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 Objections
Claims 2-9, 11-15, and 17-20 are objected to because of the following informalities:
Claims 2-9, 11-15, 17-20, line 1 of each, “The optical element” should read “The transparent optical element”.
Claim 2, line 2, “the second layer” should read “the at least one second transparent layer”.
Claim 3, line 2, “the precursor compound” should read “the at least one precursor compound”.
Claim 4, line 2, “the precursor compound” should read “the at least one precursor compound”.
Claim 5, line 2, “the second precursor” should read “the second precursor compound”.
Claim 6, line 2, “transparent second layers” should read “second transparent layers”.
Claim 6, line 3, “each second layer” should read “each second transparent layer”.
Claim 7, line 2, “the plasma” should read “the volume dielectric barrier atmospheric discharge plasma”.
Claim 9, line 3, “the precursor compound” should read “the at least one precursor compound”.
Claim 11, lines 1-2, “the precursor compound” should read “the at least one precursor compound”.
Claim 12, line 2, “the precursor compound” should read “the at least one precursor compound”.
Claim 13, line 2, “transparent second layers” should read “second transparent layers”.
Claim 13, line 2, “each second layer” should read “each second transparent layer”.
Claim 14, line 1, “the plasma” should read “the volume dielectric barrier atmospheric discharge plasma”.
Claim 15, line 2, “the precursor compound” should read “the at least one precursor compound”.
Claim 17, line 2, “the precursor compound” should read “the at least one precursor compound”.
Claim 18, line 2, “transparent second layers” should read “second transparent layers”.
Claim 18, line 2, “each second layer” should read “each second transparent layer”.
Claim 19, line 1, the plasma” should read “the volume dielectric barrier atmospheric discharge plasma”.
Claim 20, line 2, “the precursor compound” should read “the at least one precursor compound”.
Appropriate correction is required.
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, 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ekinaka et al. (JP 2005/161600).
Regrading Claims 1-20, Ekinaka discloses a laminate used for windows of vehicles or headlight lenses (para 0117). Given that the laminate is used for windows or headlight lenses, it is clear that the laminate would inherently be transparent (i.e. transparent optical element for a vehicle). The laminate comprises a polycarbonate substrate, (i.e. first transparent layer), a first layer, and a second layer (para 0001). The first layer and second layer correspond to the claimed second transparent layers.
The first layer is a crosslinked acrylic copolymer made by polymerizing monomers (i.e. first precursor compound) and crosslinking agent (i.e. second precursor compound) (paras 0031- 0033). The thickness of the first layer is 1-12 microns (para 0045). The second layer is a crosslinked organopolysiloxane polymer (para 0079) made by polymerizing monomers including aminopropyltriethoxysilane (para 0086).
While there is no disclosure that the polymerization is being assisted by volume dielectric barrier atmospheric discharge plasma where the plasma is created and maintained by an ionizable gas introduced between two electrodes separated by a dielectric, the electrodes being fed with electric current by an electric generator configured to provide an electric polymer between 50 W and 500 W in which the ionizable gas is unpolymerizable and neutral, the volumetric flow rate of the ionizable gas being between 60 Is/min and 100 Is/min and in which a dilution gas is used to adjust the concentration of the precursor compound in the volume dielectric barrier atmospheric discharge plasma, the volumetric flow rate of the dilution gas being between 2 Is/min and 8 Is/min, it is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Ekinaka meets the requirements of the claimed transparent optical element, Ekinaka clearly meet the requirements of present claims.
In light of the overlap between the claimed transparent optical element and that disclosed by Ekinaka, it would have been obvious to one of ordinary skill in the art to produce a transparent optical element that is both disclosed by Ekinaka and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Claims 1-3, 6-11, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rhoton (WO 2008/045226).
Regarding claims 1-3, 6-11, 13-16, and 18-20, Rhoton discloses an optical product made by coating a substrate using plasma enhanced chemical vapor deposition (PECVD) which comprises providing a substrate, providing a gaseous mixture, and generating plasma to form at least one solid polymeric deposit on the substrate where the gaseous mixture comprises a precursor for forming the solid deposit (Abstract and paras 0002, 0007, 0040, 0051). The plasma polymerization results in an optically clear coating deposited on the substrate (para 0087) (i.e. second transparent layers). The substrate includes polycarbonate (para 0072) (i.e. first transparent layer). Given that the coating is optically clear and the substrate includes polycarbonate identical to that used in the present invention, it is clear that the optical product would necessarily inherently be transparent. The precursor, which forms a polymer when subjected to PECVD, includes monomers such as silanes, siloxanes, and silazanes (para 0057). The resulting coating(s) have thickness not greater than 1 micron (para 0067). The plasma is introduced between an electrode and a counter-electrode using a dielectric barrier discharge apparatus at atmospheric pressure (paras 0075-0076) where the current applied to the electrodes is 10-10,000 W (para 0077).
While there is no explicit disclosure that the polymerization is being assisted by volume dielectric barrier atmospheric discharge plasma where the plasma is created and maintained by an ionizable gas introduced between two electrodes separated by a dielectric, the electrodes being fed with electric current by an electric generator configured to provide an electric polymer between 50 W and 500 W in which the ionizable gas is unpolymerizable and neutral, the volumetric flow rate of the ionizable gas being between 60 Is/min and 100 Is/min and in which a dilution gas is used to adjust the concentration of the precursor compound in the volume dielectric barrier atmospheric discharge plasma, the volumetric flow rate of the dilution gas being between 2 Is/min and 8 Is/min, it is noted that “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Rhoton meets the requirements of the claimed transparent optical element, Rhoton clearly meet the requirements of present claims.
While there is no disclosure that the transparent optical element is “for a vehicle” as presently claimed, the recitation in the claims that the transparent optical element is “for a vehicle” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Rhoton disclose transparent optical element as presently claimed, it is clear that the transparent optical element of Rhoton would be capable of performing the intended use, i.e. for a vehicle, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
In light of the overlap between the claimed transparent optical element and that disclosed by Rhoton, it would have been obvious to one of ordinary skill in the art to produce a transparent optical element that is both disclosed by Rhoton and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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