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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/23/2026 has been entered.
Response to Amendment
Applicant’s amendments, filed 2/23/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to the claims, the cancellation of claim 22, and the addition of new claim 23. Claims 1-4, 7-21 and 23 are pending with 13, 15-16, 18 withdrawn as directed to non-elected embodiments.
Response to Arguments
Applicant’s arguments, filed 2/23/2026, have been considered but are deemed moot as directed to newly added claim requirements that are specifically addressed hereinafter.
Claim Rejections - 35 USC § 112
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.
Claims 1-4, 7-12, 14, 17, 19-21 and 23 are 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 1 requires “locating hole at a lip of the holder” and “beveled edge extending into a lip” and therefore has two recitations of “a lip.” Thereafter the claim further require “the lip” in various locations and therefore the recitations of “the lip” lack antecedent basis in the claims as it is unclear what lip these recitations are modifying. It is unclear the referred lip refers to a single lip or multiple lips (i.e. each recitation of “a lip” would be a separate lip or the same lip) and which lip is being modified by the claim recitations of “the lip”. See e.g. claim 7 also referring to “a lip”
Dependent claims 3, 14, and 22 each also refer to “the lip”
Dependent claims do not cure the deficiencies of the claims from which they depend and are therefore similarly rejected.
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.
Claim(s) 1-5, 7, 12, 14, 19 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017101971, hereinafter WO 971 with US Patent Application Publication 20170323815 by Kuenanz et al., hereinafter Kuenanz and KR-20170036008-A, hereinafter KR 008 alone or further with CN 105452523 A, hereinafter CN 523.
Claim 1: WO 971 discloses a method for making a thin film optical element (see e.g. glass and examples of optical components at 0031) comprising: (a) placing a substrate in a holder socket of a holder (Figures 8A); wherein the substrate has a first deposition side (see figure 8A and accompanying text, Figure 2B); wherein the holder comprises at least one holder opening; wherein the holder has a holder outer side and a holder inner side; wherein the holder outer side has at least one beveled edge extending into a lip; wherein the beveled edge and the lip define the at least one holder opening, wherein the lip can reasonably be considered inclusive of a “locating hole” as broadly drafted as the lip includes a recess (i.e. claimed locating hole) for locating the substrate edge and thus marks a margin of the substrate; wherein the lip has a substantially flat side and a beveled edge side; wherein the substantially flat side of the lip and the holder inner side define the holder socket (figures 5-8 and accompanying text); and (b) depositing, with a deposition plume, a first thin film stack on a first deposition side of the substrate to form a thin film optical element (0006 related to coating multilayer stack, 0038 related to gaseous coating, i.e. deposition plume, see also Figures 2A-2B and accompanying text, see also 68 related to different material deposition),
wherein the thin film optical element comprises the substrate and the first thin film stack deposited on the first deposition side of the substrate (0040, 0039, see also Figure 2A and 2B and accompanying text);
wherein the first thin film stack is characterized by a first uniform film thickness (0004-0005); and while WO 971 fails to disclose the thickness variation over 10 mm2, desires to obtain a uniform coating. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have deposited a uniform coating as such is the desire of the prior art and thus providing a first uniform film thickness is defined as a thickness variation of less than about ±5% in any 10 mm.sup.2 of the first thin film stack, when compared to an average first thin film stack thickness across the entire first thin film stack. Additionally, the examiner notes that the uniformity is a result of the process and structure and the prior art specifically discloses the claimed process and substrate holders as set forth herein and therefore the prior art will necessarily have the same results unless the applicant is using specific structure or process steps that are neither claimed nor disclosed as being required.
WO 971 discloses a portion of the first deposition side of the substrate contacts the substantially flat side of the lip (Figure 6-7 and accompanying text);
wherein the holder opening exposes the first deposition side of the substrate to the deposition plume (Figure 2A-2B and accompanying text);
wherein the deposition plume travels towards the first deposition side of the substrate at a direction substantially perpendicular to the substantially flat side of the lip and/or to the first deposition side (PVD coating and horizontal systems, as the prior art discloses PVD coating from above and/or below at Figure 2A-2B, such a coating would include “substantially perpendicular” as broadly claimed);
wherein the beveled edge side faces the deposition plume (see Figure 6).
WO 971 discloses wherein a mating holder secures the substrate and comprises a mating inner side (see Figure 6-7). WO 971 discloses that the mating holder inner side contact the holder inner side at a virtual plane that passes through the substrate (see Figure 6).
WO 971 discloses the substrate has a second side opposite the first side, inverting the substrate and the holder socket subsequent to deposition of the first film stack such that the second side is exposed to the deposition plume and deposit a second film stack on the second deposition side (see Figure 3-6, 0072-0088)
WO 971 discloses including a first and second beveled edge for the holder and mating holder; however, fails to disclose the beveled edge provides the uniform thickness as claimed However, Kuenanz, also in the art of holding a substrate for deposition discloses a first and second holders with a beveled edge discloses using a beveled edge and adjusting the size, shape of the beveled edge to provide the uniform thickness as a result of preventing or reducing shadowing effect. (Figure 2 and accompanying text, see 0233 which discloses the beveled edge provides no shadow or shading and thus provides for more homogeneous coating). As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified WO 971 to adjust the lip/bevel to prevent shadowing and thus control the uniformity of the thickness. Kuenanz discloses wherein the beveled edge and/or the beveled edge side of the lip form an angle with the substantially flat side of the lip and/or the first deposition side (Figure 2) and based on the explicit diagram appears to be 45o relative to the flat surfaces claimed. Additionally, Kuenanz discloses the chamfer to provide no or little shadowing and therefore the angle would be a result effective variable, directly affecting the shadowing and it would have been obvious to have determine the optimum chamfer angle, including less than about 45°, to achieve little to no shadowing for optimizing the thickness uniformity.
While the examiner maintains the position above as it related to WO 971 and the virtual plane, the reference fails to disclose that the mating holder inner side and holder inner side contact each other at a virtual plane passing through the substrates. However, KR 008, also in the art of vapor deposition onto a substrate and discloses a holder to hold the substrate during processing (se e.g. example 1, Figure 1). KR 008 discloses a carrier that includes a holder and mating holder that forms a pocket that secures and substrate and discloses the holder and mating holder contact each other at a virtual plane passing through the substrate (see e.g. figure 1, Figure 4 and 6 and accompanying text). Therefore, taking the references collectively it would have been obvious to have modified WO 971 with the teachings of KR 008 as each of the references discloses securing a substrate during processing using a holder and mating holder to secure the edges of the substrate and KR 008 discloses that using a mating holder and holder that have an inner side that contacts at a virtual plane that goes through the substrate provides a predictable method for holding the substrate at this edges.
Additionally, the location of the contact between the holder and mating holder of WO 971 would have been a mere design choice and faced with the totality of the options, one of ordinary skill in the art would have found it obvious to have determined contact location, including those as taught by KR 008, since such a modification would have involved a mere change in the size of a component. A change of size is generally recognized as being within the ordinary level of skill in the art. In re Dailey, 357 F.2nd 669, 149 USPQ 1966.
WO 971 reasonably discloses the broadly drafted locating hole as set forth above; however examiner cites here CN523, which discloses a frame and holder for vapor deposition including a lip and discloses what can reasonably be considered a locating hole (see Figure 7) in the lip of the holder and such would reasonably “mark” the margin of the substrate as it exposes the substrate margin via the hole. As such, taking the references collectively including a hole in the lip of the substrate holder would have been obvious to one of ordinary skill in the art as such is taught by CN 523 to allow for holding the substrate.
Claim 2: WO 971 discloses a process that excludes modifying the size of the thin film optical element; wherein the substrate is sized to a target size prior to depositing the first thin film stack (see e.g. 0004).
Claim 3: WO 971 discloses edge effect minimization (see 0088-0089). Additionally, Kuenanz discloses the deposition plume spatial profile is tuned in accordance with the geometry of the beveled edge and/or the geometry of the beveled edge side of the lip to provide for minimizing edge effects during depositing the first thin film stack (0233 related to no or minor shading due to holder) and therefore using this arrangement would have been obvious to one of ordinary skill in the art.
Claim 4: WO 971 discloses masking (0086 related to edge masking). Kuenanz discloses the focusing occurs as a result of what can reasonably be considered masking the deposition plume (0233 related to no or minor shading due to holder, 0007-0011 related to mask).
Claim 7: The combination of reference discloses all that is taught above. WO 791 discloses including a mating holder contacts the holder and the substrate; wherein the mating holder provides for securing the substrate in place for depositing a thin film stack on the substrate; wherein the mating holder comprises at least one mating holder opening; wherein the mating holder has a mating holder outer side and a mating holder inner side; wherein the mating holder inner side contacts the holder inner side; wherein the mating holder outer side has at least one beveled edge extending into a lip; wherein the beveled edge and the lip of the mating holder define the at least one mating holder opening; wherein the lip of the mating holder has a substantially flat side and a beveled edge side; wherein the beveled edge and/or the beveled edge side of the lip of the mating holder form an angle with the substantially flat side of the lip of the mating holder and/or the second deposition side; wherein the substantially flat side of the lip of the mating holder and the mating holder inner side define a mating holder socket; wherein the mating holder receives the substrate in the mating holder socket; and wherein a portion of the second deposition side of the substrate contacts the substantially flat side of the lip of the mating holder (Figure 5-8 and accompanying text, 0086-0096 related to first and second holding frames).
Claim 8-9: WO 971 discloses inverting the substrate, along with the holder and mating holder after forming the layer (00130-00132).
Claim 10: The characteristics of the second thin film stack and mating holder are disclosed and made obvious for the reasons set forth above as it relates to the inverting and coating with respect to WO 971, Kuenanz and KR 008.
Claim 12: WO 971 discloses the holder opening and the mating holder opening are the same (figure 2).
Claim 14: WO 971 discloses beveled edge side of the lip of the mating holder is the same as the beveled edge side of the lip of the holder (0095, Figure 6-7).
Claim 19: WO 971 discloses the substrate comprises an optically transparent material, glass, optically transparent glass (0030).
Claim 21: WO 971 discloses the holders have a similar profile (0095) and KR 008 discloses the cross section of the holders are the same over the virtual plane (see Figure 4). and thus using a first holder and second holder that are identical profile, in view of the disclosure of KR 008, would have been obvious as predictable method for securing a substrate for coating.
Claim 22: The modified WO 791 with the bevel of Kuenanz and profile of KR 008 (to prevent shadowing as made obvious for the reasons set forth above), See Figure 6 of WO 791 with angle side 234b of Figure 2 of Kuenanz with would meet the requirements of the cross section that can reasonably be considered an irregular hexagonal as it would comprise 6 sides that are arranged in an irregular hexagon, sides of different length/angle. At the very least, the shape of the holder and mating holder is set forth by WO 791 to be adjustable for a specific purpose, see 0092-0098, and therefore establishes that the shape of the first and second holder is a design choice and It would have been an obvious matter of design choice to select the design of the holders, since such a modification would have involved a mere change in the size of a component. A change of size is generally recognized as being within the ordinary level of skill in the art. In re Dailey, 357 F.2nd 669, 149 USPQ 1966.
Claim 23: WO 971 discloses the lip “faces” a same direction as the holder inner side as instantly claimed (see figures 5-8 and accompanying text)
Claim(s) 17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 971 with Kuenanz and KR 008 alone or with CN 523 taken collectively with WO 2016003401, hereinafter WO 401.
WO 971 with Kuenanz and KR 008 alone or with CN 523 discloses all that is taught above and discloses depositing layers via gas deposition to a substrate; however, fails to discloses the optical element is an ICE element to be employed in a downhole tool. However, WO 401 discloses vapor deposition coatings onto a glass substrate and disclose performing such to deposit layers onto substrate to form a ICE to be used in a device employed in a downhole tool in a wellbore penetrating a subterranean formation (abstract, page 3, lines 1-3, Figure 4 and accompanying text). Therefore, taking the references collectively, it would have been obvious to have coated the ICE component as suggested by WO 401, who discloses vapor coating a substrate, using the holder and process as suggested by WO 971, who discloses a holder and method for vapor coating a substrate.
Claim 20: WO 401 discloses the think film stack each comprises binary oxides (figure 2) and thus depositing such would have been obvious as predictable
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 971 with Kuenanz and KR 008 alone or with CN 523 and further with WO 401.
WO 971 with Kuenanz and KR 008 alone or with CN 523 discloses all that is taught above; however, fail to disclose quality control as claimed. However, WO 401 discloses PVD coatings of an optical component and discloses real time measurement to control the deposition process, including spectrometers or ellipsometers ( page 3, lines 4-10) and therefore using such a quality control would have been obvious to one of ordinary skill in the art to achieve control over the deposition.
Allowable Subject Matter
Applicant is advised that a locating hole through the lip of the holder from the beveled edge side to the flat side marks a margin of the substrate is deemed allowable subject matter provided such complies with the 35 USC 112 2nd paragraph rejection above. Examiner proposes including such “wherein the lip has a substantially flat side and a beveled edge side, wherein a locating hole through the lip of the holder from the beveled edge side to the flat side marks a margin of the substrate, . . . “ or similar amendment.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art cited or reviewed by the examiner, alone or in combination reasonably discloses the claimed holder structure with a lip that includes a hole through the lip to mark a margin of the substrate when viewed in combination with the totality of the claim structure and steps as instantly required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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