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
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 and 6-9 of U.S. Patent No. 12,295,202. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations of claims 1-7 of the instant application are encompassed by claims 1, 3-4 and 6-9 of the patent as follow:
Instant application (claim 1)
U.S 12,295,202 (claim 1)
A foldable optical film with a front surface and a back surface opposite to the front surface, comprising:
A foldable optical film with a front surface and a back surface opposite to the front surface, comprising:
a light-transmitting base material, a hard coat layer, and a resin layer,
a light-transmitting base material, a hard coat layer, a resin layer, and a decorative layer,
wherein the light-transmitting base material is a base material containing a polyimide resin, a polyamide resin, or a combination thereof;
wherein the light-transmitting base material is a base material containing a polyimide resin, a polyamide resin, or a combination thereof;
the hard coat layer is located closer to the front surface than the resin layer in the
optical film;
the hard coat layer is located closer to the front surface than the resin layer and the decorative layer in the optical film;
the resin layer has a film thickness of 30 µm or more and 500 µm or less; and
the resin layer has a film thickness of 30 µm or more and 500 µm or less; and
the resin layer has a Martens hardness of 1 MPa or more and 100 MPa or less.
the resin layer has a Martens hardness of 1 MPa or more and 100 MPa or less.
Regarding claim 2, see claim 3 of the patent.
Regarding claim 3, see claim 4 of the patent.
Regarding claim 4, see claim 6 of the patent.
Regarding claim 5, see claim 7 of the patent.
Regarding claim 6, see claim 8 of the patent.
Regarding claim 7, see claim 9 of the patent.
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)(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 1-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hashimoto et al. (US 2020/0386917) .
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Hashimoto discloses a foldable optical film (10, fig. 1, para. 0023, 0025) with a front surface (10A) and a back surface opposite to the front surface (10B), comprising:
a light-transmitting base material (11, paras. 0024 and 0053), a hard coat layer (12, para. 0024), and a resin layer (13, para. 0024),
wherein the light-transmitting base material (11) is a base material containing a polyimide resin, a polyamide resin, or a combination thereof (para. 0054);
the hard coat layer (12) is located closer to the front surface (10A) than the resin layer (13) in the optical film (10) (para. 0024);
the resin layer (13) has a film thickness of 30 µm or more and 500 µm or less (such as 50 µm or more and 300 µm or less, para. 0139); and
the resin layer (13) has a Martens hardness of 1 MPa or more and 100 MPa or less (the back surface 40B of the optical film 40 corresponds to the surface 13A of the resin layer 13 inclusive 3 MPa or more and 150 MPa or less, paras. 0152 and 0154-0155).
Regarding claim 2, Hashimoto discloses the hard coat layer (12), the light-transmitting base material (11), and the resin layer (13) arranged in this order from the front surface (10A) to the back surface (10B) in the optical film (fig. 1).
Regarding claim 3, Hashimoto discloses the hard coat layer (12), the resin layer (11), and the light-transmitting base material (13, para. 0138) arranged in this order from the front surface to the back surface in the optical film.
Regarding claim 4, Hashimoto discloses the resin layer has a film thickness of
50 µm or more and 500 µm or less (para. 0139).
Regarding claim 5, Hashimoto discloses no crack or break is formed in the optical film when the optical film is folded in a manner that leaves a gap of 30 mm between the opposite edges, and then unfolded, and the process is repeated one hundred thousand times (para. 0030).
Regarding claim 5, Hashimoto discloses an image display device (50, fig. 6, para. 0173), comprising:
a display panel (53); and the optical film (10) placed on the observer's side of the display panel,
wherein the front surface (10A) of the optical film is closer to the observer's side than the back surface of the optical film (para. 0173).
Regarding claim 6, Hashimoto discloses the display panel is an organic light-emitting diode panel (para. 0175).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ogasawara et al. (US 2020/0144553 A1) disclose display device comprises the substrate includes a hard coat layer and a resin film. In the optical laminate, the hard coat layer may be arranged on the surface of the resin film on the opposite side to the polarizer (para. 0054).
Nodono et al. (US 2018/0370207 A1) discloses a flexible device comprises resin film 10, the adhesiveness between the resin film 10 and the functional layer 20 having a function of surface hardness enhancement (hard coat layer), the functional layer 20 can have a high surface hardness (para. 0105).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER T NGUYEN whose telephone number is (571)272-7696. The examiner can normally be reached Mon-Fri 7:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin C Lee can be reached at 5712722963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER T NGUYEN/Primary Examiner, Art Unit 2629