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 of Group I, claims 1-8, in the reply filed on 13 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 13 July 2026.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer et al. (WO 2015107224 A1)(Kramer) as evidenced by Jerman et al., “Refractive index of thin films of SiO2, ZrO2, and HfO2 as a function of the films’ mass density,” Applied Optics, Vol. 44, No. 15, May 2005.
The rejection below cites the translation which accompanies this Office action.
Kramer discloses a ceramic substrate having a functional coating thereon. See the abstract. The article may be used as a watch crystal which is an external part. See paragraph [0125]. The functional coating is transparent, colorless and provides anti-scratch properties (i.e., is a protective coating). See paragraphs [0022], [0024] and [0026].
The coating is described as colorless (paragraph [0026]) and therefore the external part will have a color substantially identical to the intrinsic color of the substrate.
The inorganic coating has a thickness of less than 2 µm (paragraph [0067]) which is sufficient specific to anticipate the ranges recited in instant claims 1 and 4. See MPEP 2131.03. Moreover, Kramer exemplifies a coating system having a thickness of 433.41 nm. See paragraph [0149]. An example falling within a claimed range anticipates the range. Id.
As to the limitation, “said protective coating being configured so as to have a refractive index substantially equal to that of the substrate in the visible range of the light spectrum,” paragraph [0038] of the specification as filed defines “substantially equal” to be plus or minus 5% in the context of the coating film. Kramer discloses the ratio of the index of refraction of the functional layer to the refractive index of the substrate is 1.5:1 to 1:1.5. See the abstract. This teaching suggests to one of ordinary skill in the art a range of permissible indices of refraction that overlaps the permissible indices of refraction of claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art would have expected the Delta E property recited in instant claims 2 and 3 to be present in the article of Kramer because Delta E is a measure of the amount of change to the color of the substrate, and a colorless coating does not change the color of the substrate.
As to claim 5, Kramer exemplifies an embodiment in which the coating is made of alternating layers of HfO2 and SiO2 on a substrate of spinel. See paragraphs [0142]-[0151]. Spinel has a refractive index of 1.7. See paragraph [0120]. HfO2 has a refractive index of 1.85-1.90 which is greater than the refractive index of spinel and SiO2 has a refractive index of 1.43-1.49 which is less than the refractive index of spinel. See Table 1 of Jerman et al., “Refractive index of thin films of SiO2, ZrO2, and HfO2 as a function of the films’ mass density,” Applied Optics, Vol. 44, No. 15, May 2005.
As to claim 6, Kramer suggests the coating may comprise oxides or nitride including metals of aluminum and titanium (among others). See paragraph [0055].
As to claim 7, Kramer discloses that the coating may be SiON in paragraph [0097].
As to claim 8, Kramer disclose the substrate may be ZrO2 or Al2O3 in paragraph [0012].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/David Sample/Primary Examiner, Art Unit 1784
Prosecution Insights