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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
`
`03/06/2020
`
`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):
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`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`8-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 8-10 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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)L) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 7/14/2019 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)LJ Some**
`a)Y) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4) Copies of the certified copies of the priority documents have been receivedin 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)
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`1)
`
`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 7/14/2019.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20200224
`
`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
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`1) Responsive to communication(s) filed on 7/14/2019.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)(J This action is FINAL. 2b))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.
`
`Claim Rejections - 35 USC § 102
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`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.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section madein this Office action:
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`A personshall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwiseavailable to the public before the effectivefiling 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, namesanother inventor and waseffectivelyfiled
`before the effective filing date of the claimed invention.
`
`Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated
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`by Okano (US Pub 2010/0104879).
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`As to claim 8, a coating composition (clear hard coatfilm [0048] and [0049])
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`comprising: a fluororesin ([0063] LUMIFLON, ZAFLON or FLUONATE; [0063)) that
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`imparts water repellency and includes a hydroxyl group ([0063] LUMIFLON, ZAFLON or
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 3
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`FLUONATE; [0063]); a hydrophilic material (Aerosil 300) that imparts hydrophilicity
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`(Aerosil 300) and includes a hydroxyl group (Aerosil 300 includes hydroxyl group); and
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`a bonding material (aerosil has silanol groups; alternatively bonding material can be
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`isocyanate group; [0062]) that has a plurality of functional groups to be bonded to
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`hydroxyl groups and bonds the fluororesin and the hydrophilic material to each other
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`([0062]), wherein the hydrophilic material (Aerosil 300) is silica microparticles ([0148]-
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`[0150] Aerosil 300) with an average particle size of 1 nm to 1([0150] Aerosil 300 has an
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`average primary particle size of 7 nm.), and the bonding material is at least either one of
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`a silanol compound (Aerosil 300 has silanol groups) and alkoxysilane, and wherein the
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`coating composition does not contain metal-containing particles that forms an
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`electroconductive path ([0175] “may” = optional).
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`As to claim 9, Okano discloses an optical member (uppermost layer of a display
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`device; abstract; [0007], [0002]) comprising a coating film obtained from the
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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).
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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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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 4
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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.
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`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:
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`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 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibata
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`et al. (US Pub. 2002/0043012) in view of Okano.
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`Shibata discloses anilluminator (title) comprising: a light-guiding plate (Fig. 3;
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`10+40) composedof the optical member (10 light guide plate+40 hard coat treatment of
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`light emission observable surface); and a light source (21 LEDs) that emits light to be
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`madeincident onto the light-guiding plate (10) except for the optical member according
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`to claim 9.
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`Okano teachesthe optical member according to claim 9 (see rejection to claim
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`Therefore, it would have been obvious to one of ordinary skill, in the art, before
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`the effective filing date of the claimed invention, to use the optical member (hard coat
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`film on a transparent substrate) as taught by Okano for the optical member as disclosed
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`by Nagaseto utilize simple substitution of one chard coat layer on a substrate for
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`another to obtain predictable results and/or to provide protection for a layer and
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`especially for an uppermostlayer of a display device ([0015]) and/or to prove a clear
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
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`Page 5
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`hard coat layer that has excellentfilm strength and inhibits deterioration offilm strength
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`({0016)]).
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure. Ito et al. (US Pub. 2001/0034396) discloses Aerosil 300 is made
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`up of silica fine grains of diameter 7 nm with hydroxyl groups and silanol group ([0057)).
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`Morita et al. (US Pub. 2006/0058440) discloses some of the ingredients of Aerosil 200
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`([0079]) which shows Aerosil 200 contains silica particles of average size of primary
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`particles of 5-15 nm and a surface silanol density. Oishi (US Pub 2014/0249258)
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`discloses that Aerosil 300 includes surface group is silanol group.
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`Any inquiry concerning this communication or earlier communications from the
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`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
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Anh Mai can be reached on 571-272-1995. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/477,895
`Art Unit: 2875
`
`Page 6
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`
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`
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`
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`272-1000.
`
`/GLENN D ZIMMERMAN/
`Examiner, Art Unit 2875
`
`/Matthew J. Peerce/
`Primary Examiner, Art Unit 2875
`
`