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 Interpretation
Claim 1 recites “said germanium or germanium oxide layer comprising less than 20% tin” (emphasis added). “Comprise”/ “include” usually denotes actual presence of a material. However, in view of further limitations in claim 2 requiring said germanium or germanium oxide layer to be tin-free, “comprising less than 20% tin” is considered to mean that presence of tin is optional, and that should it be contained, its content <20% in the germanium or germanium oxide layer.
It is noted that none of claims 5, 6, 17, and 18 expressly requires the presence of the optional oxygen barrier layer. As such, these claims are treated to further limit an element that is optional, as opposed to requiring the presence of an (optional) element and further defining an attribute of this element.
Claim Rejections - 35 USC § 112
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.
Claims 1-12 and 15-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As amended, claim 1 requires a germanium or germanium oxide layer that consists essentially of germanium. It is noted that in the specification a germanium layer is disclosed to have a high content of Ge, and a germanium oxide layer is disclosed to have a high content of germanium oxide (that can be of various composition represented by GeOx, where 0.01≤x≤2). Requiring both germanium oxide layer to consists essentially of germanium oxide is thus indefinite, because it is not clear just how much Ge has to be contained to be contained in a GeOx layer to be deemed a GeOx layer that consists essentially of Ge. For prior art rejections above, a layer made entirely of GeO2 is deemed to be one consisting essentially of Ge, as the specification has not identified the basic and novel characteristics associated with consisting essentially of Ge.
As claims 2-12 and 15-20 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-12 and 15-20 are also held to be rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites the germanium or germanium oxide layer consists essentially of germanium oxide. Claim 10 at best does not further limit claim 1 and at worst appears to broaden the scope of what can be included.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
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 of this title, 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.
Claims 1-3, 5, 6, 9, 10, 15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 5,365,345 A (“Propst”).
Considering claims 1-3, 10, and 15 Propst discloses a structure having a series of layers deposited on a preform 10, the layers including layer 12 of DLC film, layer 18 of a Ge:C film having 10-70% C, and an outer layer 16 of ZnS/ZnSe, wherein layer 18 of Ge:C has thickness of ~100 angstroms (10 nm). (Propst col. 2 line 27 to col. 3 line 41 and Fig. 1). Propst is analogous art, for it is directed to the same field of endeavor as that of the instant application (transparent structure having a DLC layer).
With significant range of the disclosed composition (~66%) resulting in Ge:C material that is significantly Ge, this layer is considered to read on a layer consisting essentially of Ge. Alternatively, selecting a composition resulting in a majority Ge layer is deemed to be selecting overlapping ranges. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
The limitation re: characteristics of solubility of the claimed Ge/ GeOx layer is deemed to be a property, and the Ge:C layer of Propst is considered to possess the characteristics in view of substantially similar thickness and composition (viz. majority Ge). Propst anticipates or alternatively renders obvious claims 1-3.
Considering claims 5, 6, 17, and 18, as each of these claims further modifies an optional element without actually requiring presence of the optional element, Propst also reads on each of claims 5, 6, 17, and 18.
Considering claim 9, Propst discloses usage of silicon carbide for the preform. (Propst col. 2 line 27-34).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2021/0122671 A1 (“Hart”).
Considering claims 1-3, 7, 9, 10, 15, and 19, Hart discloses a coated glass substrate comprising a glass substrate and a multilayered film 14 deposited upon the glass substrate, wherein the multilayered film 14 comprises alternate deposition of a first layer 14A that may be DLC and a second layer 14B placed immediately thereupon, the second layer may be composed of a low refractive index material such as GeO2. (Hart ¶¶ 0085, 0086, and 0096; and Fig. 1). Hart is analogous art, for it is directed to the same field of endeavor as that of the instant application (coated glass substrate having a DLC layer). Selections of respective materials for layers 14A and 14B are obvious, as these are specifically disclosed in Hart.
Hart further discloses that a seed layer 22 maybe placed between the glass substrate and the multilayered film 14, wherein the seed layer 22 may comprise silicon nitride. (Id. ¶ 0105). As expressly illustrated in Fig. 1 of Hart, a sequence of immediate layers of seed layer 22 (mapping onto the claimed ion diffusion barrier layer) / a first layer 14A/ a second layer 14B is shown.
With the reference not mentioning Sn, and with the second layer being composed of GeO2 (viz. containing no other element), no layer contains any tin. Further, no metal layer is contained anywhere in the multilayered film 14. Hart discloses that layer 14B has thickness of 5 nm or greater. (Id. ¶ 0087). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
The limitation re: characteristics of solubility of the claimed Ge/ GeOx layer is deemed to be a property, and the GeO2 layer of Hart is considered to possess the characteristics in view of substantially similar thickness and composition (viz. solely GeO2).
Hart thus renders obvious claims 1-3, 7, 9, 10, 15, and 19.
Considering claims 4, 8, 16, and 20, Hart discloses that layer 14A has thickness of 5 nm or greater, and that layer 22 has thickness of ~1 to ~10 nm. (Hart ¶¶ 0087 and 0104). These overlap the respectively recited ranges.
Considering claims 5, 6, 17, and 18, as each of these claims further modifies an optional element without actually requiring presence of the optional element, Hart also reads on each of claims 5, 6, 17, and 18.
Considering claim 11, this configuration is expressly shown in Fig. 1 of Hart.
Considering claim 12, Hart discloses that the multilayered film 14 can contain only two layers. (Id. ¶ 0085). In which case, there is only one layer 14A and one layer 14B.
Response to Arguments and Additional Comments
In view of amendments to claim 11, the 35 U.S.C. 112(b) rejection of claim 11 has been withdrawn.
Applicant’s arguments against Hart have been considered, but these are not persuasive, as less clear indication of the basic and novel characteristics associated with consisting essentially of germanium (which are presently absent), this limitation is interpreted as “comprising”, and the layer 14A of Hart made of GeO2 certainly comprises Ge. Applicant’s arguments are not commensurate with the scope of the claim, as Applicant’s interpretation is unduly narrow compared to the scope of the claim.
The rejection over Hart may be overcome by expressly reciting a layer of germanium having a certain germanium content (e.g. 50% or more). The rejection over Probst may be overcome by expressly reciting a layer of germanium having at least 80% germanium.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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