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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, in the reply filed on December 08, 2025 is acknowledged.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 08, 2025.
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.
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.
Claims 1-3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Heo et al (U.S. Patent # 10,361,383) in view of Turpen et al (U.S. Patent # 9,690,021).
In the case of claim 1, Heo teaches a method for forming a window (Abstract and Column 5 Lines 53-63). The method of Heo comprised forming a first portion on a substrate 310 in the form of a first inorganic layer 321, forming a second portion in the form of a first organic layer 341 on the first portion 321 and forming a third portion in the form of a first organic-inorganic hybrid layer 331 on the second portion 341 (Column 12 Lines 7-17 and Figure 2).
Heo teaches that the first portion/inorganic layer 321 was formed by applying a first solution to the substrate 310 and curing the first solution (Column 14 Lines 39-44 and Column 15 Lines 60-67). Heo further teaches that the second portion/organic layer 341 was formed by applying a second solution and curing the second solution (Column 12 Lines 21-25 and Column 18 Lines 57-60). Furthermore, Heo teaches that the third portion/organic-inorganic hybrid layer 331 was formed by applying a third solution and curing the third solution (Column 11 Lines 29-36 and Column 13 Line 56 through Column 14 Line 3).
Heo does not teach having performed a plasma treatment on the surface of the substrate.
Turpen teaches a process for manufacturing a window/optical article by depositing layers of curable coating onto an optical substrate (Abstract and Column 2 Lines 26-45). Turpen teaches that prior to depositing the curable coatings the substrate was plasma treated in order to clean the substrate (Column 21 Lines 3-8 and 38-62 and Column 32 Lines 22-39).
Based on the teachings of Turpen, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have plasma treated the substrate of Heo in order to clean the substrate.
Though Heo teaches curing the first to third portions Heo does not teach having simultaneously cured the first to third portions. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP section 2144.04.IV.C.
Furthermore, Turpen teaches that it was known in the art to deposit a curable coating layer onto a previously applied curable coating layer and concurrently curing the stack of curable coating layers (Column 29 Lines 25-37).
Based on the teachings of Turpen, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have cured the first to third portions of Heo simultaneously to thereby form a fist coating layer because curing the portions sequentially or simultaneously would not have affected the final product.
As for claim 2, Heo teaches that the first portion/inorganic layer 321 was formed from a solution comprising a silicone monomer having an acrylic group (Column 14 Lines 39-51). Heo further teaches that the second portion/organic layer 341 was formed from a solution comprising a resin having acrylic groups (Column 19 Lines 10-47). Therefore, the first solution and the second solution included a same material as each other because they both included acrylic materials.
As for claim 3, Heo teaches an embodiment wherein the first portion/inorganic layer had a thickness of 5 micrometers, the second portion/organic layer had a thickness of 10 micrometers and the third portion/organic-inorganic hybrid layer had a thickness of 5 micrometers (Column 20 Lines 59-63), all of which were within the claimed ranges.
As for claim 9, Heo teaches an embodiment wherein a third coating in the form of a layers 322, 342 and 332 were formed under the substrate 310 (Column 13 Lines 25-36 and Figure 5). Heo does not specifically teach that that the third coating layer was formed after the first coating layer but as was discussed previously the order to performing the process steps was prima facie obvious.
Claim 6, 10-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over 1 as applied to claim Heo et al in view of Turpen et al above, and further in view of Ekinaka et al (U.S. Patent # 10,280,272).
The teachings of Heo in view of Turpen as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 6, Heo does not teach having formed a second coating layer on the first coating layer comprising the first portion/inorganic layer, second portion/organic layer and the third portion/organic-inorganic hybrid layer. However, Heo teaches that the formed layers formed a hard coating on the surface of a plastic substrate (Abstract and Column 1 Lines 16-20 and 54-61).
Ekinaka teaches a laminate having excellent abrasion resistance comprising a base layer and a hard coat layer and on the hard coat was applied a top coat layer comprising flaky metal oxide (Abstract). Ekinaka teaches that the base layer was a plastic layer (Column 2 Lines 35-44) and that the hard coat layer comprised a silicon-resin based coating (Column 4 Lines 45-50). Ekinaka teaches that the top coat layer provided abrasion resistance to the laminate (Column 6 Lines 28-46).
Based on the teachings of Ekinaka, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the top coat layer of Ekinaka as a second coating layer on the first coating layer of Heo in view of Turpen in order to increase the abrasion resistance of the window.
In the case of claim 10, they are rejected for substantially the same reasons as were discussed previously in the rejection of claim 1 in that Heo in view of Turpen teach having plasma treated a surface of substrate. Heo further teaches an embodiment wherein on the substrate a first layer in the form of a first inorganic was formed on the substrate followed by forming a second layer in the form of a first organic-inorganic hybrid layer on the first layer/inorganic layer (Column 5 Lines 53-63). Furthermore, as was discussed previously, Heo taught that the inorganic layer and the inorganic-organic hybrid layer were both formed by applying a solution and then curing the solution.
Heo does not teach having plasma treated the first layer/inorganic layer. However, as was discussed previously, the layer of Heo formed on the plastic substrate were hard coat layer comprised of silicone.
As was discussed previously, Ekinaka taught a silicone based hard coat. Ekinaka further teaches that the hard coat was plasma treated prior to deposition another layer and that the plasma treatment improved the uniformity of the layer that deposited (Column 6 Lines 9-20 and Column 8 Lines 25-37).
Based on the teachings of Ekinaka, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have plasma treated the cured first layer/inorganic layer of Heo in view of Turpen in order to improve the uniformity of the subsequently applied second layer/organic-inorganic hybrid layer.
As for claim 11, Heo teaches that the thickness of the first layer/inorganic layer was about 3 to 10 micrometers (Column 3 Lines 14-15), which overlapped with the claimed range of 10 to 15 micrometers. In the case where the claimed ranges "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). See section 2144.05.I of the MPEP.
As for claim 12, Heo teaches that the second layer/organic-inorganic hybrid layer had a thickness of 5 to 15 micro meters (Column 3 Lines 47-48), which was within the claimed range.
As for claim 16, it is rejected for the same reasons discussed previously in the rejection of claim 9 in that Heo teaches an embodiment wherein a second coating comprised of a second inorganic layer and a second organic-inorganic hybrid layer was formed under the substrate 310 (Column 14 Lines 1-9 and Figure 4).
As for claim 13, Heo does not teach that the solution to form the second layer included a leveling agent.
Ekinaka teaches that the solution to form the hard coat included a leveling agent (Column 5 Line 58-63).
Based on the teachings of Ekinaka, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included a leveling agent in the second solution of Heo in view of Turpen and Ekinaka because this was a known additive in the art for forming a hard coat layer.
Allowable Subject Matter
Claims 4, 5, 7, 8, 14 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In the case of claims 4, 5, 14 and 15, as was discussed previously, Heo taught applying a first solution to form the first portion. However, Heo does not fairly teach or suggest having applied the first solution using a spray coating method along a zigzag path.
In the case of claim 7, Heo does not fairly teach or suggest having formed a second coating layer that included the steps of plasma treating the first coating; forming a fourth portion by applying a fourth solution onto the first coating layer; forming a fifth portion by applying a fifth solution onto the fourth portion; forming a sixth portion by applying a sixth solution onto the fifth portion and simultaneously curing the fourth through sixth portion.
In the case of claim 8, though Heo teaches having a first coating layer comprised of an inorganic layer, an organic layer and an organic-inorganic layer which had a combined thickness of 20 micrometers (Column 20 Lines 59-63), Heo does not fairly teach or suggest having formed a second coating layer on the first coating layer having a thickness in the range of about 20 to about 40 micrometers.
Conclusion
Claims 1 through 3, 6, 9 through 13 and 16 have been rejected and claims 4, 5, 7, 8, 14 and 15 have been objected. Claims 17 through 20 have been withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712