 based upon 35 USC 112(b) above; see also MPEP § 2112.01, Sections I and II, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding Claim 3, as best understood, Sato discloses the limitations of Claim 1 and further discloses: wherein an adhesive force of the adhesive layer to the float glass after allowing to stand at 60°C and a relative humidity of 95% for 168 hours is 22 N/25 mm or less (because the layered article of Sato satisfies all of the physical structure and chemical composition requirements of the claim, it is presumed that the layered article of Sato exhibits the same adhesion characteristics, specifically adhesion strength with respect to float glass after exposure to certain temperatures and humidities for certain lengths of time; see rejection of Claim 1 based upon 35 USC 112(b) above; see also MPEP § 2112.01, Sections I and II, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding Claim 4, Sato discloses the limitations of Claim 1 and further discloses: comprising a hard coat layer disposed on the other main surface of the substrate (functional layer 3 may be disposed at an upper main surface of substrate layer 2, i.e., at an opposite side from adhesive layer 6, and the functional layer may function as a hard coating layer; paragraphs [0152], [0234] and FIG. 4 of Sato).
Regarding Claim 5, Sato discloses the limitations of Claim 1 and further discloses: wherein the window film has ultraviolet absorptivity (the hard coating layer may include additives such as ultraviolet absorber or infrared absorber; paragraph [0224] and FIG. 4 of Sato).
Regarding Claim 6, Sato discloses the limitations of Claim 1 and further discloses: wherein the window film has infrared absorptivity (the hard coating layer may include additives such as ultraviolet absorber or infrared absorber; paragraph [0224] and FIG. 4 of Sato).
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 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Saitoh et al., US 2016/0085101 A1.
Regarding Claims 1-6, assuming arguendo that Sato does not disclose the limitations relating to adhesive force and storage elastic modulus, 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 it was known in the prior art to maintain the adhesive force of an adhesive layer within an optimum or workable range. More specifically, Saitoh is related to Sato with respect to functional layer stacks for display device, and Saitoh teaches that when the adhesion force is too low, environment resistance deteriorates (including peeling at high temperature and high humidity), whereas when the adhesion force is too high, rebonding is not able to be performed, or even when rebonding is able to be performed, the adhesive agent may remain (see paragraph [0190] of Saitoh).
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 range of values for adhesive force in accordance with mere discovery of optimal or workable ranges because the detrimental effects of too low or too high an adhesive force were known in the prior art, as evidenced by paragraph [0190] of Saitoh.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Morita, US 2022/0213353 A1.
Regarding Claim 2, assuming arguendo that Sato does not disclose the limitations relating to adhesive force and storage elastic modulus, 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 it was known in the prior art to avoid large differences in storage elastic modulus due to temperature. More specifically, Morita is related to Sato with respect to adhesive layer for display device, and Morita teaches that elastic modulus temperature stability is important for device reliability, including heat resistance reliability (see paragraphs [0149], [0170] of Morita).
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 maximum ratio of change due to temperature of storage elastic modulus in accordance with mere discovery of optimal or workable ranges because the detrimental effects of too high of a temperature difference in storage elastic modulus were known in the prior art, as evidenced by paragraphs [0149], [0170] of Morita.
Examiner Note – Consider Entirety of Reference
Although various text and figures of the cited reference 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 the 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.
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872
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