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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 15, 2025 has been entered.
Response to Arguments
Applicant’s arguments of December 15, 2025 have been fully considered, but are moot in view of the new grounds of rejection based upon the combination of the previously-cited West reference with the newly-cited Igier reference.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 1, 2, 6, 8-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over West, US 2014/0125945 A1, previously-cited, in view of Igier et al., US 2015/0277152 A1, newly-cited in the present Office Action.
Regarding Claim 1, West discloses: A method of improving abrasion resistance of a lens, comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional steps or features):
providing a lens substrate having a convex surface (positioning an optical article [lens] in a vacuum deposition chamber, the optical article [lens] having at least one main face, which may be convex; Abstract and paragraphs [0004], [0006], [0037]-[0040], [0057], [0058], [0191] of West);
depositing a pre-treatment layer by exposing the convex surface to at least one physical or chemical pre-cleaning treatment comprising a species having an energy of between 1 eV and 150 eV for a predetermined time period (ion beam treatment, wherein ions may be identified as an energetic species, such energetic species having an energy ranging from 1 to 150 eV; paragraphs [0106], [0107], [0109]-[0111], [0116] of West);
depositing an inorganic layer of a predetermined thickness on the convex surface of the lens substrate within a vacuum deposition chamber (after positioning an optical article [lens] in a vacuum deposition chamber, depositing first and second inorganic layers comprising SiO2, the first and second inorganic layers having thicknesses of 10 to 30 nm and 70 to 150 nm, respectively; Abstract and paragraphs [0004], [0006], [0037]-[0040], [0057], [0058], [0191] of West);
applying an anti-fouling coating as a top most layer of the lens to an exposed surface of the deposited inorganic layer (applying a hydrophilic or hydrophobic layer onto the inorganic layers, such that the hydrophilic or hydrophobic layer will become the outermost layer of the stack, in contact with air; paragraphs [0041]-[0043], [0193]-[0215] of West);
wherein the lens substrate includes a hard coating on a convex surface of a base substrate (the optical article [lens] having at least one main face, which may be convex, bearing an abrasion resistant coating [hard coating]; Abstract and paragraphs [0004], [0006], [0037]-[0040], [0057], [0058], [0191], [0193] of West);
and wherein the deposited inorganic layer is a silicon dioxide layer, said silicon dioxide layer being deposited by evaporation, during the evaporation of the silicon dioxide layer, oxygen gas being introduced inside the vacuum deposition chamber, said oxygen gas having a partial pressure between 1.2e-2 Pa and 5e-2 Pa (first and second inorganic layers comprise SiO2, wherein deposition may occur by evaporation with oxygen gas at a pressure of 1.2×10−4 mbar to 5×10−4 mbar, equivalent to 1.2×10−2 Pa to 5×10−2 Pa [1 millibar = 100 Pascal], which may be written in alternative scientific notation as 1.2e-2 Pa to 5e-2 Pa; paragraphs [0039], [0109], [0112] of West).
West does not appear to disclose: applying a layer of magnesium sulfide or magnesium oxide to the convex surface of the lens.
Igier is related to West with respect to manufacture of abrasion-resistant optical articles such as lenses.
Igier teaches: applying a layer of magnesium sulfide or magnesium oxide to the convex surface of the lens (temporary layer comprising preferably magnesium oxides of 95% by weight; Abstract and paragraphs [0013], [0033]-[0035], [0082]-[0085], [0097], [0101], [0103], [0114] of Igier, but see especially paragraphs [0082], [0084], [0085] of Igier).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the magnesium oxide of Igier for the optical article of West because such magnesium oxide facilitates the wiping away of excess organosilane precursor compound [“compound A”], as taught in paragraphs [0005]-[0008], [0013], [0052], [0097] of Igier (see paragraphs [0031], 0063], [0149], [0150] of West disclosing organosilane precursor).
Regarding Claim 2, West-Igier discloses the limitations of Claim 1 and further discloses: further comprising: exposing the convex surface of the lens substrate to ion beam pre-cleaning for a predetermined time period (the surface of the article [lens] bearing the abrasion resistant coating [hard coating] may be subjected to a physical or chemical pre-treatment step intended to improve adhesion, for example an ion beam treatment [IPC: ion pre cleaning]; paragraphs [0106], [0116], [0197] of West).
Regarding Claim 6, West-Igier discloses the limitations of Claim 1 and further discloses: wherein the predetermined thickness of the silicon dioxide layer is greater than 100 nm (first and second inorganic layers comprising SiO2 may have thicknesses of 10 to 100 nm and 70 to 300 nm, respectively; paragraphs [0039], [0040], [0108], [0118] of West).
Regarding Claim 8, West-Igier discloses the limitations of Claim 1 and further discloses: wherein the depositing includes depositing an inorganic material on the convex surface of the lens substrate at a rate of between 0.2 nm/s and 1.5 nm/s (the deposition rates of the first and second inorganic layers are preferably from 0.2 to 0.5 nm/s and 0.7 to 1.3 nm/s, respectively; paragraphs [0114], [0121], [0203], [0209] of West).
Regarding Claim 9, West-Igier discloses the limitations of Claim 1 and further discloses: wherein the applied anti-fouling coating is a fluorinated material (preferred anti-fouling top coat may comprise at least one fluorinated compound; paragraphs [0157]-[0169] of West).
Regarding Claim 10, as best understood, West discloses: A lens having abrasion resistance, comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a lens substrate including a hard coating on a convex surface of a base substrate (providing an optical article [lens] having at least one main face, which may be convex, bearing an abrasion resistant coating [hard coating]; Abstract and paragraphs [0004], [0006], [0037], [0057], [0058], [0191], [0193] of West);
a pre-treatment layer deposited onto the convex surface as a result of exposing the convex surface to at least one physical or chemical pre-cleaning treatment comprising a species having an energy of between 1 eV and 150 eV for a predetermined time period (ion beam treatment, wherein ions may be identified as an energetic species, such energetic species having an energy ranging from 1 to 150 eV; paragraphs [0106], [0107], [0109]-[0111], [0116] of West);
an inorganic layer that is deposited, within a vacuum deposition chamber, on the hard coating of the lens substrate, the inorganic layer having a predetermined thickness (positioning said optical article [lens] in a vacuum deposition chamber, and depositing first and second inorganic layers comprising SiO2 on the abrasion resistant coating [hard coating], the first and second inorganic layers having thicknesses of 10 to 30 nm and 70 to 150 nm, respectively; paragraphs [0038]-[0040] of West);
wherein the inorganic layer is a silicon dioxide layer, said silicon dioxide layer being deposited by evaporation with oxygen gas having a partial pressure between 1.2e-2 Pa and 5e-2 Pa (first and second inorganic layers comprise SiO2, wherein deposition may occur by evaporation with oxygen gas at a pressure of 1.2×10−4 mbar to 5×10−4 mbar, equivalent to 1.2×10−2 Pa to 5×10−2 Pa [1 millibar = 100 Pascal], which may be written in alternative scientific notation as 1.2e-2 Pa to 5e-2 Pa; paragraphs [0039], [0109], [0112] of West; the Office notes that the claim language “deposited within a vacuum deposition chamber” and “applied within the vacuum deposition chamber” and “exposed to atmosphere following retrieval” and “deposited by evaporation” appears to imply processing steps which would render this claim a “product-by-process” claim, whereby even though the claim may be limited by and defined by the process, a determination of patentability is based on the product itself, and thus, even if a prior art product is made by a different process, if the resulting prior art product is substantially identical, the prior art product will anticipate the claimed product. See MPEP § 2113, Section I, citing In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985)); and
an anti-fouling coating that is applied, within the vacuum deposition chamber, as a top most layer of the lens, to an exposed surface of the inorganic layer, a surface of the anti-fouling coating being exposed to atmosphere following retrieval of the lens from the vacuum deposition chamber (applying a hydrophilic or hydrophobic layer onto the inorganic layers, such that the hydrophilic or hydrophobic layer will become the outermost layer of the stack, in contact with air; paragraphs [0041]-[0043], [0193]-[0215] of West).
West does not appear to disclose: a layer of magnesium sulfide or magnesium oxide that is applied to the convex surface of the lens.
Igier is related to West with respect to manufacture of abrasion-resistant optical articles such as lenses.
Igier teaches: a layer of magnesium sulfide or magnesium oxide that is applied to the convex surface of the lens (temporary layer comprising preferably magnesium oxides of 95% by weight; Abstract and paragraphs [0013], [0033]-[0035], [0082]-[0085], [0097], [0101], [0103], [0114] of Igier, but see especially paragraphs [0082], [0084], [0085] of Igier).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the magnesium oxide of Igier for the optical article of West because such magnesium oxide facilitates the wiping away of excess organosilane precursor compound [“compound A”], as taught in paragraphs [0005]-[0008], [0013], [0052], [0097] of Igier (see paragraphs [0031], 0063], [0149], [0150] of West disclosing organosilane precursor).
Regarding Claim 11, West-Igier discloses the limitations of Claim 10 and further discloses: wherein the base substrate is polycarbonate (lens substrate may comprise polycarbonate; paragraphs [0097], [0098] of West) and the lens substrate is an ion beam pre-cleaned lens substrate (the surface of the article [lens] bearing the abrasion resistant coating [hard coating] may be subjected to a physical or chemical pre-treatment step intended to improve adhesion, for example an ion beam treatment [IPC: ion pre cleaning]; paragraphs [0106], [0116], [0197] of West).
Regarding Claim 14, West-Igier discloses the limitations of Claim 10 and further discloses: wherein the predetermined thickness of the silicon dioxide layer is greater than 100 nm (the first and second inorganic layers having thicknesses of 10 to 30 nm and 70 to 150 nm, respectively; paragraphs [0038]-[0040] of West).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over West in view of Igier and further in view of Fukui et al., US 2010/0103523 A1, previously-cited.
Regarding Claim 3, West (as modified by Igier) discloses the limitations of Claim 2 and further discloses an ion pre-treatment of about 60 seconds (see paragraph [0197] of West).
West-Igier does not appear to explicitly disclose a greater duration of pre-cleaning such that: wherein the predetermined time period that the convex surface of the lens substrate is exposed to the ion beam pre-cleaning is between 90 seconds and 150 seconds.
However, it has been held that where 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. MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955).
In the present case, the general conditions of the claim are disclosed in the prior art because primary reference West discloses that the ion beam treatment is a cleaning step which serves to improve adhesion of subsequent layers (see, e.g., paragraphs [0106], [0116] of West).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a somewhat longer duration of ion treatment (i.e., 90 to 150 seconds instead of 60 seconds), because such increased duration would provide a cleaner surface and/or provide more certainty that such surface was in fact thoroughly cleaned.
Furthermore, Fukui is related to West-Igier with respect to ion cleaning of lens surfaces.
Fukui teaches: further comprising: exposing the convex surface of the lens substrate to ion beam pre-cleaning for 90 seconds and 150 seconds AND the lens substrate is an ion beam pre-cleaned lens substrate (lens subjected to ion cleaning for 2 minutes [120 seconds]; paragraph [0067] of Fukui).
Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the claimed duration of ion beam cleaning, as in Fukui, for the lens of West-Igier because such duration of ion cleaning of lens was in fact known in the art and considered effective for cleaning the surface and thereby enhancing the adhesion to subsequent layers, as evidenced by paragraphs [0067], [0068] of Fukui.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over West in view of Igier and further in view of Ono, US 2018/0148609 A1, previously-cited.
Regarding Claim 15, West (as modified by Igier) discloses the limitations of Claim 10, but does not appear to disclose: wherein a contact angle of the exposed surface of the anti-fouling coating is between 110° and 115°.
Ono is related to West-Igier with respect to silane-based anti-fouling layers.
Ono teaches: wherein a contact angle of the exposed surface of the anti-fouling coating is between 110° and 115° (antifouling layer 50, for example, a coating layer of an alkoxysilane compound having a perfluoropolyether group to thereby impart water repellency with a water contact angle of 110 degrees or more; paragraph [0043] of Ono).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the contact angle of Ono for the anti-fouling coating of West-Igier because such contact angle improves the anti-fouling properties, as taught in paragraph [0043] of Ono.
Examiner Note – Consider Entirety of References
Although various text and figures of the cited references have been specifically cited in this Office Action to show disclosures and teachings which correspond to specific claim language, Applicant is advised to consider the complete disclosure of each reference, including portions which have not been specifically cited by the Examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN S DUNNING whose telephone number is 571-272-4879. The examiner can normally be reached Monday thru Friday 10:30AM to 7:00PM Eastern Time Zone. 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
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872