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 Arguments
Applicant's arguments filed on February 05, 2026 have been fully considered but they are not persuasive.
Applicant argument:
“Backward reflectance limitation cannot be ascribed to a hypothetical combination because D1 (EP 3,457,196) does not disclose sub-stoichiometric inorganic materials; the backward reflectance therefore is not shown in combination.”Examiner response:
Obviousness analysis does not require that a single reference disclose every claim limitation; references are combined when a POSITA would have reason to combine them and would have a reasonable expectation of success. KSR Int’l Co. v. Teleflex, 550 U.S. 398 (2007). Here: Brandon (and the intervening high/low-index reference Maschwitz) supply the interferential asymmetric mirror architecture (alternating high and low index layers, HI/LI stack) and general guidance on layer thickness and design to obtain asymmetric mirror/AR behavior. D1 expressly addresses design goals and provides example stack architectures and performance goals including producing low rear-side (backward) reflectance values (D1’s disclosure of obtaining anti-reflective behavior on one side and mirror-like reflection on the other side is directly relevant). D1 therefore teaches the objective of achieving low backward reflectance and how to design interferential stacks to obtain it. Maschwitz (the sub-stoichiometric reference applicant cites) discloses visible-absorbing sub-stoichiometric inorganic dielectric layers and quantifies their optical constants (n, k) and how those change on heating. These materials provide the claimed “visible light absorbing sub-stoichiometric inorganic material.” Thus, the Examiner’s combination is: start with an asymmetric HI/LI interferential architecture Brandon, adopt D1’s performance target/anti-reflective design guidance for the rear side (i.e. low Rb), and substitute or include the Maschwitz sub-stoichiometric absorbing layer where the stack requires an absorbing layer (to tune visible absorption/color). That substitution is a routine materials selection/optimization to obtain a targeted spectral reflectance/transmittance profile. Nothing in the claim requires that a single prior art reference already present every limitation unmodified. The Examiner has provided a coherent reason (reduce rear reflectance; tune visible absorption) and articulated an expectation of success grounded in the teachings of the applied references. Consequently, it is proper to ascribe the backward reflectance capability to the combined/hypothetical device.
Applicant argument:
“Maschwitz does not teach a LI layer with n ≤ 1.55 at 550 nm; his materials are high-n (≈2.1–2.6), so there is no motivation to combine Maschwitz’s layers into Brandon’s HI/LI interferential approach; the combination would change the principle of operation (MPEP §2143.01(V), In re Ratti).”Examiner response:
The claimed interferential architecture requires at least one HI layer (n>1.55) and at least one LI layer (n ≤ 1.55 at 550 nm). The body of prior art used by the Examiner already discloses HI/LI interferential stacks (Brandon and reference Maschwitz show alternating high and low index materials for interference coatings). Maschwitz supplies sub-stoichiometric absorbing dielectrics (with high n) that are usable as absorbing HI layers in such stacks—Maschwitz’s teaching of optical constants (Fig. 1 of Maschwitz and associated discussion) shows these sub-stoichiometric layers have elevated n and non-zero k in the visible. Nothing in Maschwitz excludes use of other low-index materials for the complementary LI layers in an interferential stack. Combining a visible-absorbing high-n sub-stoichiometric layer (Maschwitz) as the HI layer in an established HI/LI interferential stack is not a change in the principle of operation. It is a substitution of a different material for one of the functional layers (the absorbing, higher-index layer). The principle — interference between HI and LI layers to shape spectral reflection/transmission — remains unchanged. Ratti requires refusal only where the proposed modification changes the principle of operation; it does not apply where a POSITA would simply choose a different material that performs the same functional role in the same interferential architecture. The Examiner’s combination does not require Maschwitz to teach a low-index (≤1.55) layer. The low-index layer can be chosen from the many well-known LI materials (SiO2, MgF2, etc.) taught in Brandon , Maschwitz or D1. A POSITA would understand that Maschwitz’s sub-stoichiometric absorbing layer could be paired with routine LI dielectrics to form an interferential stack. That is an ordinary materials-substitution and optimization, not an inventive principle shift.
MPEP §2143.01(V) is properly applied when the modification would require abandoning the basic operating effect; here the operating effect — spectral interference by alternating HI/LI layers — is preserved. Therefore In re Ratti does not bar obviousness in this case.
Applicant argument:
“D1’s cited backward reflectance cannot be imported unless D1 also discloses the sub-stoichiometric material; one cannot simply ascribe D1’s Rb to a hypothetical stack that includes sub-stoichiometric materials.”Examiner response:
The law permits combining references and recognizing that substituting a functionally equivalent or complementary material can be expected to deliver similar or tunable spectral outcomes. The issue in obviousness is whether a POSITA would have been motivated to combine the references with a reasonable expectation of success. Here the motivations are explicit and straightforward: Brandon and Maschwitz teach the asymmetric HI/LI interferential structure and the use of absorbing layers to achieve a particular (mirror vs. AR) behavior. D1 shows how to design such stacks to achieve very low rear-side reflectance values (Rb <2.5% at small angles) and otherwise provides stacking choices and thickness prescriptions to tune spectral reflectance.
Maschwitz provides absorbing sub-stoichiometric inorganic layers with known n and k values in the visible; these layers are usable in an interferential stack as absorbing HI layers, enabling tuning of color/absorption while maintaining interference effects.
A POSITA, seeking to obtain low rear reflectance while simultaneously providing visible-absorption/color control, would therefore have been motivated to try Maschwitz’s sub-stoichiometric absorbing layers within the interferential HI/LI framework to tune spectral properties. Achieving Rb <2.5% by adjusting thicknesses/material choices is an expected result of such routine optimization; D1’s teachings give the necessary design guidance and targets. This is not hindsight but routine optimization combining known teachings.
Applicant argument:
“The claim recites a specific numeric Rb result—less than 2.5% at incident angles <15°—so the Examiner must show the combined prior art produces that specific result.”Examiner response:
The Examiner relied on D1 for showing that the claimed performance target is known and achievable with interferential designs and on the other cited references to supply the material choices and stack architecture. D1 teaches or exemplifies stacks with very low rear reflectance in the claimed angle range (the Examiner pointed to D1’s disclosure of low rear reflectance in prosecution). A POSITA would expect to meet or beat the Rb target by adopting D1’s design principles while substituting or adding an absorbing layer from Maschwitz where color/absorption is desired, because thin-film interference design and spectral tuning are conventional engineering activities with well-known design rules (index contrast, quarter-wave thicknesses, absorbing layer placement, etc.).
Further, claim 1 does not require exact spectral shape or an amount of absorption tied to a particular material; it only claims the performance end (Rb <2.5%). When a reference (D1) expressly teaches achieving low backward reflectance with the same interferential approach, combining that teaching with the material substitution from Maschwitz is within ordinary skill tuning. That is sufficient for a prima facie showing of obviousness; the burden then shifts to applicant to show non-obviousness (e.g., unexpected results, teaching away) or to amend claims to add limiting structure.
Applicant argument:
“Maschwitz’s disclosures (e.g., Fig. 1 n values ≈2.6, 2.1) prove his stack is not a HI/LI alternating stack and therefore cannot be combined with Brandon/’482 HI/LI stacks.”Examiner response:
Maschwitz’s disclosure of sub-stoichiometric layers having high indices does not exclude use of standard LI layers. Maschwitz shows comparative n/k curves for sub-stoichiometric vs stoichiometric layers; it does not teach that his stacks must consist exclusively of high-index layers or that his absorbing layers cannot be incorporated into other multilayer architectures. Indeed Maschwitz acknowledges the use of sub-stoichiometric layers in multilayer optical stacks (and the specification contemplates cladding/stabilizing layers etc.). Thus Maschwitz is a direct source for an absorbing, high-n layer, which is exactly what applicant’s claim requires in “at least one of the layers … being a visible light absorbing sub-stoichiometric inorganic material.” Nothing requires the LI layers to be from Maschwitz; they can be conventional LI dielectrics taught elsewhere. This is routine materials substitution, not a prohibited principle change.
Applicant argument:
Reliance on MPEP §2143.01(V) and In re Ratti — i.e., that the combination would change the principle of operation.Examiner response:
The proposed combination does not change the principle of operation. The principle remains interference (constructive/destructive) controlled by HI/LI layer indices and thicknesses, with an absorbing element inserted to tune visible absorption. The prior art teaches all constituent functional concepts: asymmetric interferential mirrors (Brandon and Maschwitz), performance goal of low rear reflectance (D1), and absorbing sub-stoichiometric dielectrics (Maschwitz). Using them together preserves the interference principle and uses absorbing layers as designers conventionally do for color/mirroring control. Ratti is inapposite because the combination does not require abandoning the core operating effect.
KSR: substituting a different but functionally equivalent material into a known apparatus to obtain a predictable result is precisely the type of obvious substitution that KSR upheld.
Applicant argument: “There is no reasonable expectation of success because D1 does not indicate what happens if you incorporate Maschwitz’s sub-stoichiometric layers.”Examiner response:
A reasonable expectation of success in the obviousness context does not require proof of successful exemplification of every exact permutation; it requires that a skilled person, guided by the references, would expect the modification to work. The references collectively disclose the principles, indices, generic designs, and the desired performance target. Interference coating design is a mature technical capability—index contrast and layer thicknesses are the standard knobs for tuning spectral reflectance. Using an absorbing HI layer is a routine, predictable design choice. Therefore a reasonable expectation of success exists.
Conclusion
For the reasons above, the Examiner maintains the obviousness rejection of claim 1 over Brandon in view of Maschwitz and further in view of D1. The combination supplies the structural elements (asymmetric HI/LI stack), the performance target (low rear/backward reflectance) and the known sub-stoichiometric absorbing materials. A POSITA would have been motivated to combine these teachings with a reasonable expectation of success to obtain an interferential asymmetric mirror having low backward reflectance and a visible-absorbing sub-stoichiometric layer. Therefore the rejection under 35 U.S.C. §103 is maintained.
Examiner’s Note
The examiner has pointed out particular references contained in the prior art of record within the body of the action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply. Applicant, in preparing response should consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or discussed by the examiner.
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.
Claim(s) 1-12, 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brandon et al., (hereinafter Brandon), WO 99/21048 (cited in the IDS) in view of Maschwitz Peter (hereinafter Peter), US 2005/0186482 (cited in the IDS) and further in view of EP 3457196A1 (hereinafter D1).
As to claims 1-4, Brandon discloses an optical article An optical article having a base material comprising a front main face and a rear main multi-layer coating, and see the H and L materials in table 1), the interferential multilayer coating defining high reflective properties when viewing said article from its front face (p.3 l.26: has a coloured or colourless reflection as seen from the front of the sunglass lens) and antireflective properties when viewing said article from its rear face (p.3 l.28: is anti-reflective as seen from the eye side of the lens.), called asymmetric mirror (p.5 l.3-6: By the terms “asymmetric reflectance”, as used herein, we mean that the multi-layer coating renders the lens ant-reflective when viewed from one side of the coating and exhibits a selected colour or colourless reflection when viewed from the other side.), at least one of the layers (Cr) of the asymmetric mirror being a visible light absorbing material (see the Cr layers in table 1 on p. 19).
Brandon does not explicitly disclose that the visible light absorbing inorganic material is a sub-stoichiometric material wherein the optical article comprises a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the rear main face, called backward reflectance Rb, at incident angles lower than 15°, below 2.5% (claim 1), a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the front main face, called forward reflectance Rf, at incident angles lower than 15°, that is above and wherein a ratio between the forward reflectance and the backward reflectance at an incident angle of 15% noted Rf/Rb is equal or above 10 (claim 12), the light absorbing sub- stoichiometric inorganic material comprises a sub-stoichiometric dielectric oxide or nitride materials with an extinction coefficient above or equal to 0.1 (claim2), has a thickness below 200 nm (claim 3), has a thickness below 30 nm, and above 4 nm (claim 4).
However, Brandon discloses alternatives to the metal layers in order to provide absorption (p. 6 l.24-26: The light absorbing layers of the light absorbing coating may be formed from any suitable material. Metals, metal oxides or nitrides may be used.) Further metal oxides or nitrides, if fully oxidized or nitride, are generally not absorbing.
Peter, from the same field of endeavor discloses metal oxides or nitrides which are absorbing. Specifically Peter discloses in [0004] that sub-stoichiometric materials for use as absorbing materials. Further in [0008] Peter also discloses that this films of metal sub-oxides and sub-nitrides generally have better properties as chemical barriers than the corresponding stoichiometric metal oxides and nitrides. Peter also shows in Fig. 1 that the sub-stoichiometric dielectric oxide or nitride materials with an extinction coefficient above or equal to 0.1 and that the sub-stoichiometric layer has a thickness in a range of from 10 to 100 nm, preferably from 15 to 80 nm, more preferably from 25 to 70 nm (which meets the claimed range. Further, in the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)). Similarly, a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skill in the art would have expected them to have the same properties (Titanium Metals Corporation of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985); See MPEP 2144.05)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical article of Brandon by replacing at least one Cr layer by a layer of one of sub-stoichiometric dielectric oxide or nitride materials with an extinction coefficient above or equal to 0.1 and has a thickness in a range of from 10 to 100 nm, preferably from 15 to 80 nm, more preferably from 25 to 70 nm as suggested by Peter for several advantages such as adopt the layer thickness accordingly in order to maintain the asymmetric reflectance, protecting vulnerable metal layers from corrosion, easily achieving optical properties, low production cost.
Still lacking the limitation such as, a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the rear main face, called backward reflectance Rb, at incident angles lower than 15°, below 2.5% and a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the front main face, called forward reflectance Rf, at incident angles lower than 15°, that is above and wherein a ratio between the forward reflectance and the backward reflectance at an incident angle of 15% noted Rf/Rb is equal or above 10.
However, D1, from the same field of endeavor shows in Fig. 8, a weighted spectral reflection average over the whole visible spectrum between 380- 780 nm for light arriving on the front main face (CX), called forward reflectance Rv, at incident angles lower than 15° that is above 2.5% and a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the rear main face (CC), called backward reflectance Rv, at incident angles lower than 15°, below 2.5%, and wherein the ratio between the forward reflectance and the backward reflectance at an incident angle of 150 noted Rf/Rb is equal or above 10.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Brandon when modified by Peter wherein a weighted spectral reflection average over the whole visible spectrum between 380- 780 nm for light arriving on the front main face (CX), called forward reflectance Rf, at incident angles lower than 15° that is above 2.5% and a weighted spectral reflection average over the whole visible spectrum between 380-780 nm for light arriving on the rear main face (CC), called backward reflectance Rb, at incident angles lower than 15°, below 2.5%, and wherein the ratio between the forward reflectance and the backward reflectance at an incident angle of 150 noted Rf/Rb is equal or above 10, as suggested by D1 to yield predictable result.
Accordingly, claims 1-4 and would have been obvious.
As to claims 5, 11 and 16, Brandon doesn’t explicitly disclose wherein said sub-stoichiometric inorganic material comprises SiNx, where x is a predetermined number lower than 1 or SiOx, where x is a predetermined number lower than 2, or SiNxOy, where x and y are predetermined numbers such as x<1-y/2, and y<2(1-x).
However, Peter from the same filed of endeavor discloses ([0024]) sub-stoichiometric inorganic material comprises SiOx, where
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have sub-stoichiometric inorganic material comprises SiOx, where x is predermined number lower than 2, as suggested by Peter for several advantages such as protecting vulnerable metal layers from corrosion, easily achieving optical properties, low production cost.
As to claim 6, Brandon discloses wherein at least one of the visible light absorbing layers of the asymmetric mirror is a metal layer having a thickness of 20 nm, preferably below 15 nm, more preferably below 10 nm and above 4 nm. (see the Cr layers 7; p. 19, Table 1).
As to claim 7, Brandon discloses that the metal layer is imposed between two low index layers, or between two high index layers, or between one low index layer and one high index layer of the interferential coating (see the Cr layers 7; p. 19, Table 1).
As to claim 8, Brandon discloses wherein said metal layer contains a metal species being at least one of Al, Cr, Ta, Nb, Ti and Zr. (see the Cr layers 7; p. 19, Table 1).
As to claims 9 and 20, Brandon shows in Figs. 1-3 and 5-11, wherein the front main face is coated with said asymmetric mirror, and the rear main face is coated with an interferential multilayer coating with antireflective properties when viewing said article from its rear face and wherein the interferential multiplayer coating on the rear face comprises a weighted spectral reflectance average over the whole visible spectrum between 380 nm to 780 nm, called mean light reflectance factor Rv, of the rear antireflective stack is less than or equal to 2.5%. (please note that even though limitation of “ the “mean reflectance factor Rv of the rear antireflective stack being less than or equal to 2.5%” is not explicitly disclosed it would have at least been obvious considering routine experimentation to obtain predictable result.)
As to claim 10, Brandon shows in Figs. 1-3 and 5-11, wherein said interferential multilayer coating with antireflective properties when viewing said article from its rear face is an antireflective coating.
Claim(s) 13-15 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brandon in view of Peter and D1 as applied to claim 12 above, and further in view of EP 3627194 A1 (hereinafter D2).
As to claims 13-15 and 17-19, Brandon when modified by Peter and D1 fails to explicitly disclose wherein the backward reflectance at incident angles between 35° and 45°, is below 2.5%, (claim 13), wherein the backward reflectance at incident angles between 0° and 45, is below 2.5%, (claim 14) wherein the backward reflectance at incident angles between 35° and 50°, is below 2.5% (claim 15), wherein the backward reflectance Rb at incident angles lower than 15° is below 1% (claim 17), wherein the backward reflectance Rb at incident angles between 35° and 45°, is below 1.5% (claim 18), wherein the backward reflectance at incident angles between 0° and 45° is below 2.1% (claim 19).
D2, from the same field of endeavor discloses ([0090-0098], examples 1 and 2, p. 8-9) wherein the backward reflectance at incident angles between 35° and 45°, is below 2.5%, preferably below 2%, preferably below 1.5%, preferably below 1.4%, preferably below 1.3% (claims 13, 18), wherein the backward reflectance at incident angles between 0° and 45, is below 2.5%, preferably below 2.3%, preferably below 2.2%, preferably below 2.1% (claims 14, 19). Even though D2 doesn’t explicitly disclose wherein the backward reflectance at incident angles lower than 15° is below 1% (claim 17) or between 35° and 50°, is below 2.5%, (claim 15), D2 discloses specifically in [0098] that those skilled in the art would recognize that various modifications and substitutions may be made without departing from the scope of the what is described. Further,
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Brandon when modified by Peter and D1 wherein the backward reflectance at incident angles between 35° and 45°, is below 2.5%, (claim 13), wherein the backward reflectance at incident angles between 0° and 45°, is below 2.5%, (claim 14) wherein the backward reflectance at incident angles between 35° and 50°, is below 2.5%, wherein the backward reflectance angle Rb at incident angles lower than 15° is below 15 (claim 17), wherein the backward reflectance at incident angles between 35° and 45°is below 1.5 (claim 18) and wherein the backward reflectance Rb at incident angles between 0° and 45° is below 2..1% (claim 19), as suggested by D2 to yield predictable result.
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 TARIFUR RASHID CHOWDHURY whose telephone number is (571)272-2287. The examiner can normally be reached M-F: 8 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allana L. Bidder can be reached at (571)2725560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877