DETAILED ACTION
Claims 14-15 and 27-36 were rejected in the Office Action mailed 08/01/2025.
Applicants filed a Request for Continued Examination, and amended claim(s) 14, 32-34, canceled claims 31, 35-36, and added claim(s) 37-39 on 12/29/2025.
Claim(s) 14-30, 32-34 and 37-39 are pending, and claim(s) 16-26 are withdrawn.
Claim(s) 14-15, 27-30, 32-34 and 37-39 are rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 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 (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 14-15, 27-30, 32-34 and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Shoji, JP 2016022589A (Shoji).
The examiner has provided a machine translation of Shoji, JP 2016022589A (Shoji). The citation of the prior art set forth below refers to the machine translation.
Regarding claims 14-15, 27-30 and 37-38, Shoji teaches an inorganic barrier layer (Shoji, Abstract); the inorganic barrier layer containing 5 to 40 atomic percent of silicon atoms (Shoji, page 4, 1st paragraph); specific examples of suitable inorganic compounds include composites such as silicon oxide (Shoji, page 4, 3rd paragraph).
Given that Shoji discloses the inorganic barrier layer that overlaps the presently claimed silicon oxide film, including silicon oxide as the inorganic compound for the inorganic barrier layer, it therefore would be obvious to one of ordinary skill in the art, to use the inorganic barrier layer (reading upon a silicon oxide film), which is both disclosed by Shoji and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Shoji further teaches thickness per layer of the inorganic barrier layer is preferably 20 to 3000 nm, more preferably 50 to 2500 nm, and particularly preferably 30 to 1000 nm (Shoji, page 4, 5th paragraph), which encompasses or overlaps the range of the presently claimed;
the water vapor transmission rate (WVTR) is preferably 0.1 g /m2·day or less. A water vapor transmission rate of 0.1 g/m2·day or less is preferable because the formation process becomes uniform in the formation of the amorphous phase in the upper layer of the inorganic barrier layer, and the barrier performance of the gas barrier film is further improved; the lower limit is not particularly limited and is preferably as small as possible; furthermore, the water vapor transmission rate of the inorganic barrier layer is more preferably 0.01 g /m2·day or less (Shoji, page 4, 6th paragraph; page 5, 1st paragraph), which encompasses the ranges of the presently claimed.
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).
Shoji further teaches the atomic ratio of the carbon atom content to the total amount of silicon atoms, oxygen atoms, and carbon atoms in the inorganic barrier layer is preferably 0.5 to 25 at% (i.e., atom%), and preferably 1 to 20 at% (i.e., atom%) (Shoji, page 11, 1st paragraph). Given that Shoji teaches that the inorganic barrier layer contains additional metal component in addition to silicon (Shoji, page 4, 3rd paragraph), the carbon atom content based on a total composition of the inorganic barrier layer would be below 0.5 to 25 at% (i.e., atom%), or preferably below 1 to 20 at% (i.e., atom%), which overlaps or encompasses the ranges of the presently claimed.
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).
Further regarding claims 14 and 37-38, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shoji meets the requirements of the claimed product, Shoji clearly meets the requirements of the present claim.
Regarding claim 32, as applied to claim 14, Shoji further teaches it is preferable not to make the ratio of the reaction gas excessive rather than the ratio of the amount; by not making the ratio of the reaction gas excessive, the formed inorganic barrier layer is excellent in that excellent gas barrier properties and bending resistance can be obtained. Further, when the film forming gas contains the organosilicon compound and oxygen, the amount is less than the theoretical oxygen amount necessary for complete oxidation of the entire amount of the organosilicon compound in the film forming gas (Shoji, page 14, bottom pragraph).
Although there are no disclosures on the amounts of a ratio of a volumetric flow rate of oxygen supplied to a volumetric flow rate of the organosilane compound as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of a ratio of a volumetric flow rate of oxygen supplied to a volumetric flow rate of the organosilane compound, based on the type of organosilane used, including over the amounts presently claimed, in order to achieve excellent gas barrier properties and bending resistance, and thereby arrive at the claimed invention.
Alternatively, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shoji meets the requirements of the claimed product, Shoji clearly meets the requirements of the present claim.
Regarding claims 33-34, as applied to claim14, although Shoji does not explicitly teach wherein the plasma enhanced chemical vapor deposition method is under a condition in which a power of a radio frequency power supply (RF power supply) is at least 100 W; or wherein the plasma enhanced chemical vapor deposition method is under a condition in which a power density of a radio frequency power supply (RF power supply) is at least 0.1 W/cm2, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shoji meets the requirements of the claimed product, Shoji clearly meets the requirements of the present claims.
Regarding claim 39, as applied to claim 14, given that Shoji teaches an identical or substantially identical silicon oxide film with water vapor transmission rate and carbon concentration in the silicon oxide film that overlaps or encompasses the ranges of the presently claimed, and prepared with an identical or substantially identical method (i.e., plasma chemical vapor deposition using a silane), as presently claimed, it is therefore clear that the silicon oxide film of the presently claimed would necessarily and inherently meet the claimed limitation that the silicon oxide film characterized in that when laminated on a substrate selected from polyethylene naphthalate and polyethylene terephthalate, the laminated film has a visible light transmittance of at least 80%.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to the amended claims, the previous claim 35 U.S.C. 112(b) rejection is withdrawn.
Applicant primarily argues:
“Here, the process steps would be expected to impart structural characteristics to the claimed film. In this regard, Applicant would like to direct the Examiner's attention to Examples 1-6 and comparative Example 1 of this application. As shown by these examples, by using different organosilanes, even under the same process conditions, different silicon contents can be observed. Compare Examples 1, 5, and 6, as well as comparative Example 1. Further, the Examples of this application show that different organosilanes can produce different WVTR for the final films. Thus, the process steps recited in the claims would be expected to impart structural characteristics to the silicon oxide films and therefore should be considered when assessing patentability of the claims of this application.”
Remarks, p. 9-10
The Examiner respectfully traverses as follows:
Firstly, the comparison between Examples 1, 5-6 and comparative Example 1 do not provide a proper side-by-side comparison. Comparative Example 1 differ from Examples 1, 5-6 not only in the type of silane used, but also in the deposition chamber pressure. Therefore, it is unclear whether it is the type of silane used, or it is the different deposition chamber pressure, that results in the different performance in water vapor transmission rate of the obtained silicon dioxide film.
Secondly, while a comparison of Examples 1 and 5-6 shows a small variation in water vapor transmission rates of the obtained silicon dioxide films when different silane is used. However, the water vapor transmission rates of the silicon dioxide films when different silanes are used are all within the claimed range of water vapor transmission rate of claim 1. Therefore, Examples 1 and 5-6 appear to show that even when different silanes are used to produce the silicon dioxide films, the obtained silicon dioxide film would still provide a water vapor transmission rate that is within the claimed range.
Therefore, the argument that the process steps of the silicon dioxide film would be expected to impart distinctive structural characteristics to the final product is not persuasive.
Applicant further argues:
“Under the above framework, Applicant submits that a person of ordinary skill in the art would not have arrived at the claimed silicon oxide film of claim 14 and its dependent claims with a reasonable expectation of success, at least because the skilled person would not have had reason to modify Shoji in any specific way to arrive at the claimed film produced by the process recited in the claims of this application.
First, Shoji does not teach or suggest an organosilane compound of formula (1) as recited in amended claim 14.
The Office cites to Shoji as allegedly teaching the use of "dimethyldimethoxysilane, dimethyldiethoxysilane, Diethyldimethoxysilane, methyltriethoxysilane, ethyltrimethoxysilane". Applicant disagrees. However, solely to expedite prosecution, claim 14 has been amended to recite features from previous claim 31 and has been amended such that it no longer encompasses the silanes cited by the Office. In these cited compounds from Shoji, the portions corresponding to R1 of formula (1) of Claim 14 of the present application are "methyl" or "ethyl". Shoji also does not teach or suggest that changing the organosilanes would lead to silicon oxide films with a different WVTR value, much less an improved WVTR value. Thus, based on Shoji, a person of ordinary skill in the art would not have modified the organosilanes used in a specific way to the organosilane recited in claim 14.”
Remarks, p. 10
The Examiner respectfully traverses as follows:
Firstly, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shoji meets the requirements of the claimed product, Shoji clearly meets the requirements of the present claim, as set forth on pages 7-8, of Office Action mailed 08/01/2025.
Secondly, the argument that the process steps of the silicon dioxide film would be expected to impart distinctive structural characteristics to the final product is not persuasive, as set forth above.
Thirdly, Shoji teaches the claimed water vapor transmission rate, specifically, Shoji teaches the water vapor transmission rate (WVTR) is preferably 0.1 g /m2·day or less. A water vapor transmission rate of 0.1 g/m2·day or less is preferable because the formation process becomes uniform in the formation of the amorphous phase in the upper layer of the inorganic barrier layer, and the barrier performance of the gas barrier film is further improved; the lower limit is not particularly limited and is preferably as small as possible; furthermore, the water vapor transmission rate of the inorganic barrier layer is more preferably 0.01 g /m2·day or less (Shoji, page 4, 6th paragraph; page 5, 1st paragraph), which encompasses the ranges of the presently claimed.
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), as set forth on pages 6-7, of Office Action mailed 08/01/2025.
Applicant further argues:
“Second, data shown in this application indicates unexpected advantages over the specific silanes exemplified in Shoji.
Shoji does not have a specific example of the long list of silanes cited above. Among these silanes, dimethyldimethoxysilane was used in this application, corresponding to Example 6 of this application. In the Examples of the present application, when Examples 3 to 6, which have the same thickness and R2 (thickness 800 nm; R2= methoxy), are compared, Examples 3, 4, and 5, in which RI has 3 or more carbon atoms, have a lower WVTR than Example 6, in which RI has 1 carbon atom:
…
Applicant respectfully submits that a person of ordinary skill in the art would not have reasonably expected that the change of organosilanes having R1 being 1 carbon to R1 being 3 carbons or more can lead to such improvements in WVTR. Shoji does not teach or suggest that WVTR values of films have a correlation with the organosilanes used in the process of making. Without showing a correlation, Shoji cannot be reasonably considered as teaching or suggesting the change of the organosilanes in Shoji specifically to those recited in the claims of this application.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
The data to show advantageous effects by using the claimed silanes to produce the silicon oxide film, in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The specification only provides support for a silicon oxide film of specific film thickness with specific water vapor transmission rate, wherein the silicon oxide film is produced by film-depositing a material using specific process conditions (i.e., specific deposition method, specific oxygen to silane ratio, specific pressure of the deposition chamber and specific power supply frequency and specific deposition time) with specific silanes;
while the claim broadly recites a silicon oxide film of any film thickness of at most 500 nm with any water vapor transmission rate of at most 9.0x10-3 g/m2·day, wherein the silicon oxide film is produced by film-depositing a material using any process conditions (i.e., any deposition method, any oxygen to silane ratio, any pressure of the deposition chamber and any power supply frequency and specific deposition time) with any silanes that meet the claimed formula (1).
Further, the data does not show using the upper- and lower-ends of a water vapor transmission rate (WVTR) at a film thickness of at most 500 nm is at most 9.0x10-3 g/m2·day. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of a water vapor transmission rate (WVTR) at a film thickness of at most 500 nm is at most 9.0x10-3 g/m2·day.
Secondly, the referenced data for Example 6 with a silicon oxide film of thickness of 800 nm is out of the scope of the claims, as claim 1 recites “a water vapor transmission rate (WVTR) at a film thickness of at most 500 nm is at most 9.0x10-3 g/m2·day”. Therefore, Example 6 does not provide support that it is advantageous to use a different silane over dimethyldimethoxysilane for the claimed silicon oxide film.
Applicant further argues:
“It should also be noted that Shoji discloses in Example 21 as silicon film formed using hexamethyldisiloxaneasthematerial (Shoji,page31) with a flow rate of 50 sccm. In this Example, the oxygen gas is supplied at a flow rate of 500 sccm, i.e., in an amount of 10 mole per 1 mole of hexamethyldisiloxane as the material gas. As disclosed in Shoji, the film produced from this example has a WVTR obtained is 0.01 g/m2·day, the thickness of the film is 300 nm.
The same organosilane was also used in comparative Example 1 of this application. In this comparative example, it was shown that at a thickness of 200 nm, the WVTR is 0.024 g/m2-day, similar to what would be expected from Shoji's examples.
In contrast, in each of Examples 1-5 of this application, the silicon oxide films obtained have a much lower WVTR values - by at least one order of magnitude.”
Remarks, p. 10
The Examiner respectfully traverses as follows:
Firstly, Shoji meets the present claims, including water vapor transmission rate, as set forth above on pages 3-6.
Further, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shoji meets the requirements of the claimed product, Shoji clearly meets the requirements of the present claim, as set forth above on pages 5-6.
Secondly, the argument that the process steps of the silicon dioxide film would be expected to impart distinctive structural characteristics to the final product is not persuasive, as set forth above in item 8.
Thirdly, the fact remains that Shoji teaches the water vapor transmission rate (WVTR) is preferably 0.1 g /m2·day or less. A water vapor transmission rate of 0.1 g/m2·day or less is preferable because the formation process becomes uniform in the formation of the amorphous phase in the upper layer of the inorganic barrier layer, and the barrier performance of the gas barrier film is further improved; the lower limit is not particularly limited and is preferably as small as possible; furthermore, the water vapor transmission rate of the inorganic barrier layer is more preferably 0.01 g /m2·day or less (Shoji, page 4, 6th paragraph; page 5, 1st paragraph), which encompasses the ranges of the presently claimed.
“applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732