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, 3-13, 15, 17-22 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1 and 3-11, and certain species of siloxane monomers/carbon source gas in the reply filed on 04/09/26 is acknowledged. The traversal is on the ground(s) that the differences amongst all the claimed siloxane monomers (i.e., chain length and cyclic vs linear) result in the “the same chemical properties” and that the differences amongst all the claimed carbon source gas (i.e., chain length and cyclic vs linear) result in the “the same chemical properties”. Because Applicant has admitted that the various species as claimed are not patentably distinct, the election of species requirement is withdrawn (the restriction requirement between inventions was not traversed and is maintained) and any prior art teaching of a siloxane monomer (used with PECVD) will be considered to de facto render obvious all the claimed siloxane monomers based on Applicant’s admission (regardless of chain length or siloxane molecular structure) and likewise any prior art teaching of a carbon source gas (used with PECVD) will be considered to de facto render obvious all the claimed carbon source gases based on Applicant’s admission (regardless of chain length or carbon molecular structure). As explained below, this de facto obviousness due to Applicant’s admission is in addition to the product by process interpretation of all the claimed species (i.e., that they carry no patentable weight because they do not change the final product after being processed by PECVD, as admitted by Applicant).
See interview summary.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 12-13, 15, 17-22 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/09/26.
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, 3-11 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 a composite film “applied to” a flexible substrate and “for being formed on” a surface of the flexible substrate, which makes it unclear if the composite film is required to be on (i.e., applied to/formed on) the flexible substrate or if the composite film just has the flexible substrate as part of an intended use (“for being”).
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 § 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 3-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hitachi (JP 2010-049050, cited by Applicant, see previously provided machine translation).
Regarding claims 1, 3-11, Hitachi teaches a flexible substrate (of polymers as in claim 9 that are inherently flexible) comprising a first layer having a thickness overlapping claim 3 (therefore a “nanotransition” layer) formed by plasma enhanced CVD of a organosilicon precursor gas (rendering obvious all the claimed precursor gasses as in claims 4-8 based on Applicant’s admission of 04/09/26) followed by a second layer of DLC formed of carbon source gas (rendering obvious all the claimed precursor gasses as in claim 10 based on Applicant’s admission of 04/09/26) with a thickness overlapping claim 11 ([0026], [0027], [0029], [0044], [0045], [0048], [0049], the thickness of the silica film overlaps the claimed range and would also be obvious to optimize to within the claimed range as part of adjusting the degree of productivity benefits and abrasion resistance). The DLC layer is disclosed as being amorphous carbon and “mainly” composed of sp3 bonds (implying some amount of sp2 bonds) with some amount of hydrogen being inherently present based on the disclosed processing conditions and precursor gasses (as in claim 9, [0049]-[0052]).
In light of the overlap between the claimed product and that disclosed by Hitachi, it would have been obvious to one of ordinary skill in the art to use a film that is both disclosed by Hitachi and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
In addition to the silicon and carbon precursors for the PECVD layers discussed above rendering obvious the particular precursors as claimed, the specific type of silicon and carbon precursor is an immaterial product by process limitation because they do not affect the final product (based on Applicant’s admission of 04/09/26). “[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.” See MPEP 2113.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hitachi (JP 2010-049050, cited by Applicant, see previously provided machine translation), as applied to claim 1 above, and further in view of Sung (U.S. 2012/0164454).
Regarding claim 9, Hitachi teaches all of the above subject matter, including the substrate materials of claim 9 and amorphous DLC for the DLC layer but does not explicitly disclose the claimed hydrogen inclusion or the sp3 and sp2 bonds for the DLC layer (though this is inherent as explained above). Sung is also directed to amorphous DLC coatings and explicitly teaches that such coatings are beneficially doped with hydrogen and include a mixture of sp3 and sp2 bonds in order to provide adjustable hardness and light transmission/bonding strength (see abstract, [0024], [0045], [0049]) such that it would have been obvious to have used such amorphous DLC for the amorphous DLC layer called for in Hitachi because Sung teaches that it provides adjustable hardness and light transmission/bonding strength.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights