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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 21 July 2026 has been entered.
Election/Restrictions
Newly submitted claims 38 and 39 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: these claims recite a feature not found in originally examined claim 1 (hydroxyl ratio) while not reciting a feature found in originally examined claim 1 (partial silica-like network with ratio of Si-O-Si bonds to Si atoms).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 38 and 39 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Priority
All pending claims recite hydroxyl ratio. This limitation is not found in Provisional Application 63/431,065 but is found in Provisional Application 63/598,993. As such, all claims are considered effectively filed as of the filing date of the latter, 15 November 2023.
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, 35, 2-16, and 18-30 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.
“[S]ilica-like” is indefinite, as it is not clear what characteristic(s) present in silica that the claimed partial silica-like network should also possess. In particular, whereas silica has (Si-O-Si)/Si ratio of very close to 4, claim 1 recites a ratio of ~2.2 to ~2.9. It therefore is unclear the minimum threshold required to be deemed silica like, as ratio ~2.2 to ~2.9 at most correspond to SiO1.5. On the other hand, the Specification clearly states Q-type units to be “silica-like” and that the claimed coating should have a certain proportion of Q-type units and other types of units (e.g. T-type, D-type, and M-type). (See Spec. ¶¶ 0309-0310, 0359, and 0367). For prior art rejection below, “silica-like” is taken to require either 1) presence of significant proportion of Q-type structure, the presence of which can be evidenced by presence of certain peaks when using spectroscopic methods (e.g. absorption ~1060 cm-1 in an IR spectrum) or 2) network Si-O-Si structure having the claimed (Si-O-Si)/Si ratio.
As claims 35, 2-16, and 18-30 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 35, 2-16, and 18-30 are also held to be rejected.
Claims 35, 2-16, and 18-30 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 35 further requires the presence of an alkyl silane in the fluorine-free anti-fingerprint coating. In effect, claim 35 recites attributes of starting material (the claimed partial silica-like network) and reagent (the alkyl silane) while being actually directed to product of the starting material and the reagent. This is indefinite for the following reasons.
First, attributes of starting material and reagent are not found in the product. The alkyl silane is in fact reacted and condensed with an exposed outer portion of the partial silica-like network, the latter having exposed hydroxyl groups. (See Spec. ¶¶ 0314, 0315, and 0319). Because the silane reacts with material constituting a top surface of the partial silica-like network (in particular OH groups), this also changes hydroxyl ratio, as hydrogen is depleted during the reaction while Si remains. This is a well-known phenomenon, as shown in Figs. 3 and 4 of JP 2023/087252 A (original document and machine translation attached herewith). As such, the actual transformed product is one missing various hydrolysable moieties found in the alkyl silane and hydroxyl groups in the claimed partial silica-like network. Instead, the product has condensed siloxane linkages not present in either the alkyl silane nor the partial silica-like network.
It is further unclear if the claimed hydroxyl ratios are that of the partial silica-like network prior to further deposition, or if these are the ratios found in the final product after reaction with the alkyl silane. For claim interpretation, each of claims 18, 20, and 21 is considered to be a further transformed article made by reacting an alkyl silane with an exposed outer portion of the partial silica-like network, with the ratios pertaining to only the intermediate (viz. partial silica-like network prior to further deposition).
As claim 2-16, and 18-30 depend on claim 35, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 35, claims 35, 2-16, and 18-30 also held to be rejected.
Objection to the Specification and Drawings
The legend of Fig. 27 contains numerous typos. ¶ 0366 of the Specification mentions a “Comparative Example A” when there is only an Example A and a Comparative Example AA. Applicant is required to address these issues and to check for other typographical errors.
Requirement for Information
Applicant’s Declaration under Rule 1.132 satisfies the previously instated requirement for information.
Allowable Subject Matter
As discussed during the prosecution of 19/629,193 (now passed to issuance), the entries in Table 4 concerning an article produced by condensing alkylsilane with an intermediate of silicon oxide based networks having High-OH and derived from POSS, is considered to be allowable.
Claim Rejections - 35 USC § 102/103
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)(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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2024/104972 A1 (“Shelemin”, fully supported by European Application 22315287.7 filed on 14 November 2022) as evidenced by Shelemin NPL.
Shelemin discloses a transparent substrate coated with a multilayered film, wherein the multilayered film comprises, in the sequence listed from the substrate, an anti-abrasion and/or anti-scratch coating, an interferential coating containing a so-called layer A, and a hydrophobic and/or oleophobic coating, wherein the interferential coating is an anti-reflective coating having high refractive index layers alternating with low refractive index layers, and wherein the outermost low refractive index layer is the so-called layer A according to the inventive procedure set forth in the reference. (Shelemin pg. 5 line 20 to pg. 6 line 28 and pg. 18 line 26-29). In particular examples, such a sequence of alternating high (ZrO2) and low (SiO2 except for the outermost layer) is deposited on a clear substrate, with its outermost layer made of layer A. (Id. pg. 22 Example 8). Furthermore, various examples having the inventive outermost layer made of “layer A” are deposited on a glass substrate. (Id. pg. 19 line 16-20). Shelemin is analogous art, for it is directed to the same field of endeavor as that of the instant application (silicon oxide based coatings for transparent substrates).
Aforementioned “layer A” (inventive coating of the reference) is disclosed to be made by deposition of a precursor polysilsequioxane material, wherein the deposition is carried out by applying ion bombardment to the deposited precursor material to form the finalized product in the form of “layer A”; phrased differently the deposition process used in Shelemin is ion assisted deposition. (Id. pg. 8 line 26-33). Shelemin discloses respective results from a) subjecting the same precursor silsesquioxane composition to ion bombardment (Examples 1-7, in particular Ex. 1) and b) depositing the same precursor silsesquioxane composition by evaporation but without ion bombardment (Comp. Ex. 1). In particular, Shelemin notes that in the comparative example, by merely evaporating the silsesquioxane composition (and without subjecting the composition to ion bombardment), the resulting deposited film is largely made of the starting silsesquioxane composition. (Id. pg. 22 line 28 to pg. 23 line 2). In contrast, by subjecting the starting silsesquioxane composition to ion beam bombardment, the resulting deposited film exhibits 1) reduced intensity of and broadening of peaks characteristics of various moieties found in the starting silsesquioxane composition and 2) simultaneous presence of an absorption band at ~1050 cm-1 that is characteristic of Si-O-Si network structure. (Id. pg. 23 line 3-15, Table 1, and Fig. 1, with Fig. 1 reproduced infra, with particular emphasis for Ex. 1 of Shelemin).
It is noted that the phenomenon disclosed in Shelemin (in particular re: the transformation of the silsesquioxane when subject to ion bombardment, and with the product showing a FT-IR peak indicative of presence of Si-O-Si network structure) is the same operative mechanism described in the Instant Application. (Compare entries in Table 1 of Shelemin (in particular Ex. 1 and Comp Ex.1 thereof) with Table 1 of the Instant Application; and compare Fig. 1 of Shelemin with Fig. 15 of the Instant Application, both reproduced infra). In particular, trace 1505 the Instant Application (which also shows the phenomenon observed for Comp. Ex. 1 of Shelemin) shows that when the deposition is carried out without ion bombardment, the cage structure present in precursor silsesquioxane is left intact (as evidenced by peak at ~ 1105 cm-1). (Inst. Spec. ¶ 0359 and traces 1505 and 1515 in Fig. 15.). This peak is comparable to the FT-IR peak for the silsesquioxane cage structure present in the FT-IR for Comp. Ex. 1 of Shelemin. In particular, the Instant Application states: (emphases added)
Returning to FIG. 15, curves 1507, 1509, and 1511 correspond to Examples A-C, respectively. As shown, curves 1507, 1509, and 1511 have large peaks from about 1000 cm−1 to about 1060 cm−1 that is not present to this extent in curve 1505 or 1515. This peak is attributed to the formation of Q-type (i.e., silica-like) Si—O—Si bonds, which demonstrates that the ion beam treatment transforms the OV-POSS. Indeed, the intensity of the peak around 1105 cm−1 decreases going from curve 1505 to curve 1507 to curve 1509 to curve 1511. This demonstrates that the ion-beam treatment at least partially disrupts the cage structure, for example, by transforming T-type structures into Q-type structures. Also, the greater fraction of oxygen in the chamber (and thus in the ion beam) is associated with greater disruption of the T-type structures.
As such, the Instant Application acknowledges that only by subjecting a silsesquioxane starting composition to ion beam bombardment, does a deposited film possess a Si-O-Si network with characteristic absorption band at ~1000 to ~1060 cm-1 and decrease of peaks associated with the starting silsesquioxane material. This phenomenon is clearly shown in the case of Ex. 1 of Shelemin and for at least Ex. A and B of the Instant Application.
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Fig. 15 from Instant Application.
A comparison of the respective cited sections from Shelemin and the Instant Application, in particular re: pertinent and dispositive phenomena such as preservation of cage structure of silsesquioxane deposited without ion bombardment and the concurrent 1) diminishing of peaks attributable to the silsesquioxane (including cage structure found only in silsesquioxane) and 2) presence of a new peak attributable so Si-O-Si network when deposition is carried out with ion bombardment, clearly show that the inventive concept of Shelemin is effectively the same as the one disclosed in the Instant Application, and that the inventive concept of the Instant Application is the indispensable process for yielding a film having the claimed properties recited in the Instant Application.
Furthermore, Shelemin expressly discloses usage of a POSS starting material that is the same as the one used in the Instant Application (viz. OV-POSS). (See molecule II on pg. 14 of Shelemin). As such, even the starting silsesquioxane used in the Instant Application is disclosed with sufficient specificity in Shelemin. Although Shelemin does not disclose the claimed hydroxyl ratio, Applicant is reminded that absence of characterization of a product by a particular method is not per se sufficient to show absence of disclosure of the product, when the cited prior art discloses many substantial and dispositive similarities, including a) usage of the same deposition process of subjecting a POSS precursor material to ion bombardment during deposition, b) usage of even the same precursor material, c) the same end goal of transforming POSS precursor into a deposited material having both cage structure and Si-O-Si network structure (viz. same inventive concept), and d) substantial similar properties such as elastic modulus on the orders of tens of GPa and substantially similar absorption peaks shown via FT-IR. Furthermore, more broadly, even deposition conditions re: current application (e.g. ~1 A) and optional amount of oxygen used are substantially similar to conditions used in the Instant Application. (Shelemin pg. 9 line 24-34). Specifically, respective flow rates of argon and O2 are 5 to 30 sccm and 0 to 30 sccm, with vol% of O2 at 0.1 to 30 vol%. (Id.) This compares to the deposition conditions used in the Instant Application for the deposition used to obtain coatings having claimed hydroxyl ratio. (Spec. 0372).
As such, with the many substantial and dispositive similarities between Shelemin and the Instant Application, despite the absence of characterization, it can be concluded on the bases of the aforementioned substantial and dispositive similarities that an article produced according to the method of Shelemin anticipates or renders obvious the article recited in claim 1. With the only nominal deficiency being characterization via certain methods, the principle of substantially similar products (in particular formed from substantially similar starting material using substantially similar methods) exhibiting substantially similar properties applies.
This assertion is further bolstered by the disclosure of Shelemin NPL, which discloses effectively the same subject matter as in Shelemin, with one major difference being that whereas Shelemin’s IR spectra extends only to 3500 cm-1, that of Shelemin NPL extends to 4000 cm-1. The conditions used for the respective exemplary coatings whose spectra are recorded are otherwise the same. (Compare Shelemin pg. 19 under “General Procedures” to Shelemin NPL § II.A. on pg 023409-3). What appears to be a cut-off upsloping line in Shelemin Fig. 1 is in fact shown to be a weak and broad absorption peak at ~3600 cm-1, which is a peak typical of OH stretching. (Shelemin NPL Fig. 9, reproduced infra). Furthermore, it appears that increased O2 presence during deposition also leads to the formation of this peak. (Id.) As such, it stands to reason that with the same type of precursor materials and processing conditions, and with deposition at 2A in Ar showing a hydroxyl peak, there is even more evidence showing that the layer A of Shelemin would meet the claimed limitations. Furthermore, it can be inferred that increasing O2 during deposition would also lead to the presence of the hydroxyl peak. These further bolster the discussion above.
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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.
Claim 1 is rejected under 35 U.S.C. 103 as unpatentable over U.S. 2004/0137243 A1 (“Gleason”).
Considering claim 1, Gleason discloses forming an organosilicate glass coating via CVD from a cyclic siloxane precursor, wherein the cyclic siloxane precursor is partially oxidized during the deposition to form the organosilicate glass coating. (Gleason abs.) Gleason discloses that its organosilicate glass coating comprises Si-O-Si network. (Id. ¶¶ 0012 and 0064-0066). Gleason is analogous art, for it is directed to the same field of endeavor as that of the instant application (silicon oxide based coatings, in particular one containing OH groups).
Gleason further discloses that hydroxyl content of the organosilicate glass coating can be adjusted. (Id. ¶ 0014). Various specific examples show presence of significant proportion of OH groups. (Id. Figs. 1 and 8). In particular, Fig. 8 shows a range of OH concentrations possible. As such, OH content is at least obvious as a result of routine experimentation. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”; MPEP 2144.05 II.A. Furthermore, the FT-IR spectra all show significant OH peak, with intensity relative to peak ~1000 to 1100 cm-1 comparable to those in the Instant Application. This further lends credence to the obviousness if not sufficient disclosure re: the claimed hydroxyl ratio.
In one embodiment, Gleason broadly discloses that its organosilicate glass coating includes significant proportion of least some Q-type units. (Id. ¶ 0059). This, in combination of the aforementioned disclosure re: OH content, at least renders obvious claim 1. Furthermore, various organosilicate glass coatings comprise only T- and D-units, and it is noted that the 10-390 annealed has (Si-O-Si)/Si ratio of ~2.82 while the 10-40 annealed has (Si-O-Si)/Si ratio of ~2.97.
Gleason thus renders obvious claim 1.
Claims 35, 2-7, 16, 18-26, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Shelemin, as applied to claim 1 above, and further in view of U.S. 2015/0090026 A1 (“Imae”).
Considering claims 35, 2, 4, and 5, Shelemin discloses that its layer A has a thickness of 20 to 250 nm and refractive index less than 1.55. (Shelemin pg. 8 line 26-28 and pg. 16 line 22-24). Shelemin further discloses that additional hydrophobic layer having thickness of 1 to 10 nm can be present over its layer A. (Id. pg. 18 line 19-29). Shelemin cites two references regarding these additional layers, and it is clear that both types of layers are formed by condensing a respective silane precursor onto an underlying material that can condense with silane. It is noted that layer A of Shelemin contains moieties that can condense with other silanes.
Shelemin differs from the claimed invention, as the references incorporated therein discloses usage of only fluorinated silanes. However, in the art of hydrophobic coatings formed from silanes, it is known that long chain alkylsilanes for hydrophobic effects as to produce a coating exhibiting anti-fingerprint characteristics. (Imae abs.) In particular, Imae notes that higher cost of production and environmental externalities are both detriments of using a fluorosilane, and that its coatings, formed instead with long chain alkylsilanes such as octadecyltrimethoxysilane (ODS) per se or alternatively in conjunction with trimethoxymethylsilane (TMS), have water contact angle largely comparable to that of coating produced from fluorinated silane (evaluated by depositing the respective coatings are on planar glass). (Imae Table 1). Furthermore, both ODS per se and ODS used in conjunction with TMS exhibits low hexadecane contact angles. (Id). Given the substantial similarities in how such coatings are formed on a substrate (regardless of exact chemical composition, both fluorosilanes and long chain alkylsilane bond to respective SiO moieties on a substrate and condenses with other silanes), person of ordinary skill in the art has reasonable expectation of success that the long chain alkylsilanes such as ODS can be used in place of fluorosilanes. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have utilized long chain alkylsilanes in lieu of fluorosilanes for the reasons discussed in Imae. (Imae ¶ 0007).
Considering claims 3, 23, and 24, it is noted that Shelemin expressly discloses that improvement in hardness and elastic modulus are due to the IAD process used when depositing the precursor POSS material. (Shelemin pg. 22 line 9-16). Furthermore, Shelemin discloses that elastic modulus and haredness of its layer A are 15 to 80 GPa and upwards of 0.15x elastic modulus (12 GPa), respectively. As such, at least the layer A portion of the combination of layer A and hydrophobic top layer meets the required ranges. 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).
Furthermore, given the substantially similar method of forming the layers, including starting materials used (POSS and long chain alkylsilane), specific technique of deposition, and thickness of the respective layers, it stands to reason that the substantial similar coating structure of Shelemin and Imae would also exhibit the claimed properties.
Considering claim 6, as “bond[ing]” as defined in the specification allows for bonding via an intermediary, usage of APTES (as taught in Imae) reads on claim 6.
Considering claim 7, as OV-POSS deposited under IAD conditions is shown to possess silanol groups, and as OV-POSS and the IAD process used to deposit OV-POSS are disclosed in Shelemin, it follows that the layer A in Shelemin deposited from OV-POSS precursor under IAD condition would also contain silanol groups.
Considering claims 16, 18, 22, 25, 26, 29, and 30, Shelemin is as discussed in ¶¶ 22-29 above. It is noted that the multilayered structure disclosed reads on that of claims 2, 16, 18, 22, 25, and 26, as the multilayered structure comprises an anti-abrasion and/or anti-scratch coating having thickness of 100 – 200 nm, an interferential coating containing a so-called layer A, and a hydrophobic and/or oleophobic coating, wherein the interferential coating is an anti-reflective coating having high refractive index layers alternating with low refractive index layers, wherein the total number of high index layers and low index layers is six, and wherein the high index layers can be made of Nb2O5 and low index layers can be made of SiO2. (Shelemin pg. 5 line 20 to pg. 6 line 28 and pg. 18 line 26-29). Shelemin further discloses that the multilayered structurecan be deposited on clear glass substrates used as a cover glass or in a glazing unit, and with specific deposition of the coatings on crown glass B270. (Shelemin pg. 4 line 5-11, pg. 19 line 14-20. As such the limitations of claims 29 and 30 are met.
Considering claims 19-21, the multilayered structure of Shelemin and Imae have the requisite thickness, as the total of the alternating HI/LI anti-reflective layer and layer A is less than 500 nm and with the hydrophobic layer having thickness ~ 10 nm. (Id. pg. 6 line 18-21).
Claims 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shelemin and Imae, as applied to claim 35 above, and optionally further in view of U.S. 2018/0296775 A1 (“Frache”).
Considering claims 8-15, it is noted that ODS has water contact angle of 87° and hexadecane contact angle of 0° when deposited on flat glass. (Imae Table 1). In the instant Application, when the same material is deposited on the surface of the layer formed by depositing POSS under ion bombardment, the corresponding material exhibits water contact angle of at least 97°. Given the substantially similar method of forming the layers, including starting materials used (POSS and long chain alkylsilane), specific technique of deposition, and thickness of the respective layers, it stands to reason that the substantial similar coating structure of Shelemin and Imae would also exhibit the claimed properties.
Alternatively, it is also known in the art that various C8-C12 n-alkyltrialkoxysilane exhibits high water contact angle on planar glass, with each of octyltriethoxysilane, decyltriethoxysilane, and dodecyltriethoxysilane each cured to form a respective coating exhibiting contact angle of ~108°, and only slightly inferior to the ~110° exhibited by a coating formed from curing tridecafluorooctyltriethoxysilane. (Frache Tables 20 and 21). Given the general desirability of a coating exhibiting higher water contact angle, and given the particularly high contact angle exhibited by C8-C12 n-alkyltrialkoxysilanes such as the ones mentioned in Frache, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used any one of these C8-C12 n-alkyltrialkoxysilanes to form the hydrophobic layer placed over layer A in Shelemin. The resulting product, being produced in a manner substantially similar to that used in the Instant Application, including starting materials used (POSS and long chain alkylsilane), specific technique of deposition, and thickness of the respective layers, is considered to possess the various properties recited in claims 8-15.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Shelemin and Imae, as applied to claim 35 above, and optionally further in view of U.S. 2020/0408954 A1 (“Koch”). Alternatively, claims 1, 35, 27, and 28 are rejected over Koch in view of Shelemin and Imae.
Considering claims 27 and 28, although Shelemin contemplates providing its multilayered coating structure to a protective cover glass, Shelemin is silent re: a cover glass substrate having a textured surface. However, in the art of anti-reflective coatings for cover glasses, it is known to provide a multilayered coating structure having an alternating HI/LI anti-reflective coating and an anti-fingerprint layer onto a glass substrate having a textured surface. (Koch ¶¶ 0043-0046 and 0140). As such, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have placed the multilayered coating structure of Shelemin and Imae on a textured glass substrate, as this is well-known. Alternatively, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to use the multilayered coating structure of Shelemin and Imae as the uppermost LI layer and anti-fingerprint layer in the coated textured glass substrate of Koch, for the increased mechanical properties discussed above.
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 35, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-9 of copending Application No. 18/932,938 (reference application) in view of Shelemin. Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of the ‘938 reference recites all limitations recited in claims 1, 35, and 18 of the Instant Application except that re: the (Si-O-Si)/Si ratio. In particular, with H/Si ratio indicative of hydroxyl ratio, the H/Si molar ratio renders obvious the claimed hydroxyl ratio. The (Si-O-Si)/Si ratio is obvious in view of teachings of Shelemin as discussed above.
Claims 35, 4, 5, 8-10, 13-15, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of copending Application No. 19/629,193 (reference application, since passed to issuance). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of the ‘193 reference recites a product that has all requisite properties as recited in claims 35, 4, 5, 8-10, 13-15, and 18 of the Instant Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments against the 35 U.S.C. 112(b) rejections previously instated are not persuasive. The two issues of indefiniteness are explained in more detail above.
In view of amendments to claim 1, the previous instated rejections over at least Shelemin have been withdrawn. New rejections over at least Shelemin have been instated above. As discussed in ¶¶ 27-29 above, Shelemin discloses conditions that lead to formation of a material having hydroxyl content.
As Applicant did not provide any argument against the double patenting rejection, this rejection has been maintained.
Concluding Remarks
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
