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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/13/2026 has been entered.
Response to Amendment
The amendments to the claims, in the submission dated 03/13/2026, are acknowledged and accepted. Claims 1 and 16 are amended. Claims 1-2 and 4-20 are pending.
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, 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.
Claims 1-2, 4-8, 10, 14-15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Santan et al. US Patent 10,191,305 B2 (of record, see Office action dated 09/05/2025, hereinafter, “Santan”) in view of Miyamoto et al. US PGPub 2019/0310394 A1 (hereinafter, “Miyamoto”).
Regarding amended independent claim 1, Santan discloses an interference layer system (refer to abstract disclosing a thin film coating, equivalent to an interference layer system), comprising:
a plurality of optically transparent layers (Fig. 2, thin film coating 18 comprises at least eight layers and preferably ten layers, col. 4, lines 15-18) having no carrier substrate (thin film coating is applied to front surface 14 of ophthalmic lens system 10, see Fig. 2, refer to col. 3 lines 9-10, therefore Santan does not teach the use of a carrier substrate), the optically transparent layers being disposed extensively over one another (thin film coating 18 comprises multiple layers of alternating high and low index materials, col. 3, lines 65-67, therefore the optically transparent layers of film coating 18 are disposed extensively over one another), wherein the optically transparent layers are selected from the group consisting of dielectrics (thin film coating 18 may be materials known in the art, such as metal oxides and metal fluorides, e.g., TiO2, ZrO2, HfO2, and SiO2, MgF2, and Al2O3, col. 3 line 65 to col. 4 line 6, and these materials are dielectric materials), with at least one first optically transparent layer having a refractive index n1 and at least one second optically transparent layer having a refractive index n2, and with the first refractive index n1 and a second refractive index n2 differing by at least 0.1 (Santan teaches thin film coating 18 comprises alternating layers of high and low index materials, where high index materials are those materials having an index of refraction greater than 1.9, and the low index materials as having an index of refraction of less than 1.8, col. 3 line 67 to col. 4 line 6, thereby teaching materials with two different refractive indices, n1 and n2, that differ by at least 0.1),
wherein a reflection curve of the interference layer system in a wavelength range from 300 nm to 800 nm has at least two regions of different reflection (Figs. 3-6 are data plots of reflectance and wavelength from 300 nm to 700 nm for embodiments of the ophthalmic lens system disclosed, col. 2 lines 52-59, where Fig. 3 has a primary reflection region and a secondary reflection region 32, col. 5, lines 65-67, Fig. 4 has a primary reflection region and a secondary reflection region 42, col. 6, lines 43-46, Fig. 5 has a primary reflection region and a secondary reflection region 52, col. 7, lines 16-18, and Fig. 6 has a primary reflection region and a secondary reflection region 62, col. 7 lines 58-60, therefore Santan discloses an interference layer system with at least two regions of different reflection),
wherein the interference layer system contains no purely metallic layers and no layers containing elemental metal (Santan discloses only metal oxides or metal fluorides for the thin film coating 18, col. 3 lines 65-67),
wherein an overall thickness of the interference layer system is from 40 nm to 5 mm (Tables 1-4 list the layers of thin film coating 18 of different embodiments with the total thickness of coating 18 ranging from 546 nm for Example 3 to 585 nm for Example 4, within the claimed range),
wherein the reflection curve of the interference layer system has a reflection of at least 70% at least in a first region of at least 60% of a full width at half maximum (FWHM), wherein FWHM = (0.6 ∙ l0) - 170 nm, with l0 = 380 nm to 600 nm (Example 1 shown in Fig. 3 has a spectral reflectance curve 30 with at least 90% reflectance from 320 nm to 420 nm, col. 5, lines 61-65, and Example 1 has a maximum reflectance of 97% at about 384 nm and a reflectance greater than 70% over the range of 310 nm to 430 nm, Example 2 shown in Fig. 4 has spectral reflectance curve 40 with a maximum reflectance of 97% at about 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, Example 3 shown in Fig. 5 has a spectral reflectance curve 50 with a maximum reflectance of 97% at 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, and Example 4 shown in Fig. 6 has a maximum reflectance of 98% at 390 nm and a reflectance of at least 90% from 340 nm to 440 nm, col. 7, lines 54-55, and Example 4 has a reflectance greater than 70% over 325 to 450 nm, therefore Santan discloses thin film coatings with 70% reflectance widths of 120 to 126 nm, which is greater than the threshold of at least 60% of the FWHM for Examples 1-4, where the widths of FWHM ranges from 133 to 137 nm and therefore the threshold ranges of 60% of the FWHM are 80 to 82 nm, and as such Santan discloses embodiments of thin film coating 18 that satisfy the limitation as currently recited),
wherein the reflection curve of the interference layer system has a reflection of < 20% at least in a second range from ≥ 1.1 ∙ l0 to ≤ 800 nm (Example 1 has secondary reflection region 32 with a peak reflectance of 15% at 490 nm, col. 5 lines 65-67, Example 2 has a secondary reflection region 42 with a peak reflectance of 10% at 490 nm, col. 6, lines 41-44, Example 3 has a secondary reflection region 52 with a peak attenuation of 5% at 490 nm, col. 7, lines 16-18, and Example 4 has a secondary reflection region 62 that has a peak reflectance of 15% at 510 nm, col. 7, lines 58-60),
wherein the optically transparent layers each contain a metal oxide in an amount of 95 to 100 wt%, based in each case on a total weight of the respective optically transparent layer (Santan discloses metal oxides as materials for thin film coating 18, col. 3 lines 65-67, see also Tables 1-4, therefore Santan discloses optically transparent layers of 100 wt% metal oxides),
wherein the interference layer system does not generate a color change or a color generation in an application medium (Santan teaches the attenuation and light transmission curve of the ophthalmic lens system disclosed therein may be determined by the thin film coating 18, which allows optical lens 12 to be colorless, col. 4 lines 43-48, therefore Santan discloses an interference layer system that does not generate a color change in an application medium, satisfying the limitation), and
wherein the interference layer system is configured as a filter or a reflector for a UV-A spectral range or an IR spectral range (thin film coating 18 reflects at least 90% in a range of 320 nm to 420 nm, col. 2, lines 15, and ultraviolet UV-A is defined as between 315 nm to 400 nm, therefore thin film coating reflects in the UV-A spectral range).
Santan does not disclose wherein the reflection curve of the interference layer system is determined for nonpolarized light in an incident angle range from 0° to 15°, nor does Santan disclose wherein the interference layer system has an average particle size from 1 mm to 500 mm (Santan discloses thicknesses of layers for the example thin films disclosed therein, refer to Tables 1-4, where thicknesses of the layers range from 21.624 nm for layer 1 in Example 3 to 153.449 nm for layer 10 in Example 4, therefore the particles comprising these layers must have a least one of the three dimensions that is not greater than the thickness of the layer of which they are a component, i.e., the particles comprising the layers of the thin films must have at least one dimension that is in the range of 21.624 nm to 153.449 nm, but Santan does not disclose any sizes for particles within the claimed range).
In the same field of invention, Miyamoto discloses anti-reflection film 100, see at least Fig. 1 thereof, with transparent film substrate 1 including a flexible transparent film 10 and a hard coat layer 11 disposed on film 10 (pars. [0019-21] thereof). Hard coat layer 11 has anti-glare property provided by transparent fine particles of metal oxides with an average particle size of 1 mm to 10 mm and more preferably 2 mm to 5 mm (par. [0034] thereof).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Miyamoto to the disclosure of Santan and produced optically transparent layers of metal oxide with average particle sizes of 2 mm to 5 mm, as taught by Miyamoto, to provide anti-glare properties to the thin film coating disclosed by Santan.
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Because the prior art device disclosed by Santan meets all the structural limitations of the claimed apparatus it therefore also meets the limitation of producing a reflection curve of the interference layer system for nonpolarized light in an incident angle range from 0° to 15°. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). See MPEP § 2114.
Therefore, because the structure of the claimed system, as identified above, is the same as that claimed, it must inherently perform the same function of producing a reflection curve for nonpolarized light in an incident angle range from 0° to 15°. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Circ. 1990).
Regarding dependent claim 2, Santan in view of Miyamoto (hereinafter, “modified Santan”) discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein a layer thickness of each optically transparent layer is in a range from 5 nm to 500 nm (Tables 1-4 show thin film coating 18 has layers ranging in thickness from 21.624 nm to 153.449 nm, satisfying the limitation).
Regarding dependent claim 4, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein the interference layer system has at least 2 low-index optically transparent layers having the refractive index n1 < 1.8 and at least 2 high-index optically transparent layers having the refractive index n2 ≥ 1.8 (Santan teaches thin film coating 18 comprises alternating layers of high and low index materials, where high index materials are those materials having an index of refraction greater than 1.9, and the low index materials as having an index of refraction of less than 1.8, col. 3 line 67 to col. 4 line 6, and refer to Tables 1-4 disclosing five layers each of low-index and high-index layers).
Regarding dependent claim 5, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein the interference layer system comprises or consists of 4 to 100 optically transparent layers (Santan Tables 1-4, thin film coating 18 is exemplified by four embodiments, each embodiment having ten layers of optically transparent material).
Regarding dependent claim 6, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein a low-index optically transparent layer has the refractive index n1 in a range from 1.3 to 1.78, and wherein the low-index optically transparent layer is selected from the group consisting of silicon oxide, aluminum oxide, magnesium fluoride, and mixtures thereof (Santan Tables 1-4, thin film coating 18 is exemplified by four embodiments of alternating SiO2 and TiO2 layers, and Santan teaches SiO2 as a low index material with an index of refraction less than 1.8, col. 4 lines 4-6, and since both the instant application and the prior art recite silicon oxide as a low-index optically transparent layer, the silicon oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 1.3 to 1.78, since refractive index is an inherent property of a material).
Regarding dependent claim 7, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein a high-index optically transparent layer has the refractive index n2 in a range from 2.0 to 2.9, and wherein the high-index optically transparent layer is selected from the group consisting of titanium oxide, iron oxide, niobium oxide, tantalum oxide, zirconium oxide, chromium oxide, cerium oxide, cobalt oxide, and mixtures thereof (Santan Tables 1-4, thin film coating 18 is exemplified by four embodiments of alternating SiO2 and TiO2 layers, and Santan teaches TiO2 as a high index material with an index of refraction greater than 1.9, col. 3 line 67 to col. 4 line 4, and since both the instant application and the prior art recite titanium oxide as a high-index optically transparent layer, the titanium oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 2.0 to 2.9, since refractive index is an inherent property of a material).
Regarding dependent claim 8, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein each optically transparent layer consists of a metal oxide (Santan Tables 1-4, layers of thin film coating 18 are alternating SiO2 and TiO2, which are metal oxides).
Regarding dependent claim 10, modified Santan discloses the interference layer system as claimed in claim 1, but the prior art combination does not explicitly disclose wherein the interference layer system has a same reflection property in a range of up to 10 percentage points of the regions corresponding to one another in the following optical entry and exit media:
air with a refractive index at 550 nm of n = 1.000; or
water with a refractive index at 550 nm of n = 1.330; or
oily/fatty substances with a refractive index at 550 nm of n = 1.400.
Because the structure of the prior art system, as identified above, is the same as that claimed, it must inherently perform the same function of having the same reflection property in a range of up to 10 percentage points of the regions corresponding to one another in the following optical entry and exit media: air with a refractive index at 550 nm of n = 1.000; or water with a refractive index at 550 nm of n = 1.330; or oily/fatty substances with a refractive index at 550 nm of n = 1.400. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Circ. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPA 528, 531 (CCPA 1950. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See also MPEP §2114.
Regarding dependent claim 14, modified Santan discloses an optical filter, and Santan further discloses wherein the optical filter is or comprises the interference layer system as claimed in claim 1 (refer to rejection of claim 1 above, where thin film coating 18 of Santan is the interference layer system that acts as an optical filter).
Regarding dependent claim 15, modified Santan discloses an application medium comprising: the interference layer system as claimed in claim 1 (refer to rejection of claim 1 above).
Regarding dependent claim 21, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein the reflection curve of the interference layer system has the reflection of at least 80% at least in the first region of at least 60% of the full width at half maximum (FWHM), and/or wherein the reflection curve of the interference layer system has the reflection of at least 70% at least in the first region of at least 65% of the full width at half maximum (FWHM) (Example 1 shown in Fig. 3 of Santan has a spectral reflectance curve 30 with at least 90% reflectance from 320 nm to 420 nm, col. 5, lines 61-65, and Example 1 has a maximum reflectance of 97% at about 384 nm and a reflectance greater than 70% over the range of 310 nm to 430 nm, Example 2 shown in Fig. 4 has spectral reflectance curve 40 with a maximum reflectance of 97% at about 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, Example 3 shown in Fig. 5 has a spectral reflectance curve 50 with a maximum reflectance of 97% at 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, and Example 4 shown in Fig. 6 has a maximum reflectance of 98% at 390 nm and a reflectance of at least 90% from 340 nm to 440 nm, col. 7, lines 54-55, and Example 4 has a reflectance greater than 70% over 325 to 450 nm, therefore Santan discloses thin film coatings with 70% reflectance widths of 120 to 126 nm, which is greater than the threshold of at least 65% of the FWHM for Examples 1-4, where the widths of FWHM ranges from 133 to 137 nm and therefore the threshold ranges of 65% of the FWHM are 87 to 89 nm, and as such Santan discloses embodiments of thin film coating 18 that satisfy the limitation as currently recited).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Santan in view of Miyamoto as applied to claim 1 above, and further in view of Aubé US PGPub 2015/0253478 A1 (of record, see Office action dated 09/05/2025, hereinafter, “Aubé”).
Regarding dependent claim 9, modified Santan discloses the interference layer system as claimed in claim 1, and Santan further discloses wherein a refractive index difference between two adjacent optically transparent layers is at least 0.90 (Santan teaches thin film coating 18 comprises alternating layers of SiO2 and TiO2, see Tables 1-4, and Santan teaches SiO2 as a low index material with an index of refraction less than 1.8, col. 4 lines 4-6, and since both the instant application and the prior art recite silicon oxide as a low-index optically transparent layer, the silicon oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 1.3 to 1.78, see rejection of claim 6 above, and Santan teaches TiO2 as a high index material with an index of refraction greater than 1.9, col. 3 line 67 to col. 4 line 4, and since both the instant application and the prior art recite titanium oxide as a high-index optically transparent layer, the titanium oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 2.0 to 2.9, see rejection of claim 7 above, since refractive index is an inherent property of a material, therefore the prior art teaches a refractive index difference between two adjacent optically transparent layers is at least 0.90).
The prior art combination of Santan in view of Miyamoto does not disclose wherein the interference layer system comprises at least 20 optically transparent layers.
With regard to the limitation of an interference layer system with at least 20 optically transparent layers, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include multiple layers in the interference coating, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977). In this case, Santan teaches the interference coating may have up to ten layers and that more than ten layers are possible (col. 4, lines 12-24), and applying further layers of the same materials in the same way is considered to involve only routine skill in the art, with predictable, but not unexpected, results.
Nevertheless, in the same field of invention, Aubé discloses a multilayer optical interference filter (refer to abstract and see at least Fig. 6) where some of the embodiments use 22 layers (Fig. 4B) and another embodiment uses 28 layers (Fig. 4C) of alternating TiO2 and SiO2 layers (par. [0045]). Therefore, Aubé provides multiple embodiments with up to 28 alternating layers, demonstrating the feasibility and utility of an interference filter having more than twenty layers. Accordingly, it would have been obvious to one of ordinary skill in the art, seeking to improve spectral performance or selectivity, to increase the number of alternating layers beyond ten (e.g., to at least twenty), as such an arrangement is taught and exemplified in the prior art.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Santan and Miyamoto as applied to claim 1 above, and further in view of Pfaff et al. US PGPub 2003/0017316 A1 (of record, see IDS dated 08/19/2021, hereinafter, “Pfaff”).
Regarding dependent claim 11, modified Santan discloses a method for producing an interference layer system as claimed in claim 1, and Santan further discloses the method comprising: applying a plurality of optically transparent layers in succession to generate the interference layer system (Santan teaches the layers of alternating high and low index materials that comprise thin film coating 18 may be applied by chemical vapor deposition and physical vapor deposition, col. 4, lines 25-32).
The prior art combination of Santan and Miyamoto does not explicitly disclose the method further comprises providing an extensive carrier substrate material; applying a release layer to the extensive carrier substrate material and detaching the interference layer system from the extensive carrier substrate material at the release layer.
In the same field of invention, Pfaff discloses an optical multilayered system produced with belt-shaped supports present during vapor deposition, the supports coated with a release layer if the multilayered system is to be used detached from the support, and the multilayered system can be detached from the support as a film (Pfaff, par. [0063]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Pfaff to the disclosure of Santan to use a release layer in the vapor deposition of the interference coating layers of thin film coating 18, for ease of removal of coating 18 for use as a film to be applied to other materials (Pfaff, par. [0063]).
Regarding dependent claim 12, Santan in view of Miyamoto and Pfaff discloses the method as claimed in claim 11, and Santan further discloses the method comprising: applying the optically transparent layers by vapor deposition (Santan teaches the layers of alternating high and low index materials that comprise thin film coating 18 may be applied by chemical vapor deposition and physical vapor deposition, col. 4, lines 25-32).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Santan in view of Miyamoto and Pfaff as applied to claim 11 above, and further in view of Ivkovich, JR. et al. US PGPub 2005/0079284 A1 (of record, see Office action dated 04/24/2024, hereinafter, “Ivkovich”).
Regarding dependent claim 13, Santan in view of Miyamoto and Pfaff discloses the method as claimed in claim 11, but the prior art combination does not disclose the method further comprising: forming the release layer from a water-soluble inorganic salt.
In a related field of invention, Ivkovich teaches and optical coating 24 with a deposition substrate 30 to which a first release system 32 is applied, wherein the first release system 32 could be of inorganic salts (par. [0027] thereof). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Ivkovich to the disclosure of Santan and used a release layer of inorganic salt that is soluble in water for ease of release with an easily available resource such as water (Ivkovich, par. [0033]).
Claims 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Santan in view of Miyamoto and Aubé.
Regarding amended independent claim 16, Santan discloses an interference layer system (refer to abstract disclosing a thin film coating, equivalent to an interference layer system) comprising:
optically transparent layers disposed in alternation over one another and having respectively different refractive indices (Fig. 2, thin film coating 18 comprises at least eight layers and preferably ten layers, col. 4, lines 15-18, and thin film coating 18 comprises multiple layers of alternating high and low index materials, col. 3, lines 65-67),
wherein a reflection curve of the interference layer system in a wavelength range of 300 nm and 800 nm has at least two regions of different reflection (Figs. 3-6 are data plots of reflectance and wavelength from 300 nm to 700 nm for embodiments of the ophthalmic lens system disclosed, col. 2 lines 52-59, where Fig. 3 has a primary reflection region and a secondary reflection region 32, col. 5, lines 65-67, Fig. 4 has a primary reflection region and a secondary reflection region 42, col. 6, lines 43-46, Fig. 5 has a primary reflection region and a secondary reflection region 52, col. 7, lines 16-18, and Fig. 6 has a primary reflection region and a secondary reflection region 62, col. 7 lines 58-60), and at least one wavelength range of these at least two wavelength ranges has a reflection of at least 70% in a region of at least 60% of the full width at half maximum (FWHM), where FWHM = (0.6 ∙ l0) - 170 nm, wherein l0 = 380 nm to 600 nm (Example 1 shown in Fig. 3 has a spectral reflectance curve 30 with at least 90% reflectance from 320 nm to 420 nm, col. 5, lines 61-65, and Example 1 has a maximum reflectance of 97% at about 384 nm and a reflectance greater than 70% over the range of 310 nm to 430 nm, Example 2 shown in Fig. 4 has spectral reflectance curve 40 with a maximum reflectance of 97% at about 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, Example 3 shown in Fig. 5 has a spectral reflectance curve 50 with a maximum reflectance of 97% at 380 nm and a reflectance greater than 70% over 310 nm to 430 nm, and Example 4 shown in Fig. 6 has a maximum reflectance of 98% at 390 nm and a reflectance of at least 90% from 340 nm to 440 nm, col. 7, lines 54-55, and Example 4 has a reflectance greater than 70% over 325 to 450 nm, therefore Santan discloses thin film coatings with 70% reflectance widths of 120 to 126 nm, which is greater than the threshold of at least 60% of the FWHM for Examples 1-4, where the widths of FWHM ranges from 133 to 137 nm and therefore the threshold ranges of 60% of the FWHM are 80 to 82 nm, and as such Santan discloses embodiments of thin film coating 18 that satisfy the limitation as currently recited),
wherein the interference layer system contains no purely metallic layers and/or layers containing elemental metal (Santan discloses only metal oxides or metal fluorides for the thin film coating 18, col. 3 lines 65-67),
wherein an overall thickness of the interference layer system is from 40 nm to 5 mm (Tables 1-4 list the layers of thin film coating 18, the total thickness ranging from 546 nm for Example 3 to 585 nm for Example 4),
wherein at least one region, which is different from the at least one wavelength range of these at least two wavelength ranges, has a reflection of < 20% in a range from > 1.1 ∙ l0 to ≤ 800 nm (Example 1 has secondary reflection region 32 with a peak reflectance of 15% at 490 nm, col. 5 lines 65-67, Example 2 has a secondary reflection region 42 with a peak reflectance of 10% at 490 nm, col. 6, lines 41-44, Example 3 has a secondary reflection region 52 with a peak attenuation of 5% at 490 nm, col .7, lines 16-18, and Example 4 has a secondary reflection region 62 that has a peak reflectance of 15% at 510 nm, col. 7, lines 58-60),
wherein the optically transparent layers each contain a metal oxide in an amount of 95 to 100 wt%, based in each case on a total weight of the respective optically transparent layer (Santan discloses metal oxides as materials for the thin film coating 18, col. 3 lines 65-67, see also Tables 1-4, therefore Santan discloses optically transparent layers of 100 wt% metal oxides),
wherein the interference layer system does not generate a color change or a color generation in an application medium (Santan teaches the attenuation and light transmission curve of the ophthalmic lens system disclosed therein may be determined by the thin film coating 18, which allows optical lens 12 to be colorless, col. 4 lines 43-48, therefore Santan discloses an interference layer system that does not generate a color change in an application medium, satisfying the limitation), and
wherein the interference layer system is configured as a filter or a reflector for a UV-A spectral range or an IR spectral range (thin film coating 18 reflects at least 90% in a range of 320 nm to 420 nm, col. 2, lines 15, and ultraviolet UV-A is defined as between 315 nm to 400 nm, therefore thin film coating 18 reflects in the UV-A spectral range).
Santan does not disclose at least 20 optically transparent layers, nor does Santan disclose wherein the reflection curve of the interference layer system is determined for nonpolarized light in an incident angle range from 0 to 15°, and Santan does not disclose wherein the interference layer system has an average particle size from 1 mm to 500 mm
In the same field of invention, Miyamoto discloses anti-reflection film 100, see at least Fig. 1 thereof, with transparent film substrate 1 including a flexible transparent film 10 and a hard coat layer 11 disposed on film 10 (pars. [0019-21] thereof). Hard coat layer 11 has anti-glare property provided by transparent fine particles of metal oxides with an average particle size of 1 mm to 10 mm and more preferably 2 mm to 5 mm (par. [0034] thereof).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Miyamoto to the disclosure of Santan and produced optically transparent layers of metal oxide with average particle sizes of 2 mm to 5 mm, as taught by Miyamoto, to provide anti-glare properties to the thin film coating disclosed by Santan.
With regard to the limitation regarding wherein the reflection curve of the interference layer system is determined for nonpolarized light in an incident angle range from 0° to 15°, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Because the prior art device meets all the structural limitations of the claimed apparatus it therefore also meets the limitation of producing a reflection curve of the interference layer system for nonpolarized light in an incident angle range from 0° to 15°. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). See MPEP § 2114. Because the structure of the claimed system, as identified above, is the same as that claimed, it must inherently perform the same function of producing a reflection curve for nonpolarized light in an incident angle range from 0° to 15°. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Circ. 1990).
With regard to the limitation of an interference layer system with at least 20 optically transparent layers, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include multiple layers in the interference coating, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977). In this case, Santan teaches the interference coating may have up to ten layers and that more than ten layers are possible (col. 4, lines 12-24), and applying further layers of the same materials in the same way is considered to involve only routine skill in the art, with predictable, but not unexpected, results.
Nevertheless, in the same field of invention, Aubé discloses a multilayer optical interference filter (refer to abstract and see at least Fig. 6) where some of the embodiments use 22 layers (Fig. 4B) and another embodiment uses 28 layers (Fig. 4C) of alternating TiO2 and SiO2 layers (par. [0045]). Therefore, Aubé provides multiple embodiments with up to 28 alternating layers, demonstrating the feasibility and utility of interference filter having more than twenty layers. Accordingly, it would have been obvious to one of ordinary skill in the art, seeking to improve spectral performance or selectivity, to increase the number of alternating layers beyond ten (e.g., to at least twenty), as such an arrangement is taught and exemplified in the prior art.
Regarding dependent claim 17, Santan in view of Miyamoto and Aubé discloses the interference layer system as claimed in claim 16, and Santan further discloses wherein exactly one wavelength region of the at least two wavelength regions has a reflection of at least 70% in a region of at least 60% of the FWHM (Figs. 3-6 of Santan are data plots of reflectance and wavelength from 300 nm to 700 nm for embodiments of the ophthalmic lens system disclosed, col. 2 lines 52-59, where each embodiment has a primary reflection peak of at least 70% reflectance in a region of at least 60% of the FWHM as discussed in the rejection of claim 1 above, therefore Santan discloses embodiments of thin film coating 18 that satisfy the limitation as currently recited).
Regarding dependent claim 18, Santan in view of Miyamoto and Aubé discloses the interference layer system as claimed in claim 16, and Santan further discloses wherein a refractive index difference between two adjacent optically transparent layers is at least 0.90 (Santan teaches thin film coating 18 comprises alternating layers of SiO2 and TiO2, see Tables 1-4, and Santan teaches SiO2 as a low index material with an index of refraction less than 1.8, col. 4 lines 4-6, and since both the instant application and the prior art recite silicon oxide as a low-index optically transparent layer, the silicon oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 1.3 to 1.78, see rejection of claim 6 above, and Santan teaches TiO2 as a high index material with an index of refraction greater than 1.9, col. 3 line 67 to col. 4 line 4, and since both the instant application and the prior art recite titanium oxide as a high-index optically transparent layer, the titanium oxide disclosed by Santan must also satisfy the limitation of having a refractive index in a range from 2.0 to 2.9, see rejection of claim 7 above, since refractive index is an inherent property of a material, therefore the prior art teaches a refractive index difference between two adjacent optically transparent layers is at least 0.90).
Regarding dependent claim 20, Santan in view of Miyamoto and Aubé discloses the interference layer system as claimed in claim 16, but the prior art combination does not disclose wherein the interference layer system has a layer sequence 0.227 T / 1.097 L / 0.661 T / 0.793 L / 1.109 T / 0.668 L / 1.083 T/ 0.922 L/ 0.810 T/ 0.971 L/ 1.012 T/ 0.708 L/ 1.153 T/1.055L/ 0.611T/ 0.939 L/ 1.340 T / 0.263 L/ 1.458 T / 1.564 L, with the optical layer thicknesses in l0/4, with a refractive index for T at 550 nm of n = 2.420, and a refractive index for L at 550 nm of n = 1.468.
It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See MPEP §2144.05. In the instant case, the prior art teaches layer thicknesses ranging from 21 to 153 nm for the multilayer interference film coating 18 disclosed by Santan (see Tables 1-4 thereof), which is so close to the claimed range of 31 to 215 nm (as calculated by Examiner from the coefficients for T and L provided, with l0 = 550 nm as recited in claim 20) that prima facie one skilled in the art would have expected them to have the same properties. Thus, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to choose layer thicknesses such that the interference layer system of Santan would reflect the desired wavelength range with the desired reflectance, since it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Thus, the prior art discloses the claimed invention except for the specific sequence of layer thicknesses recited in claim 20. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to adjust the layer thicknesses of the interference coating, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the current instance, the various thicknesses of an interference coating is an art-recognized results-effective variable in that adjusting the thicknesses of layers of an interference coating will change the optical characteristics of the device, as taught by Santan col. 4, lines 12-24 (“The number of layers and the thickness of the high and low index materials in each layer determine the characteristics of the attenuation of transmission of light and spectral reflectance curve of the thin film coating”). Thus, one would have been motivated to optimize the various thicknesses of the layers of the alternating sequence of layers because it is an art-recognized results-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) See MPEP §2144.05(ID)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation fora person of ordinary skill in the art to experiment to reach another workable produce or process.”
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Santan in view of Miyamoto and Aubé as applied to claim 16 above, and further in view of Greenberg et al. US PGPub 2003/0027000 A1 (of record, see Office action dated 04/24/2024, hereinafter, “Greenberg”).
Regarding dependent claim 19, Santan in view of Miyamoto and Aubé discloses the interference layer system as claimed in claim 16, but the prior art combination does not disclose wherein the interference layer system has a surface roughness of ≤ 3 nm rms.
In a related field of invention, Greenberg teaches coating 24 (see at least Fig. 1 thereof) can have a root mean square (RMS) surface roughness of less than 3 nm (Greenberg, par. [0022]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Greenberg to the disclosure of Santan to produce an interference layer coating with a surface roughness of less than 3 nm, to form a thin dense film on a substrate (Greenberg, par. [0052]).
Response to Arguments
Applicant's arguments filed 03/13/2026 have been fully considered but they are not persuasive.
Applicant has argued that the prior art applied in the Office action of 01/16/2026 does not suggest an interference layer in the form of particles with an average particle size. However, Miyamoto is cited as a secondary reference to teach particle sizes in the claimed range for an optical thin film, see rejection above, therefore the prior art teaches the limitations of claim 1 and claim 16 above.
Applicant has argued that secondary references Aubé, Pfaff, Ivkovich, and Greenberg are not applied in a manner to cure the deficiencies of the primary reference Santan with respect to claims 9 and 11-13. However, no arguments are presented as to how and why the secondary references fail to teach or suggest the limitations claimed. Counsel's assertion that Aubé, Pfaff, Ivkovich, and Greenberg do not cure the deficiencies of Santan is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 2129, 2144.03, 716.01(c).
No other substantial arguments were presented after page 10 of Remarks. Therefore the prior art teaches the invention as currently claimed.
Conclusion
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/JUSTIN W. HUSTOFT/ Examiner, Art Unit 2872
/THOMAS K PHAM/ Supervisory Patent Examiner, Art Unit 2872
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