DETAILED ACTION
This is in response to communication received on 7/15/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 4/30/25, 8/8/25, 12/9/25, and 4/16/26.
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.
Claims 1-2, 5-8, 10, 15-16, 19-20 and 30 are 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.
As for claim 1, it has been amended to include the limitation of “wherein providing the polymeric substrate comprises treating a surface of the polymeric substrate with an oxygen plasma, wherein the oxygen plasma is a plasma consisting essentially of oxygen”.
Examiner notes there is no recitation of the phrase ‘consisting essentially’ in the specification. The paragraphs discussing the oxygen plasma (paragraphs 53-57) use the term ‘containing’, which is synonymous with comprising. There is no discussion on the limits of the oxygen containing plasma, i.e. other components such as inert gases or other reactants, only broad descriptions of the plasma ‘containing’ oxygen.
For this reason, there is a lack of support for the language of wherein the oxygen plasma is a plasma consisting essentially of oxygen.
Further, Examiner also notes that absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (MPEP 2111.03). As pointed out above, there is no discussion of what the basic and novel characteristics of the oxygen containing plasma is the term ‘consisting essentially of oxygen’ is interpreting as ‘comprising oxygen’.
As for claims 2, 5-8, 10, 15-16, and 19-20, as they depend from claim 1 and thereby contain all the limitations thereof, these claims are similarly rejected.
As for claim 30, it has been submitted with the language of “wherein the oxygen plasma is a plasma consisting of oxygen”.
Examiner notes there is the recitation of the term ‘consisting’ within the specification, specifically paragraphs 78, 83, 86, and 121. However, Examiner notes that this phrase only appears with tin the context of limiting the material for the substrates, the form of the silicon dioxide and titanium being nanoparticles of a particular size and a definition of the term. There is no use of consisting when referencing the plasma.
The paragraphs discussing the oxygen plasma (paragraphs 53-57) use the term ‘containing’, which is synonymous with comprising. There is no discussion on the limits of the oxygen containing plasma, i.e. other components such as inert gases or other reactants, only broad descriptions of the plasma ‘containing’ oxygen.
For purposes of compact prosecution, the term ‘essentially consisting of’ and ‘consisting of’ will be interpreted as ‘comprising’ as it is in line with the specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Paxson et al. US PGPub 2013/0209780 hereinafter POXSON in view of Fournand US PGPub 2015/0309216 hereinafter FOURNAND and Kelley et al. US PGPub 2002/0158111 hereinafter KELLEY on claims 1-2, 4, and 19-20 are maintained. The rejection is updated below to meet the added claim limitations. The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Paxson et al. US PGPub 2013/0209780 hereinafter POXSON in view of Fournand US PGPub 2015/0309216 hereinafter FOURNAND and Kelley et al. US PGPub 2002/0158111 hereinafter KELLEY on 4 is withdrawn because the claim has been cancelled.
As for claim 1, POXSON teaches "The invention is directed to a composite polymer/nanoporous film system and methods of fabrication of tunable nanoporous coatings on flexible polymer substrates" (abstract, lines 1-3), "under conditions effective to form one or more layers of said nanoporous coating on said polymer substrate" (claim 21, lines 7-9), "wherein said nanoporous coating has tunable structure and properties on said polymer substrate" (claim 25), i.e. A method of preparing a two-layer ... coating having self-cleaning and anti-fogging properties, as there is no limitation on what kind of self-cleaning and anti-fogging properties there are (minimal, maximal, etc.).
POXSON is silent on the coating being super-hydrophilic ... whereby contact angle between a water droplet and a surface of the super-hydrophilic coating is smaller than 10°.
FOURNAND teaches "The anti-fog topcoat usually consists in a hydrophilic coating, which provides a low static contact angle with water, preferably of less than 50°, more preferably of less than 25°. These coatings are generally made of highly hydrophilic species such as sultanates or polyurethanes" (paragraph 92).
KELLEY teaches "This invention relates generally to a metal oxide coating and method of forming the coating by which the coating surface has hydrophilic and oleophilic properties, and more particularly to such a coating and method of forming the coating which provides a nanotextured surface defined by a plurality of macromolecularsized openings arranged in a pattern on the surface of the coating" (paragraph 10) and "Still other features of the metal oxide coating embodying the present invention include the coating having a hydrophilic surface on which water droplets deposited thereon have a contact angle of less than 10°" (paragraph 9, lines 1- 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have POXSON's coating be super-hydrophilic ... whereby contact angle between a water droplet and a surface of the super-hydrophilic coating is smaller than 10° because FOURNAND teaches that hydrophilic coatings are antifog as desired by POXSON and KELLEY teaches that coatings with contact angles of less than 10° are highly hydrophilic.
POXSON teaches "depositing said nanoporous coating composition on said flexible or moldable polymer substrate, such that one or more layers of said nanoporous coating form on said polymer substrate" (paragraph 87, lines 7-10), "the nanoporous coating comprises at least one compound selected from a group consisting of ... In one embodiment, the nanoporous coating comprises silicon dioxide, titanium dioxide, or a combination thereof" (paragraph 14, lines 10-16), and further provides examples of alternating layers of SiO2 and TiO2 (paragraph 100; see figure (a)) i.e. the teachings encompassing an embodiment wherein providing a polymeric substrate ... depositing silicon dioxide directly on the ... surface of the polymeric substrate ... to form a silicon dioxide layer as a first layer; and depositing titanium dioxide directly on the silicon dioxide layer ... to form a titanium dioxide layer as a second layer as an outermost layer of the coating.
POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9), i.e. wherein the layers are applied by pulsed laser deposition.
FOURNAND teaches "This method comprises a first step of an activating the surface of an outermost organic coating of said article with vacuum air plasma" (paragraph 18, lines 1-3) and "The plasma generator power depends on the volume of the vacuum chamber. It may typically be comprised between 5 and 20 W IL. The air flow may consist in about 78 vol.% of nitrogen, about 21 vol. % of oxygen and about 1 vol. % of one or more other gas(es). It can optionally be mixed with a flow of argon, nitrogen or oxygen" (paragraph 18, lines 6-12), i.e. wherein the air plasma includes an oxygen plasma such that providing a polymeric substrate having an oxygen plasma treated surface wherein providing the polymeric substrate comprises treating a surface of the polymeric substrate with an oxygen plasma, wherein the oxygen plasma is a plasma consisting essentially of oxygen.
FOURNAND further teaches that the outermost organic coating includes polymeric substrates (paragraph 31).
FOURNAND further teaches "It has now been demonstrated that performing this plasma treatment with a flow of air and under vacuum improves the adhesion of the topcoat" (paragraph 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include providing a polymeric substrate having an oxygen plasma-treated surface in the process of POXSON because FOURNAND teaches that such a treatment improves the adhesion of later coatings.
As for claim 2, POXSON is silent on an oxygen plasma-treated surface.
FOURNAND teaches "This method comprises a first step of a activating the surface of an outermost organic coating of said article with vacuum air plasma, which may for instance be applied ... for 20 seconds to 10 minutes" (paragraph 18, lines 1-6) and further "The air flow may consist in about 78 vol.% of nitrogen, about 21 vol. % of oxygen and about 1 vol.% of one or more other gas(es)" (paragraph 18, lines 6-10), i.e. wherein FOURNAND's plasma treatment is a mixture of a nitrogen plasma and an oxygen plasma such that wherein providing a polymeric substrate having an oxygen plasma-treated surface comprises treating a surface of the polymeric substrate with an oxygen plasma for a time period that overlaps with the range from about 8 minutes to about 12 minutes and/or at a pressure in the range from about 10-3 mbar to about 10-1 mbar. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365- 66 (Fed. Cir. 1997). See MPEP 2144.05.
FOURNAND further teaches "It has now been demonstrated that performing this plasma treatment with a flow of air and under vacuum improves the adhesion of the topcoat" (paragraph 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include providing a polymeric substrate having an oxygen plasma-treated surface and wherein providing a polymeric substrate having an oxygen plasma-treated surface comprises treating a surface of the polymeric substrate with an oxygen containing plasma for a time period that overlaps with the range from about 8 minutes to about 12 minutes in the process of POXSON because FOURNAND teaches that such a treatment improves the adhesion of later coatings.
As for claim 19, POXSON teaches "In another embodiment, the nanoporous coating composition is applied to the substrate such that it forms a coating of 10 nm to 2000 nm on the surface of said substrate. In a related embodiment, the thickness of the coating is from 10 nm to 10000 nm" (paragraph 21, lines 12-16), i.e. a range that overlaps with wherein combined thickness of the silicon dioxide layer and the titanium dioxide layer is less than 100 nm. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d1934 (Fed. Cir.1990); In re Geisler, 116F.3d 1465, 1469-71, 43USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
As for claim 20, POXSON teaches "the polymer substrate comprises at least one compound selected from the group consisting of polycarbonate" (paragraph 15, lines 1- 3), i.e. wherein the material for the polymeric substrate is selected from the group consisting of polycarbonate.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Paxson et al. US PGPub 2013/0209780 hereinafter POXSON, Fournand US PGPub 2015/0309216 hereinafter FOURNAND and Kelley et al. US PGPub 2002/0158111 hereinafter KELLEY as applied to claim 1 above, and further in view of White et al. US PG Pub 2006/0233969 hereinafter WHITE on claim 5-8, 10 and 15-16 are maintained. The rejection is repeated below to meet the added claim limitations.
As for claim 5, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE further teaches "The target assembly 14 comprises a mechanism that is configured and operative to mount a target 30 within the deposition chamber 12, to position such target 30 with respect to the laser subsystem 22 and the substrate assembly 26, and to rotate the target 30 during ablation thereof. The target 30 is a metal oxide selected in accordance with the type of metal oxide film to be synthesized as is known to those skilled in the art" (paragraph 52, lines 1-8) and "The MOPG subsystem 22 includes a source 22S for generating the ablation/evaporation beam utilized in the HBD methods of the present invention (e.g., a laser beam for pulsed laser deposition or an electron beam for electron beam evaporation) and a mechanism 22M for directing and focusing the generated ablation/evaporation beam onto the target 30 mounted in the target assembly 14 in the deposition chamber 12 (e.g., a focusing lens for the laser beam or a focusing magneVelectromagnet for the electron beam)" (paragraph 55, lines 6-15), i.e. wherein the pulsed laser deposition includes providing a target of deposited material, and directing a pulsed laser beam at the target in the presence of oxygen to generate ... plasma which interacts with the background oxygen plasma to form the ... oxide layer on the ... substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein depositing silicon dioxide directly on the oxygen plasma treated surface of the polymeric substrate comprises providing a silicon target, and directing a pulsed laser beam at the silicon target in the presence of oxygen to generate silicon plasma which interacts with the background oxygen plasma to form the silicon dioxide layer on the polymeric substrate for the pulsed laser deposition of SiO2 in the process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 6, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBO) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLO) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE further teaches "The target assembly 14 comprises a mechanism that is configured and operative to mount a target 30 within the deposition chamber 12, to position such target 30 with respect to the laser subsystem 22 and the substrate assembly 26, and to rotate the target 30 during ablation thereof. The target 30 is a metal oxide selected in accordance with the type of metal oxide film to be synthesized as is known to those skilled in the art" (paragraph 52, lines 1-8) and "The MOPG subsystem 22 includes a source 22S for generating the ablation/evaporation beam utilized in the HBD methods of the present invention (e.g., a laser beam for pulsed laser deposition or an electron beam for electron beam evaporation) and a mechanism 22M for directing and focusing the generated ablation/evaporation beam onto the target 30 mounted in the target assembly 14 in the deposition chamber 12 (e.g., a focusing lens for the laser beam or a focusing magneVelectromagnet for the electron beam)" (paragraph 55, lines 6-15), i.e. wherein depositing metal oxide directly on the oxygen plasma-treated surface of the polymeric substrate comprises providing a metal oxide target, and directing a pulsed laser beam at the metal oxide target to form the desired metal oxide layer on the polymeric substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein depositing silicon dioxide directly on the oxygen plasma treated surface of the polymeric substrate comprises providing a silicon dioxide target, and directing a pulsed laser beam at the silicon dioxide target to form the silicon dioxide layer on the polymeric substrate for the pulsed laser deposition of SiO2 in the process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 7, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE further teaches "The target assembly 14 comprises a mechanism that is configured and operative to mount a target 30 within the deposition chamber 12, to position such target 30 with respect to the laser subsystem 22 and the substrate assembly 26, and to rotate the target 30 during ablation thereof. The target 30 is a metal oxide selected in accordance with the type of metal oxide film to be synthesized as is known to those skilled in the art" (paragraph 52, lines 1-8) and "The MOPG subsystem 22 includes a source 22S for generating the ablation/evaporation beam utilized in the HBD methods of the present invention (e.g., a laser beam for pulsed laser deposition or an electron beam for electron beam evaporation) and a mechanism 22M for directing and focusing the generated ablation/evaporation beam onto the target 30 mounted in the target assembly 14 in the deposition chamber 12 (e.g., a focusing lens for the laser beam or a focusing magneVelectromagnet for the electron beam)" (paragraph 55, lines 6-15), i.e. wherein depositing metal oxide directly on the oxygen plasma-treated surface of the polymeric substrate comprises providing a metal oxide target, and directing a pulsed laser beam at the metal oxide target to form the desired metal oxide layer on the polymeric substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein depositing titanium dioxide directly on the silicon dioxide layer comprises providing a titanium dioxide target, and directing a pulsed laser beam at the titanium dioxide target to form the titanium dioxide layer for the pulsed laser deposition of TiO2 in the process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 8, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE further teaches "The target assembly 14 comprises a mechanism that is configured and operative to mount a target 30 within the deposition chamber 12, to position such target 30 with respect to the laser subsystem 22 and the substrate assembly 26, and to rotate the target 30 during ablation thereof. The target 30 is a metal oxide selected in accordance with the type of metal oxide film to be synthesized as is known to those skilled in the art" (paragraph 52, lines 1-8) and "The MOPG subsystem 22 includes a source 22S for generating the ablation/evaporation beam utilized in the HBO methods of the present invention (e.g., a laser beam for pulsed laser deposition or an electron beam for electron beam evaporation) and a mechanism 22M for directing and focusing the generated ablation/evaporation beam onto the target 30 mounted in the target assembly 14 in the deposition chamber 12 (e.g., a focusing lens for the laser beam or a focusing magneVelectromagnet for the electron beam)" (paragraph 55, lines 6-15), i.e. wherein the pulsed laser deposition includes providing a target of deposited material, and directing a pulsed laser beam at the target in the presence of oxygen to generate ... plasma which interacts with the background oxygen plasma to form the ... oxide layer on the ... substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include depositing titanium dioxide directly on the silicon dioxide layer comprises providing a titanium target, and directing a pulsed laser beam at the titanium target in the presence of oxygen to generate titanium plasma which interacts with the background oxygen plasma to form the titanium dioxide layer for the pulsed laser deposition of TiO2 in the process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 10, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE teaches "The laser beam source 22S is operated at a predetermined pulse rate within the range of about 1 Hz to about 5 kHz" (paragraph 65, lines 16-18), i.e. a range that overlaps with wherein the pulsed laser deposition is carried using a pulsed laser beam having ... a frequency in the range from about 8 Hz to about 12 Hz. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir.1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the pulsed laser deposition is carried using a pulsed laser beam having ... a frequency in the range from about 8 Hz to about 12 Hz in the pulsed laser deposition process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 15, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE teaches "The predetermined treatment period is within the range of about 1 minute to about 10 hours, and preferably approximately 30 minutes" (paragraph 67, lines 9-11 ), i.e. a range that overlaps with wherein depositing the silicon dioxide is carried out for a time period in the range from about 20 minutes to about 70 minutes. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F .3d 1465, 1469-71, 43 US PQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein depositing the silicon dioxide is carried out for a time period in the range from about 20 minutes to about 70 minutes in the pulsed laser deposition process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
As for claim 16, POXSON further teaches "the nanoporous coating is deposited on the substrate by a technique selected from the group consisting of ... pulsed laser deposition" (paragraph 17, lines 5-9). However, POXSON is silent on the specific parameters and method steps for such a deposition process.
WHITE teaches "A hybrid beam deposition (HBD) system and methods according to the present invention utilizes a unique combination of pulsed laser deposition (PLD) technique and equipment with equipment and techniques that provide a radical oxygen rt-plasma stream to effectively increase the flux density of available reactive oxygen at a deposition substrate for the effective synthesis of metal oxide thin films" (abstract, lines 1-7).
WHITE teaches "The predetermined treatment period is within the range of about 1 minute to about 10 hours, and preferably approximately 30 minutes" (paragraph 67, lines 9-11 ), i.e. a range that overlaps with wherein depositing the titanium oxide is carried out for a time period in the range from about 5 minutes to about 30 minutes. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F .3d 1465, 1469-71, 43 US PQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein depositing the titanium oxide is carried out for a time period in the range from about 5 minutes to about 30 minutes in the pulsed laser deposition process of POXSON because WHITE teaches that such a process has improved deposition of metal oxide thin films.
Response to Arguments
Applicant's arguments filed 7/15/26 have been fully considered but they are not persuasive.
Applicant’s principal arguments all rely on the interpretation of claim 1 wherein the oxygen plasma consists essentially of oxygen or consists of oxygen. However, as noted in the rejection above, there is no support in the specification for that language or that embodiment. The specification discusses the plasma as containing oxygen, not as being limited to oxygen and exclusive of all other elements (paragraphs 53-56). The word ‘consisting’ is not even used in reference with the oxygen. Here, Applicant is arguing for an invention that is not supported by the specification, and thereby their arguments cannot be considered persuasive.
Further, Examiner also notes that absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (MPEP 2111.03). As there is no discussion about what the basic and novel characteristics of the concentration of the oxygen plasma is, the claim language is interpreted as ‘comprising’ and cannot be interpreted as exclusive of nitrogen as Applicant is arguing.
Conclusion
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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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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