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 .
Response to Amendment
Applicant’s amendments, filed 10/21/2025, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims and title. Claims 26-50 are pending with claims 44-50 withdrawn due to a restriction requirement.
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Applicant’s argue that none of the cited references disclose the specific sequence of TiO2/ZnS/Al2O3/TiO2. The examiner does not disagree that such is not explicitly disclosed by the prior art; however, the examiner notes that the collection of prior art makes obvious such. JP 414 specifically discloses an optical element and discloses applying a titanium oxide layer on the substrate to improve the adhesion between the zinc sulfide and the substrate and therefore forming a quartz/TiO2/ZnS film would have been obvious as outlined by JP 414. JP 414 further discloses depositing on the ZnS layer an antireflection film (Figure 3 and accompanying text) and exemplifies TiO2 and SiO2 as the layers of the antireflection optical layers. Therefore JP 414 makes obvious quartz/TiO2/ZnS/antireflective multilayer.
As noted in the prior art rejection, while JP 414 fails to disclose the sequence of Al2O3 and TiO2, EP 890, also in the art of forming optical coatings discloses forming an alumina layer and a titania layer for optical purposes and reduced optical losses in multilayer structures (0019, 0023-0024), where EP 890 discloses silica and alumina are known barrier materials that interchangeable (0024) and also discloses depositing ZnS and titania layers (similar to that as taught by JP 414). As such, taking the references collectively, it would have been obvious to have modified JP 414 with WO 408 to deposit alumina and titania to reap the benefits of forming the multilayer optical coating, reasonable expectation of success exists in the disclosure of JP 414 to silica and EP 890 that silica or alumina are used in combination with titania. The decrease of the water permeability of the wear resistant coating would be necessarily decreased by the presence of the coatings. EP 890 discloses alternating layers of Al2O3 and TiO2, and the combination would include/make obvious the claimed sequence (A followed by B followed by C followed by D). Applicants have proffered no additional evidence, including secondary considerations, that the sequence as claimed offers any more than mere predictable results. Specifically JP 414 discloses using the TiO2 layer to increase adhesion of the ZnS layer to the quartz and thereafter applying known optical multilayer coating thereon. Here, EP 890 explicitly discloses known multilayer coatings for optical purposes includes Al2O3 and TiO2 and thus using these well know materials for their intended purposes would have led to predictable results.
A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Applicant argues that the references fail to disclose ALD for all the layers, the examiner disagrees for the reasons set forth in the office actions that discloses and makes obvious ALD deposition. The benefits of ALD are not in the claims and therefore this argument is moot and additionally, those benefits appear to be known benefits of the ALD process (i.e. thickness control, conformality, etc.). Applicant’s arguments related to ALD provided improved characteristics, including film quality, appears to be unsupported by factual evidence and thus this argument is moot. Applicant argues that using ALD for the layers alters the deposition principles underlying the cited art and while the examiner notes that this position is not supported by a clear citation or factual underpinnings, the examiner notes EP 890 discloses using ALD for the multilayer structure and thus motivates such (abstract).
Applicant’s arguments with respect to enhanced adhesion, mechanical durability and optical clarity are noted, but not persuasive as these are not required by the claims and thus this argument is not commensurate in scope with the claims as drafted. Additionally, JP 414 discloses the adhesion using the first titania layer and thus would meet the enhanced adhesion and mechanical durability as broadly argued. Additionally, WEP 890 discloses alumina and titania as optical coatings and therefore would include some degree of optical clarity.
Applicant argument “the synergistic improvements in adhesion, wear resistance, and optical performance constitute unexpected results that further rebut any prima facie case of obviousness”; however, this assertion lacks commensurate factual evidence to support allegations of unexpected results.
All other arguments are deemed to be moot as not commensurate in scope with the claims as drafted or unsupported by factual evidence and are thus deemed mere attorney speculation.
Specification
The title of the invention has been reviewed and accepted.
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) 26-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003270414, hereinafter JP 414 taken with WO 2020263408, hereinafter WO 408 and further with EP 1674890, hereinafter EP 890.
Claim 26: JP 414 a method for fabricating a wear-resistant optical film on a quartz substrate (0011), wherein the wear-resistant optical film comprises a zinc sulfide layer and a first titanium oxide layer, the zinc sulfide layer arranged on the first titanium oxide layer, the wear- resistant optical film arranged on the quartz substrate (0011, ZnS formed on quartz substate by vapor deposition), the first titanium oxide layer being arranged to improve the adhesion of the wear-resistant optical film to the quartz substrate (“adhesion layer 4 using titanium oxide) provides improved adhesion of ZnS on the substrate (such as quartz). Using a quartz substrate would have been obvious as a specifically discloses substrate in JP 414.
JP 414 discloses vapor deposition; however, fails to specifically discloses the particulars of the claims. However, WO 408, also in the art of forming layers for optical coatings and discloses using ALD for conformal coatings (0054, 0050 regarding quartz). WO 408 discloses forming titanium oxide layer with alternately repeating surface reactions including a precursor for titanium and a first precursor for oxygen and depositing the zinc sulfide layer by deposition including a precursor for zinc and a precursor for sulfide for forming the zinc sulfide layer (0054). Therefore, taking the references collectively, as JP 414 discloses vapor deposition, it would have been obvious to have modified JP 414 to use the ALD deposition techniques of WO 408 as WO 408 discloses ALD coatings offer the benefits of forming conformal coatings for optical substrates.
JP 414 taken with WO 408 discloses all that is taught above and generally discloses an antireflective coating on the surface of the ZnS layer, including titania and silica as a layers onto the ZnS layer (see 0054, Figure 3); however, fails to disclose the claimed alumina and titania layers as claimed. However, EP 890, also in the art of forming optical coatings discloses forming an alumina layer and a titania layer for optical purposes and reduced optical losses in multilayer structures (0019, 0023-0024), where EP 890 discloses silica and alumina are known barrier materials that interchangeable (0024) and also discloses depositing ZnS and titania layers (similar to that as taught by JP 414). As such, taking the references collectively, it would have been obvious to have modified JP 414 with WO 408 to deposit alumina and titania to reap the benefits of forming the multilayer optical coating, reasonable expectation of success exists in the disclosure of JP 414 to silica and EP 890 that silica or alumina are used in combination with titania. The decrease of the water permeability of the wear resistant coating would be necessarily decreased by the presence of the coatings. Additionally, the applicants are claiming a property of a multilayer film and the prior art disclose the multilayer film and thus the results/benefits would necessarily follow from the inclusion of the alumina/titania multilayer.
EP 890 discloses alternating layers of Al2O3 and TiO2 and therefore the combination of reference that would include the claimed sequence (TiO2 followed by ZnS followed by Al2O3 followed by TiO2). Here, JP 414 makes obvious quartz/TiO2/ZnS/antireflective multilayer and EP80 makes obvious the Al2O2/TiO2 sequence for optical coating multilayer.
Claim 27: EP 890 discloses the ALD deposition of alumina using the aluminum precursor and oxygen precursor (0041) and titania using the titanium precursor and oxygen precursor (0035-0038, 0041) and using this known process to form the layers would have been obvious as a suitable method for alumina and titania deposition.
Claim 28: EP 890 discloses titanium chloride, titanium bromide, and titanium iodide (0035) and using these known titanium precursors would have been obvious as predictable. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim 29: WO 408 discloses titanium i-propoxide as claimed (0054). EP 890 discloses titanium ethoxide, titanium i-propoxide, and titanium t- butoxide; or from a group consisting of trakis(dimethylamino)titanium, tetrakis(diethylamino)titanium and tetrakis(ethylmethylamino)titanium (0035) and using these known titanium precursors would have been obvious as predictable. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim 30: EP 890 discloses precursor for aluminium is selected from a group consisting of tri-methyl-aluminium and aluminium tri-chloride (0041, 0027). Using these known aluminum precursors would have been obvious as predictable. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claims 31 and 32: WO 408 discloses Diethyl zinc with hydrogen sulfide (0054).
Claim 33 and 35: EP 890 discloses “useful precursors for oxygen include water, oxygen, ozone and alcohols” and using these known oxygen precursors would have been obvious as predictable.
Claim 34: WO 408 discloses carbon dioxide plasma (0054).
Claims 34 and 36: WO 408 discloses carbon dioxide plasma as oxygen precursor (0054). Additionally, EP 890 discloses “useful precursors for oxygen include water, oxygen, ozone and alcohols” and while the reference fails to disclose a combination of materials, using a combination of known oxygen precursors would have been obvious to one of ordinary skill in the art at the time of the invention. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 37: WO 408 discloses depositing at the desired deposition temperature (0051) and the temperature of deposition is a known result effective variable, directly affecting the deposition, reaction of the gases and therefore determination of the optimum temperature would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation.
Claim 37-38: EP 890 discloses a deposition temperature that overlaps the claimed range (not higher than about 450C) and discloses titania, ZnS, Alumina depositions (0023-0024) therefore using this deposition temperature for the deposition of these materials would have been obvious as predictable temperature for deposition (0022).
Claim 39: JP 414 discloses 5 nm for adhesion layer.
Claims 39-42: EP 890 discloses film thicknesses that overlap the ranges as claimed (see 2nm to 100 nm at 0039) and therefore at the very least, using thicknesses within the range as claimed would have been obvious to one of ordinary skill in the art forming an optical coating. Additionally, while JP 414 fails to discloses the claimed thickness, the reference discloses the thickness of each layer has a direct effect on the substrate and optical properties and therefore taking the level of one of ordinary skill in the art at the time of the invention, determination of the optimum thickness through routine experimentation to provide the desired optical properties.
Claim(s) 39-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 414 taken with WO 408 and further with EP 890 taken with US Patent Application Publication 20050181128, hereinafter USPP 128.
While the examiner maintains the position as set forth above, the examiner cites here USPP 128, which discloses a multilayer optical coating, including ZnS, Al2O3, TiO2 (0081, 0138) and discloses the thickness of each layer that overlaps the ranges as claimed (see 0033) and thus makes obvious the claimed thicknesses.
Additionally, USPP 128 discloses thickness of each layer is a result effective variable, directly affecting the optical properties (0071, thickness of each layer depend on the desired spectral characteristics of the multilayer film) and therefore determination of the optimum thicknesses through routine experimentation would have been obvious to one for ordinary skill in the art at the time of the invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/DAVID P TUROCY/Primary Examiner, Art Unit 1718