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 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on December 30, 2025 has been entered.
The amendment filed with the RCE submission of December 30, 2035 has been received and entered. With the entry of the amendment, claims 2-4 and 7 are canceled, claim 14 is withdrawn and claims 1, 5-6, 8-13 and 15 are pending for examination.
Election/Restrictions
Applicant’s election of Species SET A: Ta, and Species SET B: Compound A of CF3O(CF2CF2O)15(CF2O)16CF2CH2OCH2CH2CH2Si[CH2CH2CH2Si(OCH3)3]3 in the reply filed on June 10, 2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 10, 2024.
Since no claims were indicted as excluded, it is understood that claims 1, 4-13 and 15 claims include these species, while claim 14 appears to clearly exclude the elected silane compound (noting the formulas given for Mitsuhashi et al (US 2015/0307719) as discussed in the rejections below, which does teach claimed species).
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 5-6, 8-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuhashi et al (US 2015/0307719) in view of Hukari et al (US 2003/0143401) and EITHER Japan 2518116 B2 (hereinafter ‘116) OR Rawat (US 2013/0142020).
Claims 1, 5-6, 9-13, 15: Mitsuhashi teaches a method for producing an article comprising a substrate and a surface-treating layer formed from a surface-treating agent containing a fluorine-containing silane compound formed thereon (note 0244, 0002), where the method can include providing a substrate (base material, which can be glass as desired by claim 15) (note 0245), where the glass substrate can be provided with a layer, such as an antireflection layer (intermediate layer) formed on the substrate (outermost layer of the base material), where this antireflection layer can be formed of a combination of inorganic oxide, including a combination of SiO2 and oxides such as Ta2O5 (noting the elected species of Ta, and as desired by claim 1) (note 0246). Thereafter, the film/layer of the surface-treating agent is formed on the surface of the base material with the intermediate layer (note 0251, where since no layer is required over the intermediate layer before the surface-treating layer applied, the surface-treating layer can be applied directly on the intermediate layer, also note 0308-0309 describing applying an SiO2 layer (anti-reflection intermediate layer, from o246), and then the surface-treating layer, with no indication of coating in between). The fluorine-containing silane compound is at least one fluoropolyether group containing compound, note 0002, 0053, which can be of the elected species formula CF3O(CF2CF2O)15(CF2O)16CF2CH2OCH2CH2CH2Si[CH2CH2CH2Si(OCH3)3]3 (note Synthesis Example 15, 0305-0306, which is demonstrated as being applied at 0311, where since the elected formula of the silane compound is used, it is understood to meet the requirements of claim 1 and 9-13, as well also note for claims 1 and 9-13, the corresponding formulas at 0053-0121).
(I) As to the intermediate layer application features of simultaneously depositing Si and the another metal (such as Ta) on the substrate to form the intermediate layer containing a composite oxide containing Si and the another metal (such as Ta), where the composite oxide constitutes a homogeneous phase, Mitsuhashi does not give the specific details of depositing the mixed materials. It is noted that the substrate can be an optical member of glass, and article produced an optical member (note o246).
Hukari notes providing an optical coating on a transparent substate (note abstract). A protective coating of scratch propagation blocker (SPB) material can be formed on the coating system (note 0002), where the SPB can be formed form oxides of Si and Ta (note 0047, 0050, where combinations can be used, note “at least one of”, note 0015), where the coating can be applied by vapor deposition techniques (note 0050), and where it is desired for the SPB layer to have a uniform composition and be homogeneous throughout (note 0036).
(A)Using ‘116, ‘116 describes how an antireflection/reflection control layer 13 can be provided over a substrate, where the layer contains a composite oxide of Silicon and additional metal such as tantalum, zirconium, titanium, etc. where adjusted refractive index, etc can be provided (note pages 1-3, translation), where to deposit the coating silicon and the other metal (such as zirconium, titanium, etc.) are described as being provided and simultaneously deposited on the substrate to form the layer as a composite oxide (note examples 1, 2, at pages 3-4, translation), where it would be understood that the same would be used to provide deposition of the other metals such as tantalum, etc. The deposition can be by a vapor depositing technique of sputtering (note page 3, translation). ‘116 also notes that it is desirable for the coating to have scratch resistance (note page 2, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mitsuhashi to provide the combined oxide intermediate layer in the form of simultaneously depositing Si and another metal such as Ta on the substrate to form an intermediate layer containing a composite oxide containing Si, where the composite oxide constitutes a homogeneous phase as suggested by Hukari and ‘116 to provide a desirable anti-reflection layer that is also scratch resistant, since Mitsuhashi indicates to provide an antireflection layer that can contain SiO2 and also another oxide from Ta that can be provided for an optical member, Hukari notes how oxides of silicon and tantalum can be provided to form an SPB scratch resistant layer for optical coatings by vapor deposition techniques and where the layer is desirably uniform composition and homogenous throughout, giving a homogeneous phase of the material and ‘116 indicates how a desirable reflection controlled layer can be provided with a composite oxide of Si and another metal such as Zr, Ti, Ta, etc. by simultaneously depositing Si and the another metal on the substrate by a vapor depositing technique to form a layer containing a composite oxide containing Si, and thus desirable to provide both the composite oxide and the homogeneous phase.
(B) Using Rawat, Rawat describes how a primary waveguide can be formed by depositing the waveguide as a layer (note 0061), where this can be provided by co-sputtering (that is simultaneously sputtering), or sputtering from a same target which contains all materials (so also simultaneously sputtering), which would provide a vapor depositing technique, Si and at least one of Ta, Ti, Zr in the presence of oxygen (note 0062, 0070), which will provide a silicon oxide alloyed with an oxide of Ta, Ti, Zr, for example (which can be considered a composite oxide), and with a controlled refractive index (so controlling reflection) (note 0066, 0008, claim 15, claim 14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mitsuhashi to provide the combined oxide intermediate layer in the form of simultaneously depositing Si and another metal such as Ta on the substrate to form an intermediate layer containing a composite oxide containing Si, and where the composite oxide constitutes a homogeneous phase, as suggested by Hukari and Rawat to provide a desirable anti-reflection layer that is also scratch resistant, since Mitsuhashi indicates to provide an antireflection layer that can contain SiO2 and also another oxide from Ta that can be provided for an optical member, Hukari notes how oxides of silicon and tantalum can be provided to form an SPB scratch resistant layer for optical coatings by vapor deposition techniques and where the layer is desirably uniform composition and homogenous throughout, giving a homogeneous phase of the material, and Rawat indicates how a desirable refractive index controlled (which would control reflection) layer can be provided with a composite oxide of Si and another metal such as Zr, Ti, Ta, etc. by simultaneously depositing Si and the another metal on the substrate by a vapor depositing technique to form a layer containing a composite (alloy) oxide containing Si, and thus desirable to provide both the composite oxide and the homogeneous phase.
(II) As to the molar ratio of Si to the another metal (such as Ta) of 10:90 to 95:5 (claim 1), 13:87 to 93:7 (claim 5), or 45:55 to 75:25 (claim 6), when using ‘116, it indicates how the refractive index can be adjusted by adjusting the amount of silicon (page 3, translation). When using Rawat, it indicates the refractive index can be adjusted based on the composition of materials used (note 0066). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the amount of the Si and the other metal to provide the optimum refractive index (which would adjust reflection), giving molar ratio of Si to the another metal in the claimed ranges of claims 1, 5 and 6. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 8: Mitsuhashi gives an example of the underlying thickness of the SiO2 coating (which would be the antireflection coating) of 7 nm (note 0309). Mitsuhashi would also note the desire for SiO2 in the outermost layer (of the intermediate layer(s)) (note 0246). Hukari also provides that the thickness of the SPB coating can be 2-8 nm (note 0051). When using ‘119, it notes the thickness of the layer 13 of at least 50 Angstroms (5 nm) (page 2, translation). Therefore, it would have been obvious to have the optimized amount of silicon and another metal as discussed for claims 1 and 5-6 above throughout the layer, and also have a thickness of about 7 nm, for example, corresponding to the example of Mitsuhashi, and thus have the molar ratio as claimed in a depth to 7 nm (thickness of the coating), for example, meeting the claim requirements.
Pellerite et al (US 2005/0233070) also notes providing a glass substrate (0043), an antireflective coating which has SiO2, and is also noted that other oxides such as of Ta, Nb, Zr, etc. can be used with mixtures (note 0043), and then providing an antisoiling layer of a fluoropolymer (note 0006-0007). Suzuki et al (US 5770306) indicates how it is well known to provide antireflection films by controlling the refractive index of the film (note column 1, lines 15-35). Mitsuhashi et al (US 2017/0044315, hereinafter Mitsuhashi ‘315) describes a similar process to Mitsuhashi as described for claim 1 (note the glass substrate, with an antireflection coating that can have combined oxides such as SiO2 with Ta2O5, ZrO2, TiO2 (note 0013, 0014), then applying surface treating agent (note 0019)), where the surface treating agent can be a fluorine containing silane compound that has at least one fluropolyether group containing compound (note 0008-0009), where the compound’s formula (note 0009) can correspond to applicant’s formula (1), where it is indicated that the group corresponding to RS1 as claimed can have a β of 1-9 (note 0009, 0039), and XA as claimed can have a 3-10 valent organic group (note 0039).
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered.
Applicant argues that Mitsuhashi, Hukari, ‘116 and Rawat do not provide the claimed invention, where Mitsuhashi is providing an optical material, Hukari provides various optical materials, and Rawat discloses heads with near field transducers, such that the technical invention of Rawat is different from that of Mitsuhashi and Hukari, and thus there would not be a motivation to combine.
The Examiner has reviewed these arguments, however, the rejection above is maintained. (1) Firstly, as to the option of the rejection using Mitsuhashi in view of Hukari and ‘116, applicant has not provided an argument here as to this combination of references, other than the general argument that the combination of references does not provide the claimed invention, and therefore the rejection above is maintained. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. (2) Secondly, as to the option of the rejection using Mitsuhashi in view of Hukari and Rawat, the only provided arguments are that one would not combine Rawat which discloses heads with near field transducers with the optical coating references to Mitsuhashi and Hukari, and the Examiner disagrees with this position. As discussed in MPEP 2141.01(a), a reference can be analogous art, if reasonably pertinent to the problem faced by the inventor, even if not in the same field of endeavor. Here, the inventor is concerned with providing an intermediate layer with an Si and Ta/Nb composite oxide before applying a fluorine containing surface treatment layer. Applicant indicates the layer can be applied with sputtering, Mitsuhashi shows a similar layer system, with the intermediate layer as an antireflection film, and then a fluorine containing surface treatment layer. Rawat shows how layers of the Si and Ta oxide can be applied by sputtering with a controlled refractive index, so with controlled reflectivity. Thus, it is pertinent to the inventor and the prior art to look to Rawat as a reasonably pertinent reference, showing how Si and Ta can be deposited together as a controlled composite oxide and with controlled reflectivity.
It is further argued that the present invention provides an article having a surface treating layer having high friction durability and chemical resistance. It is argued that Examples 1-17 show an improvement over Comparative Examples 1-10. As to the Examiner’s position in the Examiner’s Answer (of October 31, 2025), it is argued that as to issue (a) as to there not being a showing that claimed results would be better than Mitsuhashi with Si and Ta oxides in general, applicant disagrees, with only required to compare the closest actual embodiment in the prior art, where it is argued that Mitsuhashi does not provide an intermediate layer with Si and Ta oxides in general. As to issue (b) it is argued that the claims have been amended to use an Si molar ratio with another metal (Ta) of 1:90 to 05:5, so limiting to the amounts where good results shown. It is also argued as to the examples with Nb and Ta, that the characteristic of Nb is similar to that of Ta, and one of ordinary skill in the art would reasonably expect the results using Si and Ta to extend to Si and Nb. As to issue (c), with not all Examples and Comparative Examples tested for certain purposes, it is argued that one of ordinary skill in the art would reasonably expect that the Examples not tested have the same or similar effects as the Examples tested in the specification except for the following. Thereafter, it is argued that Example 4 should be compared with Comparative Example 2, Example 12 with Comparative Example 5 and Example 17 should be compared to Comparative Example 10, where in these cases, the Examples exhibited superior results. Further as to issue (d), the Examiner has argued that even if the examples show further benefits, the fact that the inventor has recognized another advantage which would flow naturally from the suggestion of the prior art cannot be the basis for patentability. Applicant argues that it improper to require applicant to compare with an invention suggested by a combination of references. Thus, it is argued that the superior effects are not taught or suggested by the prior art and thus further support patentability, and also demonstrate the claimed invention is not a simply combination of known method steps that provide nothing more than predictably results.
The Examiner has reviewed these arguments, however, the rejection above is maintained. It remains the Examiner’s position that a showing of criticality commensurate in scope to what is claimed has not been made. As to issue (a), since Mitsuhashi has the option of the intermittent layer having Si and Ta oxides, that would be the closest prior art. As to the argument that Mitsuhashi does not disclose an intermediate layer with Si and Ta oxides in general, the Examiner disagrees. Note 0026, where oxides that can be used for the antireflection (intermediate) layer are listed including SiO2 and Ta2O5, which can be used in combination with two or more (for example, as a mixture). As to issue (b), the Examiner notes that there is now a new limitation as to the range of Ta and Si oxide present. However, there is still only a single example of Nb. Applicant’s attorney argues that it is well known that Nb, Ta and the oxidations have high corrosion and hardness, and have a similar characteristics, however, this is attorney arguments, with no showing that the same results would be expected. Note MPEP 2145(I), “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); 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.").” In fact, the single Example 10 with Nb and the most similar Example 3 with Ta have different static contact angles of water in Table 2.
As to issue (c), as to the different tests on different examples, it is argued by applicant’s attorney that one of ordinary skill in the art would reasonably expect that the Examples not tested have the same or similar results as the Examples tested. However, again as noted for MPEP 2145(I), evidence is not provided as to this issue. As to the argument that specific Examples should only be compared to other specific Comparative examples, the Examiner is of the position that this argument would indicted the effect of various features on the results, such as coating thickness, top layer compound, composition split, where for example, other than compound A, for the top layer, there were only single tests, etc. not encompassing the scope of the claims. Additionally, even comparing Example 4 and Comparative Example 2, it can be argued that these examples do not show a better result, where the resulting angle is higher for Comparative Example 2 at times 0, 1000, 2000, 3000, for example. Also note as to the criticality as to the range amounts of Ta and Si oxides used, testing has not been done just outside the ranges to show that the range amounts are critical, and the tests that were done at 1/9 and 95/5 were only with top compound A. The only comparative tests were done with zero amount of Ta, and not with a higher amount of Ta or an amount of both Ta and Si lower/higher than the claimed ranges. Note MPEP 716.02(d)(II).
As to issue (d), the Examiner’s position is it is also specifically suggested by the prior art to use composite oxides of Ta and Si.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718