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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/477,895
`
`07/14/2019
`
`Hiroki SHIGENO
`
`MIYOPO1IS3WOUS
`
`1016
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`ZIMMERMAN, GLENN D
`
`2875
`
`07/30/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`8-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CJ] Claim(s)__ is/are allowed.
`Claim(s) 8-11 is/are rejected.
`OO Claim(s)__is/are objectedto.
`CC) Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20200709
`
`Application No.
`Applicant(s)
`16/477,895
`SHIGENO, Hiroki
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`GLENN ZIMMERMAN
`2875
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 6/03/2020.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Response to Amendment
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`The Amendment, filed on 6/03/2020 has been entered and acknowledged
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`by the Examiner.
`
`In the instant applications, claims 8-11 have been considered and
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`examined. Claims 1-7 have been canceled.
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 8-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA the
`
`applicant regards asthe invention.
`
`Claim 8 recites a first recitation of “and the bonding material is at least either one
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`of a silanol compound and alkoxysilane” and then it recites a second recitation of “the
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`silanol compound being one in which the alkoxy groupsin the alkoxysilane are partially
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 3
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`subjected to hydrolysis to become silanol groups”. This recitation is ok if both options
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`are chosen in the first recitation, but would have antecedent basis issues if the both
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`options in the first recitation are not chosen.
`
`For the purpose of examination, the recitation of “and the bonding material is at
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`least either one of a silanol compound and alkoxysilane’”will be interpreted as “and the
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`bonding material comprises a silanol compound and an alkoxysilane’.
`
`The remaining claims are rejected for depending from a rejected baseclaim 8.
`
`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
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`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 madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`Claim(s) 8, 9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Mizutani et al. (USPN 6,013,724).
`
`As to claim 8, Mizutani discloses a coating composition (Claim 9) comprising: a
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`fluororesin that imparts water repellency and includes a hydroxyl group (claim 12); a
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`hydrophilic material that imparts hydrophilicity and includes a hydroxyl group (col. 12
`
`lines 57-65; SIOH is a hydroxyl group); and a bonding material (claim 8 Alkoxysilane
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 4
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`compound) that hasa plurality of functional groups to be bondedto hydroxyl groups and
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`bonds the fluororesin and the hydrophilic material to each other (claim 8), wherein the
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`hydrophilic material is silica microparticles with an average particle size of 1 nm to 100
`
`nm (Claim 16), and the bonding material is at least either one of a silanol compound
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`(claim 8 silanol compound) and alkoxysilane (claim 8 alkoxysilane), the silanol
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`compound being one in which the alkoxv groups in the alkoxysilane are partially
`
`subjected to hydrolysis to become silanol groups (Claims 8 and 16), and wherein the
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`coating composition does not contain metal-containing particles that forms an
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`electroconductive path (col. 41 lines 12-15 Don’t choose metal powders.).
`
`As to claim 9, Mizutani discloses an optical member comprising a coating film
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`(coating composition) obtained from the coating composition according to claim 8 (col. 7
`
`line 66-col. 8 line 2) on at least a part of a surface of the optical member (col. 7 line 66-
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`col. 8 line 2 metallic substrate is an optical member.).
`
`As to claim 11, Mizutani discloses wherein the alkoxysilane comprises at least
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`one selected from the group consisting of tetramethoxysilane (claim 8
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`tetramethoxysilane), tetraethoxysilane, methyltrimethoxysilane,
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`dimethyldimethoxysilane, phenyltrimethoxysilane, methyltriethoxysilane,
`
`dimethyldiethoxysilane, phenyltriethoxysilane, n-propyltrimethoxysilane, n-
`
`propyltriethoxysilane, hexyltrimethoxysilane, hexyltriethoxysilane, octyltriethoxysilane,
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`decyltriethoxysilane, and 1,6-bis(trimethoxysilyl)hexane.
`
`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 5
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`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 for the rejection will not be considered a new ground of
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`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
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`obviousnessrejections 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.
`
`Claim 8, 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Okano (US Pub 2010/0104879) in view of Yoshikawa et al. (US Pub.
`
`2006/0079592).
`
`As to claim 8, a coating composition (clear hard coatfilm [0048] and [0049])
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`comprising: a fluororesin ([0061]-[0063] LUMIFLON, ZAFLON or FLUONATE;; [0063])
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`that imparts water repellency and includes a hydroxyl group ([(0063] LUMIFLON,
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`ZAFLON or FLUONATE; [0063]); a hydrophilic material (Aerosil 300; [0148] and [0149])
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`that imparts hydrophilicity (Aerosil 300) and includes a hydroxyl group (Aerosil 300
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`includes hydroxyl group); and a bonding material ([0073] or [0222]
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`dimethyldimethoxysilane or others which are formula (1) mono-terminalradical
`
`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 6
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`polymerization polysiloxane which is a binder material; [0065], [0052]; monomer can
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`have hydroxyl group in the less preferred embodiment.) that has a plurality of functional
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`groups ([0052] alkyl group, methyl group, phenyl group, butyl group, hydrogen etc;
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`hydroxyl group.) to be bonded to hydroxyl groups and bonds the fluororesin and the
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`hydrophilic material to each other ([0062]), wherein the hydrophilic material (Aerosil
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`300) is silica microparticles ([0148]-[0150] Aerosil 300) with an average particle size of 1
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`nm to 1([0150] Aerosil 300 has an average primary particle size of 7 nm.), and wherein
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`the coating composition does not contain metal-containing particles that forms an
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`electroconductive path ([0175] and [0176] “may” = optional; The anti-reflection film is
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`optional as “may” is used [0200] so chooseanti-reflection film which means no electro-
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`conductive particles [0207]).
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`Yoshikawa teaches and the bonding material is at least either one of a
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`silanol compound ([0107]) and alkoxysilane ([0107]), the silanol compound ([0107])
`
`being one in which the alkoxy groups ([0107]) in the alkoxysilane ([0107]) are partially
`
`subjected to hydrolysis ([0107]) to become silanol groups ([0107]).
`
`Therefore, it would have been obvious to one of ordinary skill, in the art, before
`
`the effective filing date of the claimed invention, to use binder for a hard protective
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`coating as taught by Yoshikawafor the binder of a transparent hard coatfilm as
`
`disclosed by Okano to utilize simple substitution of one known binder for a hard coat
`
`film for another to obtain predictable results ([0107)).
`
`As to claim 9, Okano discloses an optical member (uppermostlayer of a display
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`device; abstract; [0007], [0002]) comprising a coating film obtained from the
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 7
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`coating composition according to claim 8 (see rejection to claim 8 above; clear hard
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`coatfilm; abstract; [0007], [0002]) on at least a part of a surface of the optical member
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`(abstract; [0007]; [0002] substrate).
`
`As to claim 11, Okano and Yoshikawa discloses/teaches wherein the
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`alkoxysilane comprises at least one selected from the group consisting of
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`tetramethoxysilane, tetraethoxysilane, methyltrimethoxysilane, dimethyldimethoxysilane
`
`([0222] from Okano and [0107] from Yoshikawa), phenyltrimethoxysilane ([0222]),
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`methyltriethoxysilane, dimethyldiethoxysilane, phenyltriethoxysilane, n-
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`propyltrimethoxysilane, n-propyltriethoxysilane, hexyltrimethoxysilane,
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`hexyltriethoxysilane, octyltriethoxysilane, decyltriethoxysilane, and 1,6-
`
`bis(trimethoxysilyl)hexane.
`
`Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Okano and Yoshikawain view of Shibata et al. (US Pub. 2002/0043012).
`
`Okano and Yoshikawa disclose/teach anilluminator ([(0002] LCD or PDP or ELD;
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`from Okano and [0007] from Okano) comprising the optical member according to claim
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`9 (see rejection to claim 9 above and [0007]) exceptfor an illuminator comprising: a
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`light-guiding plate composedof the optical member; and a light source that emits light to
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`be made incident onto the light-guiding plate.
`
`Shibata teachesanilluminator (title; Fig. 1) comprising: a light-guiding plate (Fig.
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`3; 10 light guide plate+40 light emission observable surface) composedof the optical
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`member (hard coat treatment of light emission observable surface.[00029]); andalight
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 8
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`source (21 LEDs) that emits light to be made incident onto the light-guiding plate
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`(10+40).
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`Therefore, it would have been obvious to one of ordinary skill, in the art, before
`
`the effective filing date of the claimed invention, to use illumination device as taught by
`
`Shibata for the illumination device as disclosed by Okano and Yoshikawato utilize a
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`light guide light emitting device with optical member (Fig. 3) for the illuminator and/or
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`simple substitution of one illuminator with optical member for another to obtain
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`predictable results.
`
`Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Mizutani in view of Shibata et al. (US Pub. 2002/0043012).
`
`Mizutani discloses comprising the optical member according to claim 9 (see
`
`rejection to claim 9 above) except for an illuminator comprising: a light-guiding plate
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`composed of the optical member; and a light source that emits light to be madeincident
`
`onto the light-guiding plate.
`
`Shibata teachesanilluminator (title; Fig. 1) comprising: a light-guiding plate (Fig.
`
`3; 10 light guide plate+40 light emission observable surface) composedof the optical
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`member ([0029] hard coat treatment of light emission observable surface.); and a light
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`source (21 LEDs) that emits light to be made incident onto the light-guiding plate
`
`(10+40+[0029] hard coat).
`
`Therefore, it would have been obvious to one of ordinary skill, in the art, before
`
`the effective filing date of the claimed invention, to use optical member as taught by
`
`Mizutani for the use of the optical member/Illuminator as disclosed by Shibatato utilize
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 9
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`the optical member with light guide light emitting device (Fig. 3) of an illuminator to
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`increase the usefulness of the optical member and/or simple substitution of one use of a
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`hard coat layer for another to obtain predictable results.
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`Responseto Arguments
`
`Applicant's arguments filed 6/03/2020 have been fully considered but they are
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`not persuasive. The applicant asserts that Okano doesnotdisclose the limitation
`
`“wherein the coating composition does not contain metal containing particles that forms
`
`an electroconductive path’. The examinernotesin [0175] of Okanothat it recites “may”.
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`“may” means the antistatic layer is optional. Additionally in [0176] which mentions
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`“may” relative to an electromagnetic wave blocking agent or a UV ray absorbentlayer.
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`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`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 shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 10
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to GLENN ZIMMERMANwhosetelephone number is
`
`(571)272-7614. The examiner can normally be reached on 9:30AM-6:30PM EST M-F.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Rajarshi (Raj) Chakraborty can be reached on 571-272-7242. The fax
`
`phone number for the organization where this application or proceeding is assigned is
`
`571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 11
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`If you would like assistance from a USPTO Customer Service Representative or access
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`
`/GLENN D ZIMMERMAN/
`Examiner, Art Unit 2875
`
`/ISIAKA O AKANBI/
`Primary Examiner, Art Unit 2886
`
`