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 .
DETAILED ACTION
The instant application having Application No. 18/599,507 filed on March 8, 2024 is presented for examination by the examiner.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a system including a transparent substrate and a lipophilic coating thereon, classified in CPC G02B1/18 and USPC 359/507.
II. Claims 11-20, drawn to a method of making a lipophilic coating and applying it to a transparent substrate, classified in CPC C09D5/1606; B29D11/00865 and USPC 106/2; 427/162.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product made could have been made by a materially different process that does not involve curing a mixture of an oil with a diluent that has been applied to the substrate, for example, by directly applying a lipophilic group to the underlying substrate compound (see e.g. Zhao et al. US 2023/0331892).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification (as noted above, both the composition (C09D5/1606 and 106/2) and method of application (B29D11/00865 and 427/162) are classified in different CPC and USPC areas than the optical article made (G02B1/18 and 359/507);
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter (as evidenced by their different classifications above, the inventions of groups I and II have recognized divergent subject matter);
(c) the inventions require a different field of search (for example, searching
different classes/subclasses or electronic resources, or employing different search queries) (in addition to employing different classes and subclasses, the search terms to identify pertinent art would not be the same, and non-patent literature is much more likely to be pertinent to the composition/method claims)
(d) the prior art applicable to one invention would likely not be applicable to another invention (there is no reason to expect that the art pertinent to group I would also teach the specific method of group II).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with James De Vellis on March 4, 2026 a provisional election was made with traverse to prosecute the invention of group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Drawings
The applicant’s drawings submitted on March 8, 2024 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statements dated March 8, 2024 and August 30, 2024 are acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. Since no copy of IDS reference WO 2008/053020 was provided, the examiner has included a copy thereof with the present communication.
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.
Claim 6 is 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.
Regarding claim 6, the limitation “the lipophilic coating is configured to reduce a thickness of the contaminant by 30% to 95%” is indefinite for at least the following reasons. First, this limitation is indefinite because it contains a reference to an object that is variable, namely an unspecified contaminant and secondly, the claim is directed to a function or result only without a clear-cut indication of the structures needed to satisfy the claimed function.
With respect to the first issue, see MPEP §2173.05(b)(II) “A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined. That is, where the elements of a claim have two or more plausible constructions such that the examiner cannot readily ascertain positional relationship of the elements, the claim may be rendered indefinite. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989).” In the current instance, whether the system achieves the claimed function is not solely dependent on properties of the system like the composition and thickness of the lipophilic coating and size of the substrate. Rather the reduction in thickness is also dependent on at least the material of the contaminant and the initial volume and height of the contaminant. For example, a few grains of sand could be dispersed by the coating such that they did not interfere with the visibility, without any change of size of the sand particles. For claim 1, this issue is considered to be a question of breadth not indefiniteness, but the more specific functional achievement of a numeric reduction in thickness of claim 6 is problematic.
Secondly, claim 6 is currently drawn to a result only. Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). See MPEP §2173.05(g). In the current instance, the specification does not illuminate the circumstances/configuration of the system that would obtain the claimed function. Rather the specification merely lists reductions in thicknesses that might be achieved in paragraph [0036], without any description of specific examples of the system that illustrate under what conditions those reductions were reached.
From MPEP §2173.05(g) “Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting. In the current instance, (1) there is no clear cut indication of the scope of the subject matter covered by the claim because the specification does not even provide guidance as to under what circumstances given percentage reductions in thickness are achieved (2) the language only states a result obtained and (3) an ordinary skilled artisan would not know from the claim terms what structures are encompassed by the claim.
It is not apparent to the examiner how to overcome the above indefiniteness issue without introducing new matter other than to cancel claim 6. Appropriate correction is required.
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.
Claims 1-3, 5, 7 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakoh et al. US 2020/0283458 A1 (hereafter Sakoh).
Regarding claim 1, Sakoh teaches “A system, comprising:
an optically transparent substrate including a lens (paragraph [0085]: “Preferred articles which may be treated with the surface treating agent include… eyeglass lenses, camera lenses.” or paragraph [0218]: “Gorilla glass”); and
a lipophilic coating (e.g. paragraph [0001]: “lipophilic coating”) disposed on the optically transparent substrate (e.g. paragraph [0001]: “an article which is surface-treated with the surface treating agent, i.e., has a cured film of the surface treating agent on its surface” or paragraph [0218]: “the treating agent was dip coated onto Gorilla glass (Corning Inc.) and heat cured at 120° C. for 30 minutes to form a cured film of 3 nm thick.”), the lipophilic coating configured to disperse a contaminant (paragraph [0030]: The lipophilic group-containing (hydrolyzable) organosilane compound of the invention has advantages that due to a lipophilic end group in the molecule, when sebum is attached to a substrate, the cured film allows the sebum to be wetted and spread over the substrate.” emphasis added. The contaminant is sebum like a fingerprint and spreading is dispersing the contaminant. Furthermore, since the coating is lipophilic the reaction to an oil-based contaminant is the same as the instant invention.) disposed on the lipophilic coating such that the contaminant disposed on the lipophilic coating is optically transparent (paragraphs [00222]-[0223]: “Evaluation of Fingerprint Visibility Sebum was deposited on the glass sample with the cured film” and paragraph [0230]: “[0230] In Examples 1 to 6, fingerprints were not at all visible.”).”
Regarding claim 2, Sakoh teaches “The system of claim 1, comprising:
the optically transparent substrate comprising a first side of the optically transparent substrate (paragraph [0085]: “eyeglass lenses, camera lenses.” Eyeglass lenses and camera lenses have two major optical surfaces including a first side.); and
the lipophilic coating disposed on the first side of the optically transparent substrate (paragraph [0080]: “The surface treating agent may be applied to a substrate by any well-known techniques such as brush coating, dipping, spraying and evaporation.” Dipping applies the surface treating agent to all exterior surfaces of the lens including the first side.).”
Regarding claim 3, Sakoh teaches “The system of claim 1, comprising:
the optically transparent substrate comprising a first side of the optically transparent substrate and a second side of the optically transparent substrate disposed opposite the first side of the optically transparent substrate (paragraph [0085]: “eyeglass lenses, camera lenses.” Eyeglass lenses and camera lenses have two major optical surfaces opposite to one another that in eyeglasses are called the anterior and posterior sides and in camera lenses are called the object side and the image side. These two opposite sides of the lens can be called the first side and second side.); and
the lipophilic coating disposed on the first side of the optically transparent substrate and the second side of the optically transparent substrate (paragraph [0080]: “The surface treating agent may be applied to a substrate by any well-known techniques such as brush coating, dipping, spraying and evaporation.” Dipping applies the surface treating agent to all exterior surfaces of the lens including the first side and second sides. Although it is conceivable that one of the two sides would be covered with a film to prevent the adhesion of the surface treating agent to one side of the lens, and ordinary skilled artisan when considering the dip coating method of paragraph [0080] would at once envisage the choice where both optical surfaces are coated. To put it another way, dip coating either applies the coating to one side or to both sides of the lens. Since this is a genus with only two species, and ordinary skilled artisan would at once envisage using the dip coating method to apply the coating to both sides.1).”
Regarding claim 5, Sakoh teaches “The system of claim 1, comprising:
the lipophilic coating having a thickness in a range of 5 nm to 150 µm (paragraph [0080]: “The cured coating typically has a thickness of 0.1 to 100 nm, desirably 1 to 20 nm although the thickness is selected depending on the type of substrate.” and paragraphs [0218]: “Examples 1 to 6 … the treating agent was dip coated onto Gorilla glass… a cured film of 3 nm thick.”)
Regarding claim 7, Sakoh teaches “The system of claim 1, comprising:
the optically transparent substrate disposed in an ophthalmic frame (paragraph [0085]: “Preferred articles which may be treated with the surface treating agent include… eyeglass lenses” Eyeglass lenses are optically transparent substrates that are disposed in some form of an ophthalmic frame to position the eyeglasses on the wearer’s face.).”
Regarding claim 10, Sakoh teaches “The system of claim 1, comprising:
the lipophilic coating comprises a PFAS-free coating (Fluoro compounds are only discussed in Sakoh in three places: (1) the discussion of prior art in paragraphs [0004]-[0005], (2) comparative example 3 in paragraphs [0219] and [0230], and (3) with fluorine being only one choice amongst many for the halogen atom in formula 1. Thus the surface treating agent of Sakoh neither contains perfluorinated or polyfluorinated substances.).”
Claims 1-5 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 美和 高光 JP 6989881 B1 (hereafter JP 881).
Regarding claim 1, JP 881 teaches “A system (see elements thereof below), comprising:
an optically transparent substrate including a lens (page 8 paragraph 5 “tip lens of the endoscope” or page 5 paragraph 7 “soda lime glass” where a soda lime glass substrate is considered to be a lens even if it is a lens with zero refractive power.); and
a lipophilic coating (page 8 paragraph 5 “the manufactured polymer films A1 to A4” which is lipophilic see e.g. page 5 paragraphs 3 and 4 “lipophilic polymer… lipophilic additive”) disposed on the optically transparent substrate (page 8 paragraph 5 “the manufactured polymer films A1 to A4 are attached to the tip lens of the endoscope”),
the lipophilic coating configured to disperse (the paragraph spanning pages 8 and 9: “In any of the molecules A1 to A4, when attached to the lens of the endoscope, water droplets do not adhere to the tip lens of the endoscope, and the droplets slide down to maintain a good field of view. It could be confirmed.” Sliding off the lens tip is dispersing the water) a contaminant (page 8 paragraph 5: “water is sprinkled on the observation sample (tomato model) to cause droplets on the tip lens.”) disposed on the lipophilic coating (page 8 paragraph 5: “droplets on the tip lens.”) such that the contaminant disposed on the lipophilic coating is optically transparent (the paragraph spanning pages 8 and 9: “In any of the molecules A1 to A4, when attached to the lens of the endoscope, water droplets do not adhere to the tip lens of the endoscope, and the droplets slide down to maintain a good field of view. It could be confirmed.” The contaminant is transparent in that it is no longer present.).”
Regarding claim 2, JP 881 teaches “The system of claim 1, comprising:
the optically transparent substrate comprising a first side of the optically transparent substrate (the exterior surface of the endoscope tip lens on which the film is placed); and
the lipophilic coating disposed on the first side of the optically transparent substrate (page 8 paragraph 5: “the manufactured polymer films A1 to A4 are attached to the tip lens of the endoscope”).”
Regarding claim 3, JP 881 teaches “The system of claim 1, comprising:
the optically transparent substrate comprising a first side of the optically transparent substrate and a second side of the optically transparent substrate disposed opposite the first side of the optically transparent substrate (the two major surfaces of the soda lime glass support see page 5 paragraph 7); and
the lipophilic coating disposed on the first side of the optically transparent substrate and the second side of the optically transparent substrate (page 5 paragraph 8: “The "dip coding" in the step A of the [method 1] and the step a of the [method 2] means that the support is immersed in a small amount of the polymer solution and covered with the polymer solution.” emphasis added. Note that “covered with” means that all sides of the support have the coating disposed thereon as the exterior-most layer.).”
Regarding claim 4, JP 881 teaches “The system of claim 1, comprising:
the lipophilic coating comprises at least one of flaxseed oil, lemon oil, walnut oil, olive oil, sesame oil, grapefruit oil, or a combination thereof (paragraph spanning pages 3 and 4: “When the target of the synovial fluid is an aqueous liquid, …fatty acid, … can be mentioned…. Examples include …fatty acid compounds (sesame oil, rapeseed oil, almond oil, cottonseed oil, salad oil, etc.).” Emphasis added.).”
Regarding claim 5, JP 881 teaches “The system of claim 1, comprising:
the lipophilic coating having a thickness in a range of 5 nm to 150 µm (page 8 paragraph 7: “It was confirmed that all of the polymer films were very thin with a film thickness of 50 nm or more and 10 μm or less” See also the minimum, maximum and average film thicknesses in Table 1 which are all between 0.141 and 12.7 μm. The characters “膜厚” above (μm) in Table 1 translates to film thickness and the characters to the right thereof translate to minimum, maximum and average.).”
Regarding claim 9, JP 881 teaches “The system of claim 1, comprising:
the lipophilic coating comprises an oil (paragraph spanning pages 3 and 4: “When the target of the synovial fluid is an aqueous liquid, silicone oil, fatty acid, … can be mentioned…. More specifically, the silicone oils include … Examples include …fatty acid compounds (sesame oil, rapeseed oil, almond oil, cottonseed oil, salad oil, etc.).” Emphasis added.).”
Regarding claim 10, JP 881 teaches “The system of claim 1, comprising:
the lipophilic coating comprises a PFAS-free coating (page 3 paragraph 7 to page 4 second paragraph: “In order to exhibit antifouling properties against all kinds of liquids, it is preferable to use a so-called water-repellent / oil repellent liquid such as a fluorine-based oil or a silicone oil as the lubricant liquid… When the target of the synovial fluid is an aqueous liquid, silicone oil, fatty acid, higher alcohol, silane coupler, and other organic hydrophobic liquid substances can be mentioned. When used for medical purposes, it is particularly preferable to use an oil having high biosafety such as for food additives.” emphasis added. “Thus although JP 881 does discuss the use of perfluoro compounds, these are presented in the alternative to silicone oils and fatty acids, and JP 881 teaches that when the field of use is medical devices, like endoscopes, oils having high biosafety are particularly preferable. This would exclude the PFAS based options, as evident from the paragraph spanning pages 3 and 4.).”
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sakoh et al. US 2020/0283458 A1 (hereafter Sakoh).
Regarding claim 6, Sakoh teaches “The system of claim 1, comprising:
the lipophilic coating is configured to reduce a thickness of the contaminant (paragraph [0030]: “the cured film allows the sebum to be wetted and spread over the substrate” emphasis added. Spreading the sebum over a larger area will necessarily reduce the thickness of the sebum.).” However, Sakoh fails to explicitly teach “by 30% to 95%.”
If a typical fingerprint size is taken to be about 0.5 inches by 1.0 inches, and a typical eyeglass lens size is taken to be about 1.0 inch by 2.0 inches, then the ratio of the area of the initial fingerprint to the area over which it can be spread is (0.5/2.0)=0.25. Assuming the volume sebum remains constant, the final thickness must be one quarter of the initial thickness. This is a reduction in thickness by 75%.
Sakoh discloses the claimed invention except for the exact parameters of the reduction in thickness of the contaminant. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the reduction in thickness to be between 30% and 95%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because assuming typical sizes for fingerprints and eyeglass lenses, a reduction in thickness of 75% would be expected.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sakoh et al. US 2020/0283458 A1 (hereafter Sakoh) as applied to claim 1 above, and further in view of Maurice et al. US 2019/0308434 A1 (hereafter Maurice).
Regarding claim 8, Sakoh teaches “The system of claim 1, comprising:
an anti-reflective coating (paragraph [0085]: “Preferred articles which may be treated with the surface treating agent include… antireflective film.”) … and
the lipophilic coating disposed on the anti-reflective coating (paragraph [0085]: “Therefore, it is particularly useful as a lipophilic layer on …. antireflective films.).”
However, Sakoh fails to explicitly teach “an anti-reflective coating disposed on the optically transparent substrate.” because Sakoh does not explicitly discuss the substrates that such antireflective films are applied to.
Maurice teaches (claim 1) “A system (Fig. 2 paragraph [0056]), comprising:
an optically transparent substrate including a lens (optical eyeglass 1); and
a [anti-smudge] coating (anti-smudge coating 5) disposed on the optically transparent substrate (see Fig. 2 and paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”).”
(claim 8) The system of claim 1, comprising:
an anti-reflective coating disposed on the optically transparent substrate (paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”); and
the [anti-smudge] coating disposed on the anti-reflective coating (paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the two uses described in Sakoh of the surface treating agent for an eyeglass lens and for an antireflection film as taught by Maurice, such that the surface treating agent is disposed exterior to the anti-reflective coating and the antireflective coating is disposed on the eyeglass lens as taught by Maurice. One would have been motivated to combine the antireflective film with an eyeglass lens as taught by Maurice in order to reduce unwanted reflections from the surface of the eyeglasses which is the purpose of antireflective films.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over 美和 高光 JP 6989881 B1 (hereafter JP 881) as applied to claim 1 above, and further in view of Maurice et al. US 2019/0308434 A1 (hereafter Maurice).
Regarding claim 7, JP 881 teaches “The system of claim 1” however JP 881 does not explicitly teach “the optically transparent substrate disposed in an ophthalmic frame.”
Note however, that JP 881 is not limited to use on an endoscope. See page 4 paragraph 11: “Such a polymer film of the present invention can be used as an "antifouling film" … it is possible to use an antifouling film for LCD screens such as tablets and a “lens protection” for cameras.”
Maurice teaches “(claim 1) “A system (Fig. 2 paragraph [0056]), comprising:
an optically transparent substrate including a lens (optical eyeglass 1); and
a [anti-smudge] coating (anti-smudge coating 5) disposed on the optically transparent substrate (see Fig. 2 and paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”).”
(claim 7) “the optically transparent substrate disposed in an ophthalmic frame (paragraph [0003]: “the eyeglass is fitted in a frame”).”
Maurice further teaches (paragraph [0012]): “In the context of the invention, a surface coating is a surface-modifying coating the main action of which is to modify the surface properties of the lens when it is finally used mounted in an ophthalmic frame. The expression “surface coating” thus comprises hydrophobic, oleophobic or hydrophilic coatings having the property of being anti-smudge, anti-rain or antifog coatings.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make use of the anti-fouling film of JP 881 on an ophthalmic lens in an eyeglass frame as taught by Maurice because Maurice teaches that eyeglasses are amongst the use conditions that commonly employs an surface coating (Maurice paragraph [0012]).”
Regarding claim 8, the JP 881 teaches “The system of claim 1,” however, JP 881 fails to teach “an anti-reflective coating disposed on the optically transparent substrate.”
Note however, that JP 881 is not limited to use on an endoscope. See page 4 paragraph 11: “Such a polymer film of the present invention can be used as an "antifouling film" … it is possible to use an antifouling film for LCD screens such as tablets and a “lens protection” for cameras.”
Maurice teaches “(claim 1) “A system (Fig. 2 paragraph [0056]), comprising:
an optically transparent substrate including a lens (optical eyeglass 1); and
a [anti-smudge] coating (anti-smudge coating 5) disposed on the optically transparent substrate (see Fig. 2 and paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”).”
(claim 8) The system of claim 1, comprising:
an anti-reflective coating disposed on the optically transparent substrate (paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”); and
the [anti-smudge] coating disposed on the anti-reflective coating (paragraph [0056]: “If the optical eyeglass 1 were to include an interference stack, of the antireflection or interference-mirrored type, located under the anti-smudge coating 5”).”
Maurice further teaches (paragraph [0012]): “In the context of the invention, a surface coating is a surface-modifying coating the main action of which is to modify the surface properties of the lens when it is finally used mounted in an ophthalmic frame. The expression “surface coating” thus comprises hydrophobic, oleophobic or hydrophilic coatings having the property of being anti-smudge, anti-rain or antifog coatings.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make use of the anti-fouling film of JP 881 on an eyeglass lens as taught by Maurice because Maurice teaches that eyeglasses are amongst the use conditions that commonly employs an surface coating (Maurice paragraph [0012]).”
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the coating of JP 881 for an eyeglass lens with an antireflection film as taught by Maurice, such that the lipophilic coating is disposed exterior to the anti-reflective coating and the antireflective coating is disposed on the eyeglass lens as taught by Maurice. One would have been motivated to combine the antireflective film with an eyeglass lens as taught by Maurice in order to reduce unwanted reflections from the surface of the eyeglasses which is the purpose of antireflective films.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Marutani et al. JP 2010-59216 A “Active Energy Ray-Curable Coating Varnish Composition Excellent In Antifouling Property And Printed Product Of The Same” page 5 paragraphs 6-7 “The fatty acid ester is preferably a simple substance or a mixture of fatty acid esters derived from vegetable oils and fats,… Fatty acids used for the production of the fatty acid ester are palm oil, palm oil, palm kernel oil, khair oil, red rice seed oil, rice seed oil, basket seed oil, guava seed oil, grapefruit seed oil, Fatty acids derived from plants such as white rice seed oil, white rice seed oil, peanut seed oil, potato seed oil, and habiwa seed oil. These fatty acids are generally composed of a plurality of fatty acids. Therefore, they can be separated and purified by a known method and used alone or in combination.” pertinent to at least claim 4 and related disclosures in the present specification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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/CARA E RAKOWSKI/ Primary Examiner, Art Unit 2872
1 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).