DETAILED ACTION
This is in response to communication received on 3/5/26.
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 and 12/9/25.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/5/26 has been entered.
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.
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.
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. 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 4, 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 under a pressure of 10 to 140 Pa, for instance between 10 and 50 Pa, more preferably between 20 and 40 Pa" (paragraph 18, lines 1-5), i.e. wherein treating a surface of the polymeric substrate with an oxygen plasma is carried out at a pressure in a range that overlaps with 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 wherein treating a surface of the polymeric substrate with an oxygen-containing plasma is carried out at a pressure in a range that overlaps with range from about 10-3 mbar to about 10-1 mbar 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 updated 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 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 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 (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 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 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 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, POX SON 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 3/5/26 have been fully considered but they are not persuasive.
Applicant’s arguments are summarized and addressed below:
(a) Applicant alleges that POXSON teaches away from using an oxygen plasma as it's plasma treatment seeks to enhance high adhesion by decreasing oxygen concentration on the polymer surface.
Examiner points out that this entire argument is based on the assumption that FOURNAND's oxygen plasma would increase oxygen concentration which has not been proven either with quotations from the art or from other evidence.
In fact, Examiner could find nothing in FOURNAND that would support that assertion that its plasma would necessarily increase oxygen groups at the surface and this argument actually runs contrary to Applicant's own specification where it makes clear that "Advantageously action of the oxygen plasma on the polymeric substrate MAY result in generation of oxygen bonding on the surface" (paragraph 53; emphasis), meaning that the generation of oxygen bonding only MIGHT happen and is not a guarantee.
Further, Examiner provides the following reference Blackburn et al US 2003/0165686 hereinafter BLACKBURN which discusses the mechanics of oxygen plasmas, establishing that oxygen plasmas are capable of both producing oxygen groups on a surface and physically roughening it, and the extent of either of these effects are dependent on the reaction conditions (i.e. whether there is roughening and no chemical alteration, or all chemical alternation and no roughening, or both; see paragraph 81). This contradicts Applicant assumption that oxygen plasma necessarily increase the concentration of oxygen on the surface, as it establishes that it can only be adjusted to have a roughening effect instead.
Examiner also draws attention to Bogart et al. US Patent Number 5,639,671 hereinafter BOGART wherein an oxygen plasma is used to etch a surface to improve adhesion (column 15, lines 6-9), providing further proof that an oxygen plasma does not necessitate the increase of oxygen concentration on a surface.
Further, Examiner notes that FOURNAND's oxygen plasma is provided with nitrogen as well. Applicant has not established that a mix of nitrogen plasma and oxygen plasma would necessarily result in oxygen being applied.
Still further, Examiner notes that the actual language of the section quoted by Applicant reads as follows: "Examples of suitable adhesion promoters are compounds having at least one reactive group capable of reacting with the groups at the surface of the nanoparticles, and further have at least one reactive group capable of reacting or physically interacting, e.g. H bonding with the substrate. In one embodiment, nitrogen and hydrogen plasma treatments of the polymer substrate lead to high adhesion enhancement, which is attributed to the decrease of the oxygen concentration at the polymer surface" (paragraph 48, lines 5-13), i.e. wherein the decrease of oxygen concentration is a description of how nitrogen and hydrogen plasmas lead to high adhesion, but there is a broader example wherein any reactive group capable of reacting with both the nanoparticles and substrate surface can be used. Disclosed examples and preferred embodiments do not constitute a teachings away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Further, reducing concentration of oxygen does not necessarily mean that no oxygen can be added, only that the groups added to the surface are majority another atom. For example, applying a carboxyl group to a surface made of oxygen would decrease the concentration of oxygen at the surface by adding carbon and hydrogen, but would also introduce an oxygen at the same time.
Applicant's argument here cannot be considered persuasive as it is unsupported by the record or the art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
(b) Applicant argues that FOURNAND teaches away from an oxygen plasma treated surface, as it provides a comparison of an air plasma (oxygen+air plasma) and a purely oxygen plasma in its examples.
Examiner notes this is both true and irrelevant to the claims. The claims use the transitional phrase 'comprising'. As a reminder, The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended.")...Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.).
In this case, there is nothing in the claim requiring that the oxygen plasma be applied by itself. As FOURNAND teaches forming a plasma from a mixture of nitrogen and oxygen gas, it forms both a nitrogen plasma and oxygen plasma as a mixture. This falls within the scope of the claim. It does not teach away from the claim, but only from an embodiment within the specification which is not relevant to the rejection. It would be improper to read an oxygen plasma as “a plasma consisting of oxygen” as the language established in the claim is “comprising”. If the applicant wishes the plasma to be limited to one ‘consisting’ of a particular element, it will need to be amended to reflect that.
Applicant's argument cannot be considered persuasive because they are not germane with the scope of the claim, relying on an interpretation that is exclusive of unrecited elements, when the claim language specifically is inclusive.
For these reasons above, the claims remain rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Blackburn et al US 2003/0165686 hereinafter BLACKBURN (paragraph 81 specifically) and Bogart et al. US Patent Number 5,639,671 hereinafter BOGART (column 15, lines 6-9 specifically).
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
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