DETAILED ACTION
Claims 1-15 are pending. Claims 1-15 are rejected.
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 .
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.
Claims 1, 3-5, and 9-11 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Barnes et al. (US 2007/0166528) (Barnes).
Regarding claim 1
Barnes teaches a moisture vapor permeable metallized composite sheet comprising a moisture vapor permeable sheet coated with a metal layer. The metal layer is oxidized to form a protective synthetic metal oxide layer. The moisture vapor permeable sheet contains pores extending through the sheet. The metal layer is formed using vapor deposition techniques. See, e.g., abstract and paragraphs [0018] and claim 7.
Regarding claim 3
Barnes further teaches the metal coating has a thickness between about 15 to 200 nanometers. Paragraph [0005] and claim 7.
Regarding claim 4
Given that the material and method of forming the moisture vapor permeable metallized composite sheet of Barnes is substantially identical to the material and method of forming the substrate with a film as used in the present invention, including a metal film deposited using vapor deposition, as set forth above, it is clear that the moisture vapor permeable metallized composite sheet of Barnes would inherently possess tensile strength in the range of 75 to 85% of the tensile strength of the moisture vapor permeable sheet, as presently claimed.
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). See MPEP 2112.01 (I).
Regarding claim 9
Barnes further teaches the moisture vapor permeable sheet is a nonwoven fabric, woven fabric, microporous film, microperforated film, and composites thereof. Paragraphs [0006] and [0025].
Regarding claim 10
Barnes teaches controlling the thickness of the metal oxide coating to 10 nm or less. Paragraph [0005] and claim 7.
Although Barnes does not explicitly teach cooling the substrate to a temperature range of 100°C to 0°C to control the metal oxide thickness as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Barnes meets the requirements of the claimed product (i.e., controlling the thickness of the metal oxide layer), Barnes clearly meets the requirements of the present claim.
Regarding claim 11
Barnes further teaches the metal coating has a thickness between about 15 to 200 nanometers and the metal oxide coating has a thickness of less than 10 nm. Paragraph [0005] and claim 7. Therefore, the total thickness is in the range of 25 to 210 nm.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hussey et al. (WO2019227131) (Hussey).
Regarding claims 1 and 9
Hussey teaches a textile coated with a metal film. Given the textile is a porous moisture vapor permeable web membrane, it follows the textile is a porous substrate comprising one or more pores extending through the substrate. The surface of the metal layer is oxidized to increase corrosion resistance to form a self-protective metal oxide coating. See, e.g., abstract and paragraphs [0060], [0069], [0071], [0078], [0088], [0192], and claims 1, 3, and 14.
Given that Hussey discloses the metalized textile that overlaps the presently claimed substrate with a film, including applying the film using vapor deposition, it therefore would be obvious to one of ordinary skill in the art, to use vapor deposition to apply the metal film, which is both disclosed by Hussey and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 2
Hussey further teaches controlling the thickness of the metal oxide layer to protect the underlying metal layer. Paragraph [0192].
Although there are no disclosures on the thickness of the metal oxide layer as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the metal oxide layer of Hussey, including over the amounts presently claimed, in order to protect the underlying metal layer, and thereby arrive at the claimed invention.
Regarding claim 3
Hussey further teaches the metal layer possesses a thickness between 20 and 150 nm. Claim 1.
Regarding claim 4
Given that the material and method of forming the coated textile of Hussey is substantially identical to the material and method of forming the substrate with a film as used in the present invention, including a metal film deposited using vapor deposition, as set forth above, it is clear that the coated textile of Hussey would intrinsically possess tensile strength in the range of 75 to 85% of the tensile strength of the textile, as presently claimed.
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). See MPEP 2112.01 (I).
Regarding claim 5
Given that the material and method of forming the coated textile of Hussey is substantially identical to the material and method of forming the substrate with a film as used in the present invention, including the oxide layer providing protection from corrosion resistance, as set forth above, it is clear that the coated textile of Hussey would inherently be capable of possessing a ΔE of less than 3 after a period of more than 4 hours of the film being applied, relative to the colour of the film at the time of initial exposure to atmosphere external a film deposition system, as presently claimed.
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). See MPEP 2112.01 (I).
Regarding claim 6
Hussey further teaches the metal layer includes copper. Therefore the metal oxide layer includes copper oxide. Paragraphs [0065] and [0137]. Given the metal layer includes copper, not a copper alloy, it follows the copper film comprises a copper portion with greater than 95% purity.
Regarding claims 7 and 13
Hussey further teaches the metal layer possesses an emissivity of no greater than about 0.35. Paragraphs [0088] and [0189]. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 8
Given that the material and method of forming the coated textile of Hussey is substantially identical to the material and method of forming the substrate with a film as used in the present invention, including the oxide layer providing protection from corrosion resistance, as set forth above, it is clear that the coated textile of Hussey would inherently be capable of possessing a ΔE of less than 3 after a period of more than 4 hours of the film being applied, relative to the colour of the film at the time of initial exposure to atmosphere external a film deposition system, as presently claimed.
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). See MPEP 2112.01 (I).
Although Hussey does not explicitly teach a cooling process as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hussey meets the requirements of the claimed product (i.e. a ΔE of less than 3 after a period of more than 4 hours of the film being applied, relative to the colour of the film at the time of initial exposure to atmosphere external a film deposition system, for the reasons set forth above), Hussey clearly meets the requirements of the present claim.
Regarding claim 10
Hussey further teaches controlling the thickness of the metal oxide layer to protect the underlying metal layer. Paragraph [0192].
Although Hussey does not explicitly teach cooling the substrate to a temperature range of 100°C to 0°C to control the metal oxide thickness as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hussey meets the requirements of the claimed product (i.e., controlling the thickness of the metal oxide layer), Hussey clearly meets the requirements of the present claim.
Regarding claim 11
Hussey further teaches the metal layer possesses a thickness between 20 and 150 nm. Claim 1. Hussey teaches controlling the thickness of the metal oxide layer to protect the underlying metal layer. Paragraph [0192].
Although there are no disclosures on the thickness of the metal oxide layer as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the metal oxide layer of Hussey, including over the amounts presently claimed, in order to protect the underlying metal layer, and thereby arrive at the claimed invention.
Regarding claim 15
Hussey further teaches the metal of the metal layer includes aluminum or copper. Paragraphs [0065] and [0137].
Claim 6 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Hussey et al. (WO2019227131) (Hussey), as applied in claim 1 above, and further in view of Coza et al. (US 2016/0331054) (Coza).
It is noted that when utilizing WO2019227131, the disclosures of the reference are based on US20210214886 which is an English language equivalent of the reference.
Regarding claim 6
Hussey teaches all of the limitations of claim 1 above, including the use of copper and therefore the use of copper oxide. Paragraphs [0065] and [0137].
With respect to the difference, Coza teaches a multilayer fabric comprising a metal layer deposited on a fabric. The metal layer comprises a pure metallic material such as copper. See, e.g., abstract and paragraphs [0005] and [0089-0090].
Coza and Hussey are analogous art as they are both drawn to metallized fabrics for garments.
In light of the disclosure as provided by Coza, it therefore would have been obvious to one of ordinary skill in the art to use pure copper as the copper of the metal layer of Hussey, in order to form a metallized fabric with predictable success, as Coza teaches pure copper is a suitable for coating a fabric for use in a garment, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 227 F.2d 198 (CCPA 1960).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hussey et al. (WO2019227131) (Hussey), as applied in claim 1 above, and further in view of Crisp (US 6,161,220).
It is noted that when utilizing WO2019227131, the disclosures of the reference are based on US20210214886 which is an English language equivalent of the reference.
Regarding claim 12
Hussey teaches all of the limitation of claim 1 above, however does not explicitly teach the substrate has a first colour on a first aside and a second colour on a second side.
With respect to the difference, Crisp teaches an insulating garment comprising a fabric with two different contrasting colors used for the inner and outer layer, so that the garment may be reversed for use under different conditions. See, e.g., abstract and col. 2, lines 30-41.
Crisp and Hussey are analogous art as they are both drawn to insulated garments.
In light of the motivation as provided by Crisp, it therefore would have been obvious to one of ordinary skill in the art to ensure the textile of Hussey has a first colour on a first aside and a second colour on a second side, in order to ensure the garment may be reversed for use under different conditions, and thereby arrive at the claimed invention.
Claims 5 and 8 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Hussey et al. (WO2019227131) (Hussey), as applied in claim 1 above, and further in view of Yamada et al. (WO 202106039A1) (Yamada).
Regarding claims 5 and 8
Hussey teaches all of the limitations of claim 1 above, including the use of copper. Paragraphs [0065] and [0137].
With respect to the difference, Yamada teaches a metallized film that exhibits small changes in color. Oxidizing the copper layer to form a protective layer may result in abnormal discoloration. The metalized film comprises a copper layer and an anti-corrosion layer. The anti-corrosion layer is made from titanium oxide. The metalized film has a color difference ΔE of 6.5 or less after 3 days in the same environment. The copper layer and anticorrosive layer are formed by vacuum deposition. The anti-corrosion layer protects the copper layer. See, e.g., abstract and paragraphs [0001], [0015-0016], [0018-0019], and [0031-0034].
Yamada and Hussey are analogous art as they are both drawn to anti-corrosive layers for copper layers.
In light of the motivation as provided by Yamada, it therefore would have been obvious to one of ordinary skill in the art to use the anti-corrosive layer of Yamada as the self-protective layer of Hussey, in order to avoid any abnormal discoloration and in order to provide an anti-corrosive layer with predictable success as Yamada teaches the anti-corrosive layer is capable of protecting a metallized film comprising copper, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Although Hussey in view of Yamada does not explicitly teach a cooling process as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hussey in view of Yamada meets the requirements of the claimed product (i.e. a color difference ΔE of 6.5 or less after 3 days), Hussey in view of Yamada clearly meets the requirements of the present claim.
Claims 2, 7, 13, and 15 are rejected under 35 U.S.C. 103 as being obvious over Barnes et al. (US 2007/0166528) (Barnes), as applied in claim 1 above.
Regarding claim 2
Barnes further teaches the metal oxide coating possesses a thickness of less than about 10 nm. Paragraph [0005] and claim 7. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claims 7 and 13
Barnes further teaches the metal layer possesses an emissivity of no greater than 0.15. Paragraph [0030]. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 15
Barnes further teaches the metal of the metal layer includes aluminum, zinc, and titanium. Paragraph [0033].
Claims 1 and 14 are rejected under 35 U.S.C. 103 as being obvious over Kelsey et al. (US 2009/0214852) (Kelsey) in view of Hussey et al. (WO2019227131) (Hussey).
Regarding claims 1 and 14
Kelsey teaches applying a metal film by metal vapor deposition to a substrate. The metal possesses an emissivity of less than about 0.75. The substrate is porous and comprises one or more pores extending through the substrate. See, e.g., abstract and paragraphs [0026], [0039-0040], and [0058].
Given that Kelsey discloses the composite that overlaps the presently claimed substrate with a film, including depositing a metal film on a porous substrate, it therefore would be obvious to one of ordinary skill in the art, to use the metal film and porous substrate, which is both disclosed by Kelsey and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Kelsey does not explicitly teach the film comprises a metal oxide.
With respect to the difference, Hussey teaches a textile coated with a metal film. Given the textile is a porous moisture vapor permeable web membrane, it follows the textile is a porous substrate comprising one or more pores extending through the substrate. The surface of the metal layer is oxidized to increase corrosion resistance and abrasion resistance to form a self-protective metal oxide coating. See, e.g., abstract and paragraphs [0060], [0069], [0071], [0078], [0088], [0192], [0217], and claims 1, 3, and 14.
Hussey and Kelsey are analogous art as they are both drawn to apparel.
In light of the motivation as provided by Hussey, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to oxidize the surface of the metal layer of Kelsey, in order to provide increased corrosion resistance and abrasion resistance, and thereby arrive at the claimed invention.
Conclusion
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789