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 .
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 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.
Claims 1, 3, 5-20 are pending.
Election/Restrictions
Applicant’s election of 1, 3, 5-8 in the reply filed on 12/30/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 9-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/30/25.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1, 3, 5-8 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “the direction” which is vague because it is unclear if this is required to be the same direction as the previously recited “a vertical direction.” It would appear remedial to recite “the vertical direction.”
Claim 1 recites “a QR code” after “a QR code” has already been recited such that the antecedent basis for this second QR code is unclear.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 3, 5-8 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claim 1 recites a QR code property without any limitation on the composition of the antifog film and yet the specification, at best, provides enabling disclosure for achieving such a property with a coating having certain types of ingredients and certain ranges of amounts. Claim 1 thus encompasses a scope that constitutes an undue amount of experimentation (in terms of the type and amount of ingredients in the antifog film) that would be required to determine which types and amounts of ingredients, from amongst the broad recitation in the claims, is able to achieve the claimed QR code property. It would appear remedial (i.e., would define a reasonable amount of experimentation) if the scope of claim 1 was narrowed to recite a Markush group of each of the silane coupling agent(s), the water absorbing polymer, the polyether siloxane and the diol, as well as recite a range of amounts for each of the above respective ingredients
Upon applying the Wands factors to claim 1, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of ingredients in the antifog coating relative to the much narrower guidance provided in the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the property as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of ingredients in the antifog coating without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain types and amounts of ingredients in the antifog coating, without any corresponding direction provided for achieving the claimed property with the broader scope as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 1, 3, 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over ITO (JP 2014-037326, see machine translation) in view of Oya (U.S. 2019/0283549).
Regarding claims 1, 3, 5-8, ITO teaches an antifog coating applied to a float glass substrate ([0019]-[0020], as in claim 8, any surface is the “bottom” depending on how the glass substrate is oriented during handling) wherein the antifog coating is formed directly on the glass substrate and may include a water absorbing resin such as polyvinyl acetal as in claim 3 and 7 as well as aminopropyltriethoxysilane and glycidoxypropyltriethoxysilane coupling agents (as in claim 3 and the present disclosure) at an amount overlapping the amounts in the present disclosure in order to improve adhesion between the antifog coating and the glass substrate ([0011], [0019]-[0020], [0034], [0076]-[0081]). ITO also discloses BYK type surfactants ([0082]).
ITO does not disclose the acetalization degree of the polyvinyl acetal (as disclosed in the present application), the polyether siloxane or diol as claimed, or the claimed QR property. However, Oya is also directed to antifog coatings based on polyvinyl acetal (see abstract, [0030]) and discloses that an acetalization degree overlapping the present disclosure makes for a suitable water absorbing polyvinyl acetal to be included at an amount overlapping the present disclosure ([0144]-[0147]), and discloses that glycols, such as ethylene glycol (as in claim 5), may be included to improve antifog properties, and also discloses that surfactants like in the present application (i.e., BYK surfactants and also TSF4440, matching the TSF 4440 in the present disclosure, inherently polyether siloxanes, see [0064] of the present PGPub) allow the composition to spread evenly and prevent warping ([0186]), such that it would have been obvious to have used the type of polyvinyl acetal from Oya in ITO because Oya shows that such types of polyvinyl acetal provide the desired water absorbing property generally called for by ITO, and to have added such glycols to ITO as taught by Oya to improve antifog properties and to have added such surfactants to ITO as taught by Oya to allow the composition to spread evenly and prevent warping.
The amount of such glycol and surfactant ingredients is not disclosed, but it would have been obvious to have adjusted such amounts based on the art-recognized effects disclosed above (antifog improvement for the glycol and warping prevention for the surfactant), including to amounts that fall within the ranges of the present disclosure. The glycols of claim 6 are not disclosed, but propylene glycol is prima facie obvious compared to the disclosed ethylene glycol (differing only by the number of CH2 units). See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Based on the above, modified ITO teaches a glass substrate with a coating thereon that overlaps (in terms of the type and amount of ingredients) the same glass substrate and coating as disclosed in the present application as achieving the claimed QR code property, such that these overlapping embodiments from modified ITO will inherently have this same property as in the overlapped embodiments of the present application.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787