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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/30/25 has been entered.
Response to Amendment
Amendments to the claims, filed on 12/30/25, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 18, 21, and 22 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kim et al (US 2018/0122648 A1).
Regarding claims 18, 21, and 22, Kim teaches a barrier coating over an optical substrate (e.g., glass slide), said coating is a highly cross-linked polymer fabricated from a single multifunctional monomer topcoat (e.g., poly(1H,1H,6H,6H-perfluorohexyl diacrylate) or ethylene glycol diacrylate) deposited via initiated chemical vapor deposition (iCVD); wherein the topcoat has a thickness from about 5 to about 20 nm (i.e., thin) (abstract, para 8, 16, 60, 79, 84, 98).
Kim teaches the composition(s), structure, and method of making the barrier coating of the instant claims, so it is deemed to be transparent. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Claim Rejections - 35 USC § 103
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim.
Kim teaches an optical device comprising an optical substrate (e.g., glass slide) with a barrier coating (.e., a barrier coating for optical devices or elements), and therein a method of protecting an optical device comprising coating a surface of the optical device, wherein said coating consists of a cross-linked monomer such as poly(1H,1H,6H,6H-perfluorohexyl diacrylate) (pPFHDA), and therein the chemical structure of the instant claims; wherein the cross-linked monomer is deposited via initiated chemical vapor deposition (iCVD) (abstract, para 8, 16, 60, 79, 84, 98).
Kim teaches the topcoat has a thickness from about 5 to about 20 nm (para 98). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kim, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding the limitations “a transparent barrier layer functioning as an oil permeation barrier,” the functional limitations, property limitations, and/or additional method limitations of instant claims 3-7, 11-14, and 17, Kim teaches the composition(s), structure, and method of making the barrier coating of the instant claims, so it is deemed to meet these limitations.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
In addition, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) (MPEP § 2112.02 I)
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 102(a)(1)/(a)(2) and 35 U.S.C. 103 in view of a prior art of record. The Applicant is directed to the 35 USC § 102 and 35 USC § 103 sections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783