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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 February 2026 has been entered.
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 1-3 and 5-10 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 has two issues of indefiniteness. First, claim 1recites usage of Modified Mohs Hardness and relates the level(s) of structure needed to this Modified Mohs Hardness. As discussed in the two previous Office Actions, the Modified Mohs Hardness is still indefinite, as it remains a heuristic having discrepancies when compared to actual numerical hardness measurements.
For instance, Applicant indicates tungsten carbide to have a higher Modified Mohs Hardness than tantalum carbide, yet the HK value (presumably Knopp Hardness?) of the former is actually lower than that of the latter. Even more problematic is how the Modified Mohs Hardness Scale indicates garnet to be harder than topaz, despite the fact that garnet is known to have a (traditional) Mohs Hardness of 6-7.5 while topaz is known to have a hardness 8. (See respective NPLs on the two minerals from Geoscience Australia).
Next, it appears that the intent of the claimed dual-staged etching process is for a product having a two+ tiered structure. If this is the case, it would conflict with the requirement that SiOC and SiCN can be single tiered.
For purpose of claim interpretation, claim 1 is considered to require two tiers for SiO2, and one tier for SiOC and SiCN materials. It is suggested that claim 1 be amended to recite similar limitations.
Claim 6 also has the same issue as discussed above.
As claims 2, 3, and 5-10 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2, 3, and 5-10 are also held to be rejected.
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 35 U.S.C. 103 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 1-3, 5, 6 and 9 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2017/0217831 A1 (“Hart”) as evidenced by or further in view of U.S. 2017/0226004 (“Gorelchenko”).
Considering claims 1 and 6, Hart discloses a coated glass substrate, wherein the coating on the base glass substrate is a patterned coating having regions of high thickness (projection or coalesced projection that form a ridge) alternating with regions of low thickness (depression), wherein the coating material exhibits hardness in excess of 8 GPa. (Hart ¶¶ 0010, 0031, 0077, and 0089; and Fig. 7, reproduced infra). Hart is analogous art, for it is directed to the same field of endeavor as that of the instant application (patterned hard coatings, in particular coatings exhibiting high hardness).
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It is noted that various materials listed in ¶ 0077 of the reference are known to exhibit high hardness and scratch resistance, with SiO2 and silicon oxycarbide expressly named. Furthermore, the type of scratch resistant silicon oxycarbide used by Corning for its glass coatings is known to have hardness of at least 8 GPa, with 14 GPa or 18 GPa possible. (See claim 12 of Gorelchenko). It is thus contended that the usage of a silicon oxycarbide material having hardness in excess of 8 GPa is contemplated in Hart; furthermore, Gorelchenko is considered to show that silicon oxycarbide such as those used in Hart can indeed have hardness of 14 GPa; should Applicant contend that Hart itself does not contemplate usage of silicon oxycarbide having hardness of 14 GPa (which is not conceded), then usage of the high hardness silicon oxycarbide material of Gorelchenko for the patterned coating of Hart would be obvious. As such material has hardness greater than a value of 10 on the Modified Mohs Scale, only one level of structure is needed.
With various embodiments showing elongate structure (in plan view), such structures read on the claimed elongated ridge. (Hart Figs. 3E and 3F, reproduced infra).
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Hart discloses that the respective maximum height of the pattern (referred to as higher-mode height) is in the range of 50 – 1,000 nm, and that the respective minimum height of the pattern (referred to as lower-mode height) is in the range of 0 to 50 nm. (Hart ¶¶ 0068-0070). It is readily apparent that in the configuration of Fig. 7 of Hart (wherein there is a non-zero minimum height), the corresponding difference in thickness is upwards of 950 nm. Furthermore, the broader ranges disclosed also overlap the claimed range. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
That the structure is formed by a two+ stage dry etching process is a product by process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113). In the instant case, Hart teaches that its patterned coating can be shaped via etching or mechanical processes. (Hart ¶ 0100). Formation of the coating via a two+ stage dry etching process as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art unless Applicant distinctly points out difference(s) that is substantiated by evidence, which Applicant thus far has not done so.
From the foregoing, it is readily apparent that the coated glass substrate of Hart renders obvious claims 1 and 6.
Considering claim 2, Hart discloses that the coverage of the coating (as in the higher-mode height) is 30-99%, with lateral dimension of each raised portion of the pattern to be in the range of 100 nm to 1 µm. (Hart ¶¶ 0062 and 0073). In conjunction with the discussion of ¶¶ 13-16 above, claim 2 is obvious in view of Hart.
Considering claim 3, such a region can be found in the arrangement shown in Fig. 3E of Hart.
Considering claim 5, Hart discloses that the patterning is at pseudo random, and there is no discernible pattern in the arrangement shown in Fig. 3E of Hart.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hart and Gorelchenko, as applied to claim 1 above, and further in view of U.S. 2020/0189966 A1 (“Lee”).
Claims 1-3, 5, 6 and 9 are alternatively rejected under 35 U.S.C. 103 as unpatentable over Hart, Gorelchenko, and Lee.
Considering claim 7, although Hart discloses usage of silica having hardness of at least 8 GPa and that its patterned coating can be multilayered, wherein the patterned coating is used for anti-reflection and/or anti-glare purposes, Hart does not disclose the incorporation of a second level of features.
However, as taught in Lee, a two-tiered structuring of surface features imparts both anti-glare and anti-reflection performances. In particular, it is noted that the type of two-tiered hierarchical arrangement with smaller features located on larger features is taught in Lee. (Lee ¶ 0088-0089 and Fig. 8). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have introduced a second tier of smaller-sized features to the patterned coating of Hart for improved anti-glare and anti-reflection performances.
For the alternate rejection of claims 1-3, 5, 6, and 9, should it be somehow the case that the 14 GPa silicon oxycarbide of Hart and Gorelchenko does not have hardness equivalent to at least 10 on the Modified Mohs Scale (which is not conceded), shaping the silicon oxycarbide coating to form a second tier would be obvious for the reasons of improved anti-glare and anti-reflection performances as taught in Lee.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hart and Gorelchenko, as applied to claim 1 above, and further in view of WO 2021/261602 A1 (referenced below using its English-language counterpart publication U.S. 2023/0258969 A1, “Hokari”).
This rejection is alternatively made further in view of Lee.
Considering claim 8, although Hart discloses that various types of performance-improving layers can be included as part of its patterned coating, Hart does not disclose an antifog layer.
However, as taught in Hokari, anti-fog layers are known to be deposited onto optical films (including ones having surface features). (Hokari ¶ 0167). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included an anti-fog layer into the patterned coating of Hart, for improved anti-fog performance.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over over Hart and Gorelchenko, as applied to claim 1 above, and further in view of U.S. 2014/0113083 A1 (“Lee ‘803”).
This rejection is alternatively made further in view of Lee.
Considering claims 9 and 10, although Hart discloses that a layer having fingerprint-resistance and self-cleaning properties may be included as part of its patterned coating, Hart does not disclose a water repellent film having high abrasion resistance.
However, the usage of such a material as a glass coating is well-known, with Lee ‘803 teaching an easy to clean coating that exhibits water contact angle of at least 70 °C after abrasion, with examples of contact angle of 115 °C prior to abrasion and after abrasion contact angle of 109 °C. (Lee ‘803 ¶¶ 0064-0067 and claim 11). The recited range is thus overlapped by the claimed range. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included the fingerprint-resistant and easy-to-clean film of Lee into the patterned coating of Hart, for improved cleaning properties.
Claims 1-3, 5, and 7 are alternatively rejected under 35 U.S.C. 103 as unpatentable over WO 2020/129558 A1 (referenced below using its English-language counterpart publication U.S. 2022/0128738 A1, “Tada ‘738”), in view of Lee and optionally Hart.
Considering claims 1-3, 5, and 7, Tada ‘738 discloses a structured low refractive index layer provided on a substrate, the low refractive index layer forming the outermost layer 106 made of silica and being nanostructured as to be porous. (Tada ‘738 ¶¶ 0206-0209 and Figs. 1 and 2). It is readily apparent that the topography of the outermost layer 106 has elongated ridges. (Id. Figs. 2, 3, and 5). Tada ‘738 further teaches that this outermost layer 106 of silica can be formed via dry etching. (Id. ¶¶ 0189-0193 and 0409). Tada ‘738 is analogous art, for it is directed to the same field of endeavor as that of the instant application (antireflective coatings).
Tada ‘738 differs from the claimed invention, as it is silent regarding an outermost layer 106 that is a dual level nanostructure. However, as taught in Lee, a two-tiered structuring of surface features imparts both anti-glare and anti-reflection performances. In particular, it is noted that the type of two-tiered hierarchical arrangement with smaller features located on larger features is taught in Lee. (Lee ¶ 0088-0089 and Fig. 8). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have introduced a second tier of smaller-sized features to the patterned coating of Hart for improved anti-glare and anti-reflection performances. Furthermore, as taught in Hart, silica having hardness of at least 8 GPa can be patterned and multilayered, and usage of the silica material either inherently has the requisite hardness or can be alternatively tailored to possess the hardness level taught in Hart.
Though it is noted that Tada ‘738 generally uses dry etching and Lee uses wet etching, this difference is not relevant to the inquiry of obviousness because obviousness does not require bodily incorporation. (See MPEP § 2145 III). Lee is used to show the optical advantages of a two-tiered structure, and the benefits are present regardless of the process by which the structure is formed.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/129558 A1 (referenced below using its English-language counterpart publication U.S. 2022/0128738 A1, “Tada ‘738”), Lee, and Hart, as applied to claim 1 above, and further in view of WO 2021/261602 A1 (referenced below using its English-language counterpart publication U.S. 2023/0258969 A1, “Hokari”).
Considering claim 8, although Tada ‘738 discloses that various types of performance-improving layers can be included as part of its patterned coating, Hart does not disclose an antifog layer.
However, as taught in Hokari, anti-fog layers are known to be deposited onto optical films (including ones having surface features). (Hokari ¶ 0167). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included an anti-fog layer into the patterned coating of Tada ‘738, for improved anti-fog performance.
Response to Arguments
In view of amendments to claim 1, one issue of indefiniteness has been resolved. However, as discussed in ¶¶ 3-9 above, one issue remains, and another issue has been introduced.
In view of amendments to claim 1, the previously instated prior art rejections have been withdrawn, and new rejections have been instated above.
In terms of applicability of Applicant’s argument against the new rejections, it is noted that Applicant’s argument is a contention based on bodily incorporation of the reference, rather than whether the claimed subject matter is obvious in view of the teachings of the prior art. A contention is based on bodily incorporation of the reference is not the proper analysis in arguing against an obviousness rejection. See MPEP § 2145 III. As Applicant’s has not argued against the thrust of the obviousness rejection, Applicant’s arguments are thus unpersuasive.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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