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 .
Summary
The Applicants arguments and claim amendments received on 11/26/2025 are entered into the file. Currently, claims 1-9, 22, 23 are withdrawn; claim 10 is amended; claims 17-18, 21, 24-28 are cancelled; resulting in claims 10-16, 19 and 20 pending for examination.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10, 11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lamine et al. (US 2015/0239774, cited on IDS and ISR).
Regarding claim 10, Lamine et al. teaches a glazing unit (article) comprising a glass substrate (1; substrate) and a multilayer coating (composite coating) on at least a portion of the substrate, wherein the multilayer coating (composite coating) prevent water from condensing on the surface overnight which reduces the visibility through the glazing unit in the morning ([0001-0003]). The multilayer coating (composite coating) is formed on the external surface of the glass substrate (1; substrate) ([0002, 0007-0008, 0055, 0058-0071]). The multilayer coating (composite coating) taught by Lamine et al. comprises a first region with a first material of a transparent electrically conductive oxide (2) is associated with a first set of optical properties over a range of wavelengths and a second region with a second material of a silicon nitride barrier film (3) that is associated with a second set of optical properties over the range of wavelengths (Figure 1; [0006-0032]).
The limitation “wherein, when the composite coating is exposed to a fluid comprising one or more foulants and associated with a third set of optical properties over a range of wavelengths, a mean percentage difference between the third set of optical properties and an average of the first set of optical properties and the second set of optical properties is about 20% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Lamine et al. teaches that the multilayer coatings (composite coating) have good self-cleaning, antifouling an anti-misting properties ([0032]) and thus would be capable of performing in the manner claimed. Furthermore, Lamine et al. teaches that the a first material of a transparent electrically conductive oxide (2) is an ITO-based film and that the second region with a second material of a silicon nitride barrier film (3), wherein ITO and silicon nitride are both disclosed as materials for the first and second materials respectively by the instant application (see pg-pub [0093]), and therefore would inherently comprise the same properties, such as resistance to fouling.
Regarding claim 11, Lamine et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the mean percentage different is about 10% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 14, Lamine et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the average is a weighted average weighed by volume fraction” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Claims 10, 11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hossain et al. (US 2016/0329111; cited on IDS).
Regarding claim 10, Hossain et al. teaches enhanced surface treatments for support surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]). Hossain et al. teaches a support material having a surface (substrate) and a multilayer coating (composite coating) on at least a portion of the exterior surface thereof, the multilayer coating (composite coating) comprised of a first layer of a material (204; first region comprising a first material) and a second layer of ceramic nitride or oxynitride (206; second region comprising a second material) (Figure 2; [0016-0029]). As the first layer of material (204; first region comprising a first material) and a second layer of ceramic nitride or oxynitride (206; second region comprising a second material) taught by Hossain et al. are comprised of two different materials, the first layer of material (204; first region comprising a first material) would inherently have a first set of optical properties over a range of wavelengths and the second layer of ceramic nitride or oxynitride (206; second region comprising a second material) would inherently have a second set of optical properties of the range of wavelengths as claimed. Hossain et al. teaches that the multilayer coating (composite coating) provides anti-corrosion properties to underlying supports ([0003-0005, 0015-0016, 0020-0030, 0043]), wherein corrosion is described by the instant specification as one type of fouling (see pg-pub [0063]), and therefore the coating taught by Hossain et al. would exhibit a resistance to fouling.
The limitation “wherein, when the composite coating is exposed to a fluid comprising one or more foulants and associated with a third set of optical properties over a range of wavelengths, a mean percentage difference between the third set of optical properties and an average of the first set of optical properties and the second set of optical properties is about 20% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Furthermore, Hossain et al. teaches all the structural features of claim 10 above, and would be capable of performing in the manner claimed.
Regarding claim 11, Hossain et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the mean percentage different is about 10% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 14, Hossain et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the average is a weighted average weighed by volume fraction” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
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.
Claims 12, 13, 15, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lamine et al. (US 2015/0239774; cited on IDS and ISR).
Regarding claim 12, Lamine et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 10nm to 1mm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 12, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 13, Lamine et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 100 nm to 700nm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 13, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 15, Lamine et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of refractive indices and the second set of optical properties is a second set of refractive indices, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of refractive indices” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 16, Lamine et al. teaches all the limitations of claims 10 and 15 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of refractive indices and the second set of refractive indices from the third set of refractive indices is about 0.5 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 19, Lamine et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of dielectric response values and the second set of optical properties is a second set of dielectric response values, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of dielectric response values” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 20, Lamine et al. teaches all the limitations of claims 10 and 19 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of dielectric response values and the second set of dielectric response values from the third set of dielectric response values is about 10 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Lamin et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Claims 12, 13, 15, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hossain et al. (US 2016/0329111; cited on IDS).
Regarding claim 12, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 10nm to 1mm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 12, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 13, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 100 nm to 700nm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 13, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 15, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of refractive indices and the second set of optical properties is a second set of refractive indices, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of refractive indices” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 16, Hossain et al. teaches all the limitations of claims 10 and 15 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of refractive indices and the second set of refractive indices from the third set of refractive indices is about 0.5 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 19, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of dielectric response values and the second set of optical properties is a second set of dielectric response values, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of dielectric response values” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 20, Hossain et al. teaches all the limitations of claims 10 and 19 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of dielectric response values and the second set of dielectric response values from the third set of dielectric response values is about 10 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 10-16 and 19-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are overcome by Applicants amendments to claim 10 in the response filed 11/26/2025.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
With respect to the rejections over Lamine et al., the Applicant argues on page 7 that the TCO layer 2 and the silicon nitride layer 3 of Lamine are not positioned on an external surface of the article, but rather sandwiched by other layers, as shown in Figure 1. This argument is not persuasive.
The instant claims recite an article comprising a substrate and a composite coating disposed on at least a portion of the substrate, with the newly added limitation requiring that the coating is positioned on an external surface of the article. Both the preamble of the claim and the clause of the claim pertaining to the coating used the open ended phrase “comprising”, therefore, components and layers other than those recited by the claims can be present.
Lamine et al. teaches a glazing unit (article) comprising a glass substrate and a multilayer coating (composite coating) on at least a portion of the glass substrate, wherein the entirety of the multilayer coating (composite coating) is formed on the external surface of the glass substrate (1; substrate), which is the face that is positioned to be in contact with the exterior of the dwelling/glazing unit ([0002, 0007-0008, 0055, 0058-0071]).
The Applicant further argues on page 7 that because the layer of Lamine are designed to coat a glazing unit, side surfaces of TCO layer 2 and silicon nitride layer 3 would not also be positioned on an external surface of the article because the side surfaces must be sealed with a mastic that is part of the glazing unit. This argument is not persuasive.
The multilayer coating is applied to the external surface of the glass substrate, which faces the exterior (i.e. atmosphere side), which meets the newly added limitation “positioned on an external surface of the article”. The sealing of the side surfaces does not change the position of the multilayer coating. Whether the sides of the multilayer coating are sealed or not, the multilayer coating remains on the external surface of the glass substrate.
The Applicant further argues on page 7 that the TCO layer 2 and silicon nitride 3 of Lamine et al. are not described as exhibiting a resistance to fouling, but rather functions as a low-emissivity coating to reduce radiative exchange and optimize emissivity. This argument is not persuasive.
As described above, Lamine et al. teaches that the multilayer coatings (composite coating) have good self-cleaning, antifouling an anti-misting properties ([0032]) and thus would be capable of performing in the manner claimed. Lamine et al. additionally teaches that the first material of a transparent electrically conductive oxide (2) is an ITO-based film and that the second material is a silicon nitride barrier film (3) ([0016-0029]). Both ITO and silicon nitride are disclosed as materials for the first and second materials respectively by the instant application (see pg-pub [0093]), and therefore would inherently comprise the same properties, such as resistance to fouling. The Applicant has not presented arguments as to how the ITO based films and silicone nitride barrier films taught by Lamine et al. would perform differently from those ITO and silicon nitride films disclosed by the instant application, therefore, it is maintained that they would inherently comprise the same anti-fouling properties.
With respect to the rejections of Hossain et al., the Applicant argues on page 8 that Hossain et al. does not disclose or render obvious a coating that exhibits a resistance to fouling, but rather discloses the deposition of an oxynitride anti-corrosion coating onto a metal-oxide layer. The Applicant argues that Hossain et al. is silent with regards to anti-corrosion coating exhibiting a resistance to fouling. This argument is not persuasive.
As stated in the rejections above, the instant application describes fouling as including corrosion (pg-pub [0063]). Hossain et al. teaches that the multilayer coating (composite coating) provides anti-corrosion properties to underlying supports ([0003-0005, 0015-0016, 0020-0030, 0043]), and therefore the coating taught by Hossain et al. would exhibit a resistance to fouling.
The remaining rejections of the dependent claims over Lamine et al. and over Hossain et al. are maintained for the reasons expressed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA POWERS whose telephone number is (571)270-5624. The examiner can normally be reached Monday-Thursday, 10:00AM-3:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785