DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 10, 2026 has been entered.
Response to Amendments
3. The amendments filed on march 10, 2026 have been entered in the above-identified application. Claims 1 and 4 are amended. Claims 2, 3, and 9 are canceled. New claims 12-14 have been added. Claims 1, 4-8, 10-14 are pending and under consideration.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. Claims 1, 4-8, and 10-14 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(1) as being anticipated by Minagawa et al. (US 2019/0233555 A1).
Minagawa et al. disclose a hydrophilic substrate including a hydrophilic polymer layer having a smooth surface and formed of a special polymer (hydrophilic polymer) (equivalent to the polymer-coated glass substrate of the claimed invention). Included is a hydrophilic substrate including on its surface a hydrophilic polymer layer (equivalent to the polymer of the claimed invention) formed of a hydrophilic polymer having a number average molecular weight of 40,000 or more (meeting the molecular weight limitations of claim 1). Preferably, the hydrophilic polymer layer is formed of at least one hydrophilic polymer selected from the group consisting of polymers represented by formula shown in paragraphs 0008, 0021, 0023, and claim 3 (meeting the limitations of claims 5-8). The hydrophilic polymer may be appropriately selected from polymers having hydrophilicity. For example, it may be a homopolymer or copolymer of one or two or more hydrophilic monomers, or a copolymer of one or two or more hydrophilic monomers with an additional monomer. Examples of such homopolymers and copolymers include polyacrylic acid, polyacrylic acid esters, polymethacrylic acid, polymethacrylic acid esters, polyacryloylmorpholine, polymethacryloylmorpholine, polyacrylamide, and polymethacrylamide. The hydrophilic monomers may be any monomer containing a hydrophilic group. Examples of the hydrophilic group include known hydrophilic groups such as an amide group, a sulfuric acid group, a sulfonic acid group, a carboxylic acid group, a hydroxyl group, an amino group, and an oxyethylene group. Specific examples of the hydrophilic monomers include (meth)acrylic acid, (meth)acrylic acid esters (e.g. alkoxyalkyl(meth)acrylates such as methoxyethyl (meth)acrylate, and hydroxyalkyl (meth)acrylates such as hydroxyethyl (meth)acrylate), (meth)acrylamide, and (meth)acrylamide derivatives containing cyclic groups (e.g., (meth)acryloylmorpholine). Preferred among these are (meth)acrylic acid, (meth)acrylic acid esters, alkoxyalkyl (meth)acrylates, and (meth)acryloylmorpholine, with alkoxyalkyl (meth)acrylates being more preferred, with 2-methoxyethyl acrylate being particularly preferred. The hydrophilic substrate includes a substrate on whose surface a hydrophilic polymer layer formed of the hydrophilic polymer is formed. Examples of the substrate include glass such as soda-lime glass and borosilicate glass (equivalent to the glass substrate of the claimed invention). The hydrophilic polymer layer (the layer formed of the hydrophilic polymer) preferably has a thickness of 10 to 1000 nm (meeting the limitations of claim 10). (See Abstract and paragraphs 0008, 0009, 0017-0027). With regards to the elastic modulus limitations, the Examiner takes the position that such limitations are inherent in the materials taught by Minagawa et al. given that the structure of the polymer layer coated substrate and the chemical composition of the polymer layer as taught by Minagawa et al. and that of the claimed invention are identical. With regards to the limitations of claim 14, the patentability of a product does not depend on its method of production. If the product 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.
Response to Arguments
5. Applicant's arguments filed on March 10, 2026 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1. 4-8, and 10-14 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(1) as being anticipated by Minagawa et al. (US 2019/0233555 A1) and submit that the claimed elastic modulus of the polymer layer defines the structure of the claimed polymer-coated glass substrate and is a structural feature and not merely a property of the polymer-coated glass.
First, the Examiner disagrees with the Applicants assertion that Minagawa does not disclose the claimed structure. As pointed out clearly above, Minagawa et al. teaches a hydrophilic substrate including a hydrophilic polymer layer having a smooth surface and formed of a special polymer (hydrophilic polymer) (equivalent to the polymer-coated glass substrate of the claimed invention). Included is a hydrophilic substrate including on its surface a hydrophilic polymer layer (equivalent to the polymer of the claimed invention) formed of a hydrophilic polymer having a number average molecular weight of 40,000 or more (meeting the molecular weight limitations of claim 1) and examples of the substrate include glass such as soda-lime glass and borosilicate glass (equivalent to the glass substrate of the claimed invention). Second, the Examiner agrees that Minagawa is silent with respect to the claimed elastic modulus. However, elastic modulus is an intrinsic property of a material and given that structure of the polymer layer and the chemical composition of the polymer layer as taught by Minagawa et al. and that of the claimed invention are identical, the elastic modulus of the polymer layer taught by Minagawa et al. and that of the claimed invention MUST be identical.
The Applicants point to Example 1 and Example 2 in the instant Specification to establish that the elastic modulus of 0.14 (within the claimed range) and 0.41 (outside the claimed range), can be obtained by dissolving AIBN in toluene or methanol, respectively, during the polymerization of 2-methoxy ethyl acrylate to make poly(2-methoxy ethyl acrylate) (PMEA). In response, the Examiner would like to point out the structure implied by the process steps has been considered when assessing the patentability of the polymer-coated glass substrate to establish whether the manufacturing process steps impart distinctive structural characteristics to the final product. However, the showing of a distinct elastic modulus only extends to the polymerization of 2-methoxy ethyl acrylate to make poly(2-methoxy ethyl acrylate) (PMEA) and not to any and all polymers, as currently recited in the claims. In addition, it is known by those skilled in the art that the elastic modulus of a polymer is dependent on several factors, such as molecular weight of the polymer, the degree of crosslinking and crystallinity of the polymer etc. and the elastic modulus of a polymer can be changed by changing the processing conditions.
Hence, the rejection is maintained.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787