DETAILED ACTION
Claim Objections
The objections made in the previous Office Action are withdrawn in view of Applicant’s amendment, filed November 24, 2025.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 11, and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nomura (US PG Pub. No. 2021/0325693), which has an effective filing date of 12/18/2018.
Regarding claims 1, 11, and 12, Nomura teaches a spectacle lens (i.e. “optical article”) comprising a transparent substrate with a front main face and a rear main face, wherein at least one of the article’s main faces is coated with a multilayer interference coating that is an antireflective coating and is the top coating of the article, and wherein the outermost layer of the top coating comprises a material having antimicrobial properties (Abstract; par. 7, 12, 25, 31, 37). Nomura’s antibacterial coating (i.e. a “material having antibacterial properties”) includes silver particles and tungsten oxide particles (par. 31, 55, 56) and, therefore, does not consist of only metal (i.e. material also includes oxygen).
The rejections made under 35 U.S.C. 102(a)(1) in view of Cohen (US PG Pub. No. 2014/0336039) are withdrawn in view of Applicant’s amendment, filed November 24, 2025.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Do (CN 104073030 A), the text of which is cited herein according to an English language translation.
Regarding claims 1 and 2, Do teaches an optical article, such as an optical lens or display screen, comprising a substrate with a front main face and a rear main face, wherein at least one of its main faces is coated with a multilayer interference coating (i.e. “top coating”) (Abstract; par. 19, 29, 30). On the exterior of the article (i.e. the “outermost layer of the top coating”) is material consisting of zinc oxide and/or calcium oxide, which have antibacterial properties (par. 2, 19-20, 32).
The teachings of Do might be considered to differ from the current invention in that he does not explicitly refer to his substrate as “transparent” or explicitly state that his antibacterial layer is the outermost layer of his top coating. However, Do teaches substrates that are clearly intended to be “transparent” in the context of the instant disclosure and expresses a desire to avoid affecting light transmittance through such an article (par. 19, 20). Do also discloses that his antibacterial coating provides scratch resistance to coated articles (par. 20), which is only relevant to the outermost surface, and one of ordinary skill in the art would understand that the most bacteria carried by such an article would be on its exterior surface, where it is contacted by users and the environment. Accordingly, it would have been obvious to one of ordinary skill in the art to use an optically transparent substrate in Do’s optical article and to configure the coated article such that the antibacterial coating is the outermost layer because Do teaches using substrates that are typically (and old and well-known to be) transparent and expresses a desire to prevent a degradation in light transmittance, thereby demonstrating that the article should be as transparent as possible, in order to make the outer surface antibacterial and scratch-resistant, and in order to allow the antibacterial coating to best and most directly provide its intended functions of being antibacterial and scratch-resistant on the surface of the article, where it is contacted by users and the environment. Additionally, Do’s antibacterial layer is the outermost layer prior to any other coatings being applied.
Claims 1, 2, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 105404022A), the text of which is cited herein according to an English language translation.
Regarding claims 1 and 2, Wu teaches a lens (i.e. “optical article”) comprising a transparent substrate with a front main face and a rear main face, wherein at least one of its main faces is coated with a multilayer interference coating (i.e. “top coating”) (Abstract; par. 49, 55). Prior to a final hard coating being applied, the outermost layer of Wu’s top coating consists of nano silver, which Wu teaches is deposited as silver oxide (i.e. the layer does not consist of only metal) and which is a material having antibacterial properties (par. 48, 55).
The teachings of Wu might be considered to differ from the current invention in that he does not explicitly refer to his substrate as “transparent”. However, Wu’s product is an optical lens, which is clearly intended to be transparent in the context of the instant disclosure and Wu expresses a desire for his product to have good visual clarity (par. 50). Accordingly, it would have been obvious to one of ordinary skill in the art to use an optically transparent substrate in Wu’s lens because optical lenses are typically (and old and well-known to be) transparent and Wu expresses a desire for good visual clarity, thereby demonstrating that the article should be as transparent as possible.
Regarding claim 13, the layer (i.e. “third film layer”) located directly below the nano silver layer (i.e. which is the outermost layer of the intermediate product) in Wu’s product is a metal layer (par. 55-57). Therefore, Wu’s product comprises a metal layer placed directly beneath the outermost layer of the top coating.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nomura, as applied above, for the reasons discussed in the previous Office Action.
Claims 6, 7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Do, as applied above, and further in view of Cohen for the reasons discussed in the previous Office Action.
Claims 6, 7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, as applied above, and further in view of Cohen, for the reasons discussed in the previous Office Action.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive or are moot in view of the current rejections.
Applicant has argued that Nomura does not anticipate claim 1 because Nomura’s outermost antibacterial layer is allegedly not part of a multilayer interference coating but rather is a distinct and separate coating from Nomura’s antireflective film. In making these arguments, Applicant has also asserted that outermost layer is required to participate in the antireflective properties of the claimed multilayer interference coating and has noted that Nomura’s outermost layer is thinner than the outermost layer of instantly disclosed exemplary products. These arguments are not persuasive, however, because claim 1 only requires a “multilayer” coating to demonstrate interference properties and that the outermost layer to be antibacterial. The claim does not require each layer of the coating to participate in the interference properties and there are no recitations of the outermost layer being antireflective. In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an outermost layer that is antireflective or has other interference properties, or has a particular thickness) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding Applicant’s argument that Nomura’s antibacterial coating is a separate and distinct layer from the multilayer coating, it noted that each layer is a "separate and distinct coating" from each other layer in both Nomura’s multilayer coating and the claimed multilayer coating. The choice to refer to a particular set of layers as the "multilayer interference coating" rather than as separate coating layers is, or at least can be, arbitrary. Nomura meets the claim requirements because he teaches a multilayer coating, which includes outermost antibacterial layer, that produces the same effects as the claimed multilayer coating. Furthermore, Applicant has provided no evidence to demonstrate that Nomura’s outermost, antibacterial coating does not participate in the interference properties of the overall multilayer coating.
Applicant has further argued that rearranging Do’s multilayer coating so that the antibacterial layer is the outermost layer would impermissibly change the operating principle of Do’s coating layer. However, Applicant has provided no evidence to demonstrate that configuring Do’s antibacterial coating to be the outermost layer would prevent the overall coating from functioning as intended or that it would change the material’s operating principle. It would have been obvious to include Do’s antibacterial coating as the outermost layer on his product for the reasons discussed above. Furthermore, such a change appears to be a prima facie obvious rearrangement of parts. See MPEP 2144.04 VI.
Applicant has also argued that Do does not teach that scratch resistance comes from the antibacterial layer because Do teaches that his “flat resin product” has both antibacterial properties and scratch resistance (par. 20). However, in context, Do appears to be referring to the applied coating. Do’s discussion of the antibacterial property and scratch resistance are part of a discussion about antibacterial metal oxide thin films (par. 18-20). Do’s teaching that the scratch property of the resin product is improved (par. 20), makes clear that he is discussing something (i.e. an applied film) other than the resin product alone. Discussion of scratch resistance aside, it would have been obvious to include antibacterial components in the outermost layer of Do’s product in order to make its outermost surface antibacterial, as is also discussed in the rejections.
Applicant has also argued that Wu does not meet the requirements of claim 1 because his outermost layer is alumina (Al2O3), which is not included in the list of materials now recited in claim 1. However, as discussed in the rejections, the topmost layer of Wu’s multilayer coating is a layer of “nano silver” prior to the final, hard alumina coating being applied. Therefore, the outermost layer on Wu’s intermediate product is antibacterial and meets the requirements of claim 1.
Applicant has also argued that they disagree with a conclusion that it would have been obvious to configure any of Nomura, Do, or Wu’s outermost coatings to have the features of claims 6, 7, 11, and/or 12 because the references allegedly do not meet claim 1. However, each of the cited references teaches or renders obvious a product meeting the requirements of claim 1 for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784