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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 18, 2026 has been entered.
Response to Arguments
Applicant's arguments filed on May 18, 2026 have been fully considered but they are not persuasive.
Applicant argues that Brandon prefers neutral absorption and a flat transmission curve, and that replacing Cr/Nb with Maschwitz’s sub-stoichiometric layers would remove the feature Brandon values.
In response it is respectfully pointed out to applicant that Barndon does not teach away from all absorbing alternatives. Brandon’s core objective is an optical lens with attenuation of transmitted light, reflective front-side appearance, and anti-reflection toward the wearer. (relevant sections: pages 3-5, 18-21; tables 1-3). Brandon’s reference to “neutral absorption” and “flat transmission” is a design preference, not a prohibition against other absorbing materials. Brandon is concerned with achieving useful sunglass performance and aesthetically pleasing reflectance/transmission characteristics. A person of skill would understand that different absorbing materials may be selected to obtain comparable optical performance. Further, Maschwitz is not inconsistent with Brandon’s purpose. Maschwitz teaches that sub-stoichiometric layers can serve as optical interference layers and that their optical properties can be selected to stabilize or tune stack behavior. (relevant sections:, ¶¶ 0013–0015, 0031, 0039–0043, 0049; Example 5 and Example 7). Maschwitz specifically teaches that sub-stoichiometric layers can be used in optical stacks and can be designed to control transmission changes. That is consistent with Brandon’s goal of controlling visible transmission and reflectance. Brandon does not teach away from using a different absorbing layer type. At most, it identifies a preferred material set for one embodiment. The law does not require that the exact same material be used where the function and result can be obtained by a known alternative.
Applicant argues that because Maschwitz requires a stabilizing layer in direct contact with the sub-stoichiometric layer, a skilled person would not simply substitute Maschwitz’s layer into Brandon’s stack.
In response it is respectfully pointed out to applicant that:
Maschwitz expressly teaches sub-stoichiometric layers in optical stacks. Maschwitz’s core teaching is that sub-stoichiometric layers can be used in optical stacks, alone or with stabilizing layers. (Relevant passages: ¶ 0013: optical stack containing a sub-stoichiometric layer whose characteristics are controlled to stabilize optical properties; ¶ 0014: sub-stoichiometric layer can be directly contacted on one or both sides by a stabilizing layer; ¶ 0029: optical stack having a sub-stoichiometric layer in contact with one or two stabilizing layers; ¶ 0039–0040: stabilizing layer thickness can be 1–10 nm).
8. Thus, Maschwitz does not merely disclose a fragile layer requiring some special setting; it teaches a known optical-layer architecture that can be adapted to optical stacks.
B. Direct contact with stabilizer does not make substitution non-obvious.
9. The obviousness question is whether a skilled artisan would have had reason to use a sub-stoichiometric absorbing layer in Brandon. Maschwitz gives that reason: it is an optical stack layer with useful index/absorption properties.
10. Even if a stabilizing layer is included, that is simply part of the known Maschwitz layer system. It does not render the substitution non-obvious. It is common in the art to incorporate adjacent dielectric layers around absorbing layers to improve performance or durability.
C. Applicant’s “must add 11-14 layers”reasoning is overbroard.
11. Again, claim 1 does not require replacing every absorbing layer in Brandon. A single substitution is enough for claim 1’s “at least one” requirement. Therefore the argument that one would necessarily exceed 10 layers is not commensurate with the scope of the claim.
12. Applicant argues Maschwitz does not disclose Brandon’s neutral transmission curve and therefore would not motivate substitution.
13. In response to the argument it is respectfully pointed out to applicant that Maschwitz explicitly states sub-stoichiometric layers can be used in optical stacks; their optical properties can be selected to stabilize the optical stack and the sub-stoichiometric layer can be chosen so changes in the layer offset changes in the rest of the stack ( ¶ 0013–0015; ¶ 0049; Example 6, ¶¶ 0085–0092; Example 7, ¶¶ 0090–0093). This is sufficient to motivate to one of ordinary skill in the art to use such a layer where the design goal is to control visible reflectance/transmission in a multiplayer coating. Further, Maschwitz is not limited to low-e stacks in a narrow sense; it teaches optical-stack design using sub-stoichiometric materials whose n and k may be selected to modify optical response. A skilled artisan looking to implement an absorbing layer in an asymmetric mirror would reasonably consider Maschwitz’s sub-stoichiometric materials as a substitute absorber.
14. As to applicant’s argument that D1 is irrelevant because present claim 1 no longer recites the weighted spectral reflection average limitation. In response it is respectfully pointed out to applicant that may be true for claim 1, but it does not eliminate D1’s relevance to claim 12 and any related reflectance-average limitation.
15. As to applicant’s argument that D2 does not cure the deficiencies of Brandon +Maschwitz + D1., it is respectfully pointed out to applicant that the proper reply is that D2 need not to cure the entire combination independently. It only needs to supply the additional reflectance thresholds recited in those dependent claims. If D2 discloses the specific backward reflectance thresholds or angle-dependent reflectance limits, then it is properly combinable with Brandon_Maschwitz+D1 because Brandon supplies the asymmetric mirror structure; Maschwitz supplies the sub-stoichiometric absorbing inorganic layer; D1 supplies weighted reflection/reflectance concepts where needed and D2 supplies the specific backward reflectance parameters. So, the rejection of the dependent claims can still be maintained if each additional limitation is accounted for in the combination.
16. Summary for maintaining the rejection. Brandon discloses an optical article with an asymmetric mirror multilayer coating having high front-side reflectance and rear-side antireflection, including alternating absorbing and transparent layers, and an embodiment with 8 functional layers. Maschwitz teaches visible-light absorbing sub-stoichiometric inorganic layers for use in optical stacks, including oxide/nitride/oxynitride materials having elevated extinction coefficients and appropriate thicknesses. It would have been obvious to substitute one of Brandon’s absorbing layers with Maschwitz’s sub-stoichiometric absorbing layer to obtain another known absorbing layer for optical stack design, with a reasonable expectation of success. The newly added “at least 4 and fewer than 10 layers” limitation is met or at least obvious because Brandon already teaches an 8-layer functional embodiment, and claim 1 does not require all absorbing layers to be replaced. Applicant’s argument that Maschwitz requires direct-contact stabilizer layers does not preclude the combination, because Maschwitz expressly teaches sub-stoichiometric layers in optical stacks with stabilizing layers, and the use of an adjacent stabilizing layer is itself a known implementation choice. D1 and D2 remain applicable to the dependent claims with their additional reflectance limitations.
Examiner’s Note
17. 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
18. 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.
19. 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 Maschwitz), US 2005/0186482 (cited in the IDS) and further in view of EP 3457196A1 (hereinafter D1).
20. 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 face, at least one main face being coated with an interferential multilayer coating comprising a stack of at least one high refractive index layer having a refractive index higher than 1.55 and at least one low refractive index layer having a refractive index of 1.55 or less, the refractive indexes being expressed for a wavelength of 550 nm, (see p.5 l.4: 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 discloses (Table 1 and Table 4) multilayer stack with a finite number of optical layers in the asymmetric coating. Brandon’s disclosed example includes an 8 -layer functional stack that falls within the claimed range of at least 4 and fewer than 10 layers. Thus the interpretation of “participate in an asymmetric mirror effect” as the layers forming active optical stack responsible for the asymmetric reflectance/antireflective behavior, Brandon’s example remains within the claim scope.
21. Even if Brandon does not expressly use the exact claim phrasing, the active stack in Brandon is a multilayer optical interference system with a layer count within the claimed numerical range. The numerical limitation is not patentably distinguishing if Brandon already discloses an active stack of 8 layers, or if substitution of one absorbing layer for another does not move the structure outside the claimed range.
Further, Brandon does not explicitly disclose that the visible light absorbing inorganic material is a sub-stoichiometric material, 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.
Maschwitz, 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 Maschwitz 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.
22. 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.
23. 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).
24. 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).
25. 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).
26. 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.)
27. 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.
28. 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).
29. 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
30. 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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/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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