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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 07/15/2026, with respect to the rejection(s) of claim(s) 1 and 15 under 35 U.S.C 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fuji under 35 U.S.C 103.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites the limitation, “…wherein the second main surface has a F/Si value of more than 0 and 0.08 or less, and the F/Si value is obtained by dividing a F intensity value by a Si intensity value…”. However, the Specification of the Instant Application does not clarify what the variables of the F intensity or Si intensity value are. The Specification makes repeated mention of a “Method of Measuring F/Si Value” [See Par 78-79 and 189], and the details of the instrument used to measure these values [Par 79], but nowhere in the Specification does it clarify what the claimed values are, other than “F intensity” and “Si intensity”. One of ordinary skill in the art, is left guessing as to what “F intensity” and “Si intensity” mean and how to differentiate overall reflective intensity from these values. Are these the reflective intensities due to the presence of Fluorine and Silicon? Are these reflective intensities measured at certain wavelengths? Further, in Fig. 3 of the Instant Application discloses, the antifouling layer 31a (which is being partially measured to produce the F/Si value) [Instant Application Par 73] does not further show the process of determining these F and Si values or the presence of said values in relation to the invention. Thus, the written description would not convey to one of ordinary skill in the art that the inventor had possession of the invention.
The rejection of Claim 7 under 35 U.S.C. 112 (a), because Applicant has not amended the Specification to remedy the deficiency.
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.
The rejection of 7 under 35. U.S.C 112 (b) is withdrawn in the light of the amendments.
Claim Objections
Claim 1 objected to because of the following informalities: “…to be boned to a display.” Examiner interprets “boned” to be read as “bonded”. 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.
Claim(s) 1-2, 6, and 10-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US 20180136367 A1).
Re Claim 1, as best understood, Fujii discloses, on Fig. 1-2 and 4, and Table 1-1, a transparent substrate with a metal oxide layer, comprising: a transparent substrate (See Fig. 1: transparent substrate 11) [Par 18] having a first main surface (top of substrate 11 in a vertical direction) and a second main surface (bottom of substrate 11 in a vertical direction); a first metal oxide layer on or above the first main surface (low reflection film 12 can be made of Titanium oxide among other metal oxides) [Par 18 and Par 83-84]; and a second metal oxide layer (niobia layer) [Par 134] on or above the second main surface (niobia layer is applied on side surface of substrate 11, thus contacting second main surface, see Fig. 3-4) [Par 131], wherein a metal oxide layer is provided on or above a side surface connecting the first main surface and the second main surface (low reflection film 13 can be titanium oxide among other metal oxides and is own the side surface connecting the top of substrate 11 and the bottom of substrate 11) [Par 83-84], the first metal oxide layer is an antireflection layer (film 12 is a low reflection film) [Par 18], the first metal oxide layer has a thickness of 200 nm to 400 nm (see Table 1-1 Example 1; sum of the thickness of low reflection layers is 243 nm), and the second metal oxide layer has a thickness more than 0% first metal oxide layer (Niobia layer is 13 nm, and thus 5.3% of the first metal oxide layer ) [Par 134],
the second main surface (bottom of substrate 11 in a vertical direction) is a surface to be bonded to a display (transparent substrate 11 can be bonded as a cover glass on a display) [Par 64], a printed layer ( shade 14 is printed)[Par 67] is provided on a periphery portion of the second main surface (Fig. 4: shade 14 is on a periphery of the second surface) [Par 101], and the second metal oxide layer (NBO side layer) is present over a region from a periphery portion of the second main surface (NBO is on the side surface of the substrate 11) of an inner side of the inner periphery of the printed layer (NBO side surface is inherently on the periphery of the bottom of substrate 11 and the inner side periphery of shade 14, See Fig. 3-4).
But Fuji does not disclose, the second metal oxide layer has a less than 5.0% of the thickness of the first metal oxide layer.
However, Fuji does teach a side niobia (NBO) layer that is 13 nm, and thus 5.3% of the first metal oxide layer (243nm) [Par 134],
Further, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Fuji such that, the second metal oxide layer has a less than 5.0% of the thickness of the first metal oxide layer, in order to reduce the overall size of the layer.
In regards to the limitation, "…the second main surface is a surface to be bonded to a display”. Applicant is informed that, “[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.” Thus the teaching of Fuji inherently satisfied the structural requirements of the limitation.
Re Claim 2, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1, and Fujii further discloses on Fig. 1, wherein the second main surface (bottom of substrate 11 ) has a region where the second metal oxide layer (shade 14) is present and a region where the second metal oxide layer is not present (Central region of second main surface is absent shade 14 but shade 14 is present at periphery) [Par 101-105].
Re Claim 6, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1, and Fujii further discloses on Fig. 4, wherein a first antifouling layer (anti-fouling layer 24) is provided on or above the first metal oxide layer (first low reflection film 22), and a second antifouling layer (anti fouling layer 24 is also on second low reflection layer 23) is provided on or above the second metal oxide layer (See Fig. 4: side components of anti-fouling layer 24 are on second lower reflection layer 23, which sits on shade 14, wherein shade 14 acts as the second metal oxide layer) [Par 87 and 98].
Re Claim 10, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1, and Fujii further discloses on Fig. 1 and Table 1-1, wherein the first metal oxide layer (low reflection film 12) [Par 82-83] has a laminated structure comprising 1 or more and 6 or less of high refractive index layers and 1 or more and 6 or less of low refractive index layers (alternative stacks of high index and low index layers wherein the total layers are between 2-8,in other words 1-4 layers each) [Par 82], each of the high refractive index layers and each of the low refractive index layers being laminated alternately (“…alternately stacking the high-refractive-index layer and the low-refractive-index layer…”) [Par 82], and a main component of each of the high refractive index layers is at least one selected from silicon nitride, titanium oxide, niobium oxide, tantalum oxide, and zirconium oxide (main component of high index layers can be one of titanium oxide, niobium oxide, zirconium oxide, tantalum oxide, or silicon nitride) [Par 84].
Re Claim 11, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 6, and Fujii further discloses on Fig. 4, wherein the first antifouling layer (antifouling layer 24 on topmost surface of substrate 21) [Par 87] and the second antifouling layer (antifouling layer 24 on the sides of substrate 21) comprise a compound comprising fluorine (“…a fluorine-containing organosilicon compound”) [Par 88].
Re Claim 12, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1, and Fujii further discloses on Fig. 1, wherein an antiglare layer (antiglare treatment) [Par 79] is provided between the first main surface (top of substrate 11) and the first metal oxide layer (“…the aforementioned antiglare treatment is performed for the transparent substrate 11, it is preferable that the first low-reflection film 12 is formed on the principal surface which is subjected to the antiglare treatment.”, antiglare treatment is between layers 11 and 12) [Par 79].
Re Claim 13, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1, and Fujii further discloses on Fig. 1, wherein the transparent substrate is a chemically strengthened glass (substrate 11 is tempered glass) [Par 48].
Re Claim 14, Fujii discloses, a display device comprising: the transparent substrate with a metal oxide layer according to claim 1; Fujii further discloses on Fig. 2, a display, wherein a second main surface side is bonded to the display (“ A display device of this invention is characterized in that it includes: a display; and the substrate with the low-reflection property according to this invention provided on a front face of the display as a front substrate.”) [Par 8].
Re Claim 15, Fujii discloses on Fig. 1 and Table 1-1, a method for producing a transparent substrate with a metal oxide layer, comprising: preparing a transparent substrate (See Fig. 1: transparent substrate 11) [Par 18] having a first main surface (top of substrate 11 in a vertical direction) and a second main surface (bottom of substrate 11 in a vertical direction); bringing a part of the second main surface into contact with a jig ( PEEK resin bonded to glass substrate) [Par 132] and fixing the transparent substrate to the jig (bonded to substrate with double sided tape) [Par 132]; and forming a first metal oxide layer on or above the first main surface (Fig. 1: low reflection film 12 can be made of Titanium oxide among other metal oxides and is own the top of substrate 11) [Par 18 and Par 83-84] and a second metal oxide layer on or above the second main surface (shade 14 is made of a ink containing ceramics such chromium oxide or iron oxide) [Par 101-105] by using a metal oxide layer raw material provided to face the first main surface (Fig. 1: shade 14 is on the bottom of substrate 11 facing film 12), wherein the formation is carried out such that a metal oxide layer is provided on or above a side surface connecting the first main surface and the second main surface (low reflection film 13 can be titanium oxide among other metal oxides, and is one the side surface of substrate 11 connecting the top and bottom of substrate 11) [Par 83-84], the first metal oxide layer is an antireflection layer (film 12 is a low reflection film) [Par 18], the first metal oxide layer has a thickness of 200 nm to 400 nm (see Table 1-1 Example 1; sum of the thickness of low reflection layers is 243 nm), and the second metal oxide layer has a thickness more than 0% and less than 5.0% of the thickness of the first metal oxide layer (ink deposition of shade 14 is 5 nm, and thus 2% of the thickness of the first metal oxide layer at 243 nm) [Par 130],
the second main surface (bottom of substrate 11 in a vertical direction) is a surface to be boned to a display (transparent substrate 11 can be bonded as a cover glass on a display, and in the case of Fig. 1 and 3-4, the only available surface of substrate 11 is the secondary surface) [Par 64], a printed layer ( shade 14 is also printed)[Par 67] is provided on a periphery portion of the second main surface (Fig. 4: shade 14 is on a periphery of the second surface) [Par 101], and the second metal oxide layer (shade 14 includes metal oxides) [Par 101-105] is present over a region from a periphery portion of the second main surface of an inner side of the inner periphery of the printed layer (Fig. 3-4: shade 14 extends from a periphery of the second surface inwards towards the center of the second surface) [Par 101],
the second main surface (bottom of substrate 11 in a vertical direction) is a surface to be boned to a display (transparent substrate 11 can be bonded as a cover glass on a display) [Par 64], a printed layer ( shade 14 is printed)[Par 67] is provided on a periphery portion of the second main surface (Fig. 4: shade 14 is on a periphery of the second surface) [Par 101], and the second metal oxide layer (NBO side layer) is present over a region from a periphery portion of the second main surface (NBO is on the side surface of the substrate 11) of an inner side of the inner periphery of the printed layer (NBO side surface is inherently on the periphery of the bottom of substrate 11 and the inner side periphery of shade 14, See Fig. 3-4).
But Fuji does not disclose, the second metal oxide layer has a less than 5.0% of the thickness of the first metal oxide layer.
However, Fuji does teach a side niobia (NBO) layer that is 13 nm, and thus 5.3% of the first metal oxide layer (243nm) [Par 134],
Further, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Fuji such that, the second metal oxide layer has a less than 5.0% of the thickness of the first metal oxide layer, in order to reduce the overall size of the layer.
In regards to the limitation, "…the second main surface is a surface to be bonded to a display”. Applicant is informed that, “[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.” Thus the teaching of Fuji inherently satisfied the structural requirements of the limitation.
Re Claim 16, Fujii discloses, the method for producing a transparent substrate with a metal oxide layer according to claim 15, and Fujii further discloses, wherein an area of the second main surface in contact with the jig is 50% or less of the second main surface (Peek resin serving as jig is 50 mm square, and the precut rectangular substrate surface is 1,000 mm squared, so 50/1,000= 5%) [Par 132].
Re Claim 17, Fujii discloses, the method for producing a transparent substrate with a metal oxide layer according to claim 15, and Fujii further discloses, wherein the jig has a thickness of 1 mm or more (PEEK resin has a thickness of 2 mm) [Par 132].
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(s) 3, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii.
Re claim 3, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 1.
But Fujii does not explicitly disclose, wherein an area of the second metal oxide layer is 50% or more of an area of the second main surface.
However, Fujii teaches the explicit use of the second metal oxide layer (Shade 14) on the periphery of the second main surface (outer peripheral part) [Par 101], and further teaches the explicit control of the area covered b the second metal oxide layer (“…it may also be a printed shade of characters, patterns, or the like…”, characters and patterns would inherently include controlling the area covered by the shade amongst other geometric quantities) [Par 101]. Thus, Fujii explicitly teaches that controlling the area covered by the second metal oxide layer is known in the art [Par 101], and that one of ordinary skill would have been able to control the area of the second metal oxide layer such that, the second metal oxide layer is 50% or more of an area of the second main surface [Par 101]. Fujii also teaches that one of ordinary skill would have been motivated to do so in order to enhance visibility and beautify appearance [Par 101].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Fujii, in order to enhance visibility and beautify appearance, as taught by Fujii [Par 101].
Re Claim 7, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 6.
But Fujii does not disclose, wherein the second main surface has a F/Si value of more than 0 and 0.08 or less, and the F/Si value is obtained by dividing a F intensity value by a Si intensity value,
said F intensity value is a fluorine intensity values as is measured with an X-ray photoelectron spectrometer under the following conditions: a source is Mg Kα; an output is 12 kV and 25 mA; a detection angle is 90°; a sample tilt is 0°; and a measurement area is about 6
m
m
2
, and
said Si intensity value is a silicon intensity values as is measured with an X-ray photoelectron spectrometer under the following conditions: a source is Mg Kα; an output is 12 kV and 25 mA; a detection angle is 90°; a sample tilt is 0°; and a measurement area is about 6
m
m
2
, and
Optimizing intensity is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Fujii teaches on Table 1-2, wherein the luminous reflectance of the black printed shade (luminous reflectance is equal to luminous intensity per unit area, and thus closely related value to the intensity of the entire second surface, and any ratio of intensity of components of the second surface on which the shade sits, and is measured using a spectrophotometric colorimeter) [Par 120] in example 1 is as low as 1%, and thus generally teaches intensity as a variable which achieves a recognized result, small changes light, reflection, and color in order to beautify appearance and improve display-ability [Par 10] . Further, the composition of the antifouling film that sits on the dark shade and effects said intensity ratio, is exactly the same as that of the instant application, KY 185 [See Par 90 and Table 1-1].
Therefore, the prior art teaches adjusting intesnity and identifies said sizes/ratios as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize, the F/Si value, since it is not inventive to discover the optimum or workable ranges by routine experimentation.
Re Claim 8, Fujii discloses, the transparent substrate with a metal oxide layer according to claim 2.
But Fujii does not disclose, wherein a color difference ΔE between the region where the second metal oxide layer is present and the region where the second metal oxide layer is not present is 1.5 or less.
Optimizing color difference is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Fujii teaches teaches the chromaticity (variables L*, a*, and b* that are used to calculated color change) of the first metal oxide layer (chromaticity of film 12) [Par 25], and the second metal oxide layer (chromaticity of black printed shade 14) [Par 108] as a variable which achieves a recognized result; controlling the difference in colors between surfaces [Par 42].
Therefore, the prior art teaches adjusting color difference between surfaces and identifies said sizes/ratios as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize, color difference ΔE between the region where the second metal oxide layer is present and the region where the second metal oxide layer is not present, since it is not inventive to discover the optimum or workable ranges by routine experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Weng (US 20180217296 A1) teaches a glass substrate with metal oxide layers.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RAY ALEXANDER DEAN/ Examiner, Art Unit 2872
/BALRAM T PARBADIA/ Primary Examiner, Art Unit 2872
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