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 .
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.
Claims 1, 4-9, 11-14 are pending. Applicant’s previous election of Formula G and tetraethoxysilane still applies. No claims are currently withdrawn.
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Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/21/25 has been entered.
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 rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If 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.
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.
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 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 4-9, 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leivo (U.S. 2018/0127308) in view of Murugesan et al. (U.S. 2018/0148600).
Regarding claims 1, 4-9, 11-14, Leivo teaches silica films (thickness overlapping claim 1, [0117]) for providing scratch resistance and hardness (overlapping claimed pencil hardness range) to plastic substrates (as in claims 12-13, [0074]) and teaches that such a film may be made by condensation of only silane compounds within the scope of formula A and/or B (e.g., tetralkoxysilane, bistriethoxysilyl ethane, and/or 1-4 carbon alkyl trialkoxysilanes), which forms a silica network (consisting of the claimed silane compounds, with no other required solid ingredients such that the silica network is substantially 100% of the cured layer), and with the silane compounds being partially condensed prior to coating and then fully polymerized after being coated (see abstract, [0001], [0012], [0032]-[0043], [0141]-[0159], [0196], [0207]-[0217]). There are no required Si-N linkages as claimed.
The above process from Leivo of partial condensation prior to full condensation appears to fall within a sol-gel process as claimed (i.e., the individual compounds would start out in solution as a sol and gel as the condensation reaction proceeds). Even without this teaching from Leivo, the sol-gel limitation is a product by process limitation that is not given patentable weight as it does not require any difference in the final structure of the silica film compared to the silica film of Leivo. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Leivo does not disclose the claimed nitrogen compound. However, Murugesan is also directed to curing partially condensed siloxane compositions for form hard coatings ([0006], [0058]-[0059]), as called for in Leivo, that includes a “super base” catalyst, ([0006]), such as 2-undecylimidazole, ([0042]), which inherently meets the limitations of claims 7-10, to allow for lower amounts of catalyst to be used and to provide improved properties ([0006]), with amounts ranging from 1 to 75 ppm ([0018]). Thus, it would have been obvious to have used the catalyst from Murugesan as the catalyst in Leivo because it provides the desired catalysis properties while allowing for less of the catalyst to be used and while providing improved properties ([0006]).
The above amount of catalyst in Murugesan overlaps the nitrogen amount in claim 11.
Leivo does not require any silazane compounds or otherwise require any Si-N bonds, as in claim 6.
Regarding the properties of claims 1, 4, 5, although modified Leivo does not explicitly disclose these properties as claimed, given the overlap in modified Leivo regarding the type and amount of materials used for the silica layer compared to the present application, these claimed properties would inherently be present in the embodiments of modified Leivo that overlap the embodiments of the present application.
The type of plastic substrate in Leivo as discussed above is never specified, but any plastic material is inherently either high or low refractive index compared to the silica coating formed thereon, as in claim 14. Additionally, Murugesan teaches that suitable specific plastic substrate materials ([0064]), which are inherently “hard coating films” compared to softer materials and are inherently either high or low refractive index, and also disclose PET primer (in which case the primer would correspond to the claimed functional film, and with PET inherently being either high or low refractive index) for receiving silica hard coatings, as in claims 1 and 14, and it would have been obvious to have used those types of plastics for the general plastic called for in Leivo and/or as a primer (to improve adhesion) because Murugesan teaches that they benefit from the types of silica hard coatings as taught by Leivo.
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, 4-9, 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9, 12-17 of copending Application No. 17268539. The claims are not identical but they are not patentably distinct.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4-9, 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, 12-16 of copending Application No. 17284130. The claims are not identical but they are not patentably distinct.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the present application requires Si-N bonds which is the opposite of what is true.
For secondary factors, it is unclear what Applicant is referring to but the claims are not commensurate in scope with the present examples.
The double patenting rejections are maintained.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights