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 .
Response to Amendment
The Examiner acknowledges the amending of claims 1 and 6-13.
Claim Interpretation
The Examiner notes claims 1-5 are device/product claims which contain process/method of formation steps. Such claims are considered to be “product-by-process” claims (MPEP 2113). Patentability of such claims is based on the product itself. MPEP 2113 further clarifies that the process steps are only considered limiting in the determination of patentability when those steps impart a “distinctive structural characteristic” to the final product. Here, the Applicant at [0034-36] of the original disclosure has stated that the processes claimed impart a distinctive structural feature of a particular refractive index value/range. As such, the patentability of these claims will be determined based on either the prior art teaching the particular process claimed OR the prior art teaching a value of the refractive index with the disclosed value/range as the prior art would then be teaching the structural characteristic brought about by the claimed process.
Based on [0036], the following structural features are understood to be brought about by the stated processes:
a layer of a CeO2 film formed by continuous sputtering and vacuum evaporation
implies at least a single CeO2 containing layer with a refractive index larger than 1.65 and less than 2.1
and
a plurality of layers of CeO2 films formed by discrete sputtering and vacuum evaporation
implies at least one layer containing CeO2 with a refractive index of approximately 2.1 AND at least one layer containing CeO2 with a refractive index of approximately 1.65.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/28/2025, with respect to claims 1, 9, 11 and 13 have been fully considered and are persuasive. The art rejections of the claims have been withdrawn.
The Examiner notes the prior art was not found to teach or suggest the current amendments to claims 1, 9 and 11.
The Examiner also agrees with the arguments directed to claim 13: that although the cited art may have taught the outlined structure, the art does not clearly teach the outlined manufacturing steps.
Claim Rejections - 35 USC § 112
The previous 112b rejections of claims 1, 7 and 8 are withdrawn due to the current amendments.
It is noted that claim 13 was previously rejected under 112b and was not updated to account for the 112b in the current amendments.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 (and all claims dependent therefrom, 2-8) rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to further define the continuous sputtering and vacuum evaporation method to provide a region of CeO2 formed by sputtering and a region of CeO2 formed by vacuum evaporation are continuous with each other. The specification as originally filed does not mention the production of discrete “region(s)” formed via continuous sputtering and vacuum evaporation and further does not teach such region(s) to be continuous with each other. The portions cited for support by the Applicant refer to sputtering and vacuum evaporation occurring at the same time, but do not discuss formation regions wherein the regions are continuous.
Therefore, it is not clear the claimed subject matter was in possession of the Applicant at the time of filing.
The Examiner notes the updated art search and consideration was done assuming the claimed limitations were fully supported by the specification as per MPEP 2163.06.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected 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.
Claim 13 contains language of: “at least one of at least one layer of a CeO2 film formed by continuous sputtering and vacuum evaporation and a plurality of layers of CeO2 films formed by discrete sputtering and vacuum evaporation”. This language is found to be unclear as the “at least one of” is followed by (emphasis added) “…vacuum evaporation AND a plurality of layers…”. Essentially the language is written as “at least one of A and B”. This language presents an unclear scope as it is not known if the meaning is equivalent to (1) “at least one element A OR at least one element B” (i.e. either A must be present at least once or B must be present at least once) or is equivalent to (2) “at least one of the combination of A and B” (i.e. both A and B must be present at least once).
For purposes of examination, the claim is understood to be read as option (1) above.
The Examiner suggests a change similar in nature to how claim 1 was amended to overcome this rejection.
Allowable Subject Matter
Claims 9-12 are allowed.
Please see the previous Office action 08/04/2025 for reasons of allowance for claims 9 and 11.
Claim 13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The prior art was not found to teach the particular method steps outlined in claim 13 with respect to the sputtering/evaporation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see the previously included pto892 form for a list of related references.
US 6207263, 5172269, 4988164, 2025/0180783, 2024/0413604, 2023/0133283, and 2001/0021446 are each found to teach CeO2 films with refractive index between 2.1-1.65.
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.
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/TOD T VAN ROY/ Primary Examiner, Art Unit 2828