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 .
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.
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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (US 2019/0369312, previously cited).
Claim 1: Imai teaches an optical filter (i.e. an optical element) having a glass substrate of phosphate glass or fluorophosphate glass with a bonding layer having a single layer structure (i.e. having a monolayer structure) (paragraph 0014). The bonding layer includes a Si atom and one or more selected from a Ti atom, a Zr atom, and an Al atom (paragraph 0016), wherein a ratio of a total number of Ti atom, Zr atom, and Al atom to a total number of Si atom, Ti atom, Zr atom, and Al atom is greater than 0 atomic% and 33.3 atomic% or less (paragraph 0017). This range overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. Imai teaches the layer that includes Si, Ti, Zr, and Al as being a bonding layer instead of as a weather resistant protective film; however the adjectives (i.e. suggesting function or properties) do not distinguish over the prior art because the bonding layer has substantially identical composition as outlined above and substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
While note reciting a singular example of the instantly claimed optical element, it would have been obvious to one of ordinary skill in the art before the effective filing date due to overlapping ranges which have been held to be prima facie obvious and one would have had a reasonable expectation of success.
Claim 2: Imai teaches that the bonding layer (i.e. the weather resistant protective film as outlined above) includes hydrolyzed and dehydrated condensates (paragraph 0111), resulting compounds such as represented in Formulas 1 and 2 as examples (paragraphs 0201 and 0203), which show a bonded network (understood to be 3-dimensional compound based on basic physical chemistry principles of steric hindrance) by chemical bonds via an oxygen atom between same (i.e. homologous) or different (i.e. heterologous) atoms.
Claim 3: Imai teaches substantially identical (i.e. overlapping) proportions of a total number of Ti atom, Zr atom, and Al atom to a total number of Si atom, Ti atom, Zr atom, and Al atom is greater than 0 atomic% and 33.3 atomic% or less (paragraph 0017) and formation using substantially identical reaction type of substantially identical compounds as outlined below regarding instant claim 5, and therefore the proportion of elements (i.e. of Si, of T/Zr/Al, and of oxygen) in the resulting layer taught by Imai overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 4: Imai teaches that the bonding layer (i.e. the weather resistant protective film as outlined above) includes hydrolyzed and dehydrated condensates of one or more coupling agents (paragraph 0111), which is a reaction product between a silicon compound represented by Formula V that is a silane alkoxide (i.e. and alkoxysilane or alkoxysilane derivative) and one or more selected from metal alkoxides represented by formulas Vi, VII, and VIII, which are a titanium alkoxide, zirconium alkoxide, and aluminum alkoxide, respectively (paragraph 0135-0145).
Claim 5: Imai teaches that the bonding layer (i.e. the weather resistant protective film as outlined above) includes hydrolyzed and dehydrated condensates of one or more coupling agents (paragraph 0111), which is a reaction product between a silicon compound represented by Formula V (paragraph 0135) and one or more selected from metal alkoxides represented by formulas Vi, VII, and VIII, which are a titanium alkoxide, zirconium alkoxide, and aluminum alkoxide, respectively (paragraph 0135-0145). The silicon compound of Formula V is generated by partially hydrolyzing a silane alkoxide represented by Si(OR7)(OR8)(OR9)(ORa) (paragraph 0141), wherein these R groups are straight- (i.e. linear) or branched-chain hydrocarbon groups having 1 to 10 carbon atoms, equal or different from each other (paragraph 0142). The titanium alkoxide is represented by Formula VI of Ti(OR13)(OR14)(OR15)(OR16), the zirconium alkoxide is represented by Formula VII of Zr(OR17)(OR18)(OR19)(OR20), and the aluminum alkoxide is represented by Formula VIII of Al(OR21)(OR22)(OR23), and each of these R groups are straight- (i.e. linear) or branched-chain hydrocarbon groups having 1 to 10 carbon atoms (paragraph 0145) and may be equal to or different from each other (paragraph 0147).
Claim 6: The proportions of the alkoxysilane and the metal alkoxides correspond to the proportion of metals (i.e. of Ti, Zr, and Al) to the total of Si, Ti, Zr, and Al recited in instant claim 1 (i.e. the base claim) and is obvious in view of the alkoxysilane and metal alkoxides taught by Imai each having one of the recited elements per alkoxide molecule as represented in Formulas V, VI, VII, and VIII (paragraphs 0141 and 0145).
Claim 7: Imai teaches that phosphate-based glass such as phosphate glass or fluorophosphate glass is generally used as a component of an absorbing glass substrate for absorbing ultraviolet light or near infrared light, and therefore the phosphate glass or fluorophosphate glass of the disclosed optical filter is considered absorb ultraviolet light and/or near infrared light.
Claims 8-9: Imai teaches that the optical filter comprises an absorbing glass substrate (i.e. the phosphate glass or fluorophosphate glass outlined above), a resin layer, and a bonding layer (i.e. the weather resistant protective layer as outlined above) interposed between the substrate and resin layer (paragraph 0211), and an antireflection film may be additionally provided on a lower surface side of the resin layer (paragraph 0252).
Claims 10-11: Imai teaches an optical filter (i.e. an optical element) (paragraph 0014) and an imaging apparatus including a solid-state image device, an image lens, and the optical filter (paragraph 0058).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,546,924. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 2 of the ‘924 patent both recite an optical filter (i.e. an optical element) comprising a glass substrate of a phosphate-based glass or a fluorophosphate-based glass and a layer with a single layer structure provided on the glass substrate (i.e. on at least one main surface of the substrate would be an obvious design choice) and that has a Si atom(s) and one or more of Zr and Al atoms, wherein a ratio (i.e. proportion) of a total number of the Zr atom(s) and the Al atom(s) to a total number of the Si atom(s), the Zr atom(s), and the Al atom(s) ranges from greater than 0 to 33.3 (i.e. in atomic%). These ranges overlap and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 1 differs from the ‘924 patent inasmuch as reciting the layer is a weather resistant protective film, whereas claim 2 of the ‘924 patent recites the layer as a bonding layer. However, the adjectives do not substantially change the structure of the recited layer, and as outlined above, the layer of instant claim 1 is substantially identical to the layer of the ‘924 patent (i.e. at least for the composition overlapping ranges) and therefore is considered also to be a weather resistant protective film because substantially identical materials have substantially identical functions and properties. See MPEP § 2112.01.
Instant claim 1 also differs from the ‘924 patent inasmuch as reciting the layer includes Si and one or more selected from Ti atoms, Zr atoms, and Al atoms (i.e. instead of only Zr and Al as recited in the ‘924 patent). However, since Ti is not required (i.e. one may select one or more from Ti, Zr, and Al, and therefore Ti can be not selected), this limitation does not patentably distinguish the instant claims from the ‘924 patent.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 19/441,452 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following overlapping subject matter:
Instant claim 1 and claim 2 of the ‘452 application both recite an optical filter (i.e. an optical element) comprising a glass substrate of a phosphate-based glass or a fluorophosphate-based glass having a layer with a single layer structure (i.e. having a monolayer structure) provided on the glass substrate (i.e. on at least one main surface of the substrate would be an obvious design choice) and that has Si atom(s) and one or more of Ti, Zr, and Al, wherein a ratio (i.e. proportion) of a total atomic number of Ti, Zr, and/or Al to a total number of Si, Ti, Zr, and Al is greater than 0 atomic% to 33.3%. This range overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 1 differs from the ‘452 application inasmuch as reciting the layer is a weather resistant protective film, whereas claim 2 of the ‘452 application recites the layer as a bonding layer. However, the adjectives do not substantially change the structure of the recited layer, and as outlined above, the layer of instant claim 1 is substantially identical to the layer of the ‘452 application (i.e. at least for the composition overlapping ranges) and therefore is considered also to be a weather resistant protective film because substantially identical materials have substantially identical functions and properties. See MPEP § 2112.01.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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.
/KIM S. HORGER/Examiner, Art Unit 1784
Prosecution Insights