DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Group I (claims 1-8 and 10) in the reply filed on August 19, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Claim Interpretation
Claim 3 recites that the alcohol is phenoxyethanol, which is an alternative embodiment that is not required by the parent claim. Specifically, claim 3 depends upon claim 2, which requires that the antifouling coating layer contains “at least one selected from alcohols and esters”. Thus, for claim 3 to positively further limit the parent claim require a phenoxyethanol, it should be amended to require the alcohol alternative of claim 2.
Claim Objections
Claim 1 is objected to because of the following informalities. In claim 1, line 1, the comma, i.e., “,”, should be deleted after the term “element” for consistency purposes (see claims 2-8 and 10).
Claim Rejections - 35 USC § 112
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.
Claims 1-8 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, lines 7-8, the phrase “wherein bonding to carbon of the end of the surface of the antifouling coating layer is C-OSi(OH)3” is unclear and indefinite. Specifically, it is not clear if the “carbon” is part of the acrylic polymer of the antifouling layer, part of some other constituent in the antifouling coating layer, or part of a separate bonding layer. Additionally, the terms “the end” and “the surface” of the antifouling coating layer lack clear antecedent basis. Claims 2-8 and 10 are rejected as indefinite due to their dependence upon claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-181569 in view of Okazaki et al. (US Pub 2011/0008630). An English language translation of JP ‘569 was provided in the IDS submitted on April 10, 2024 and is relied upon in the below rejection.
Regarding claims 1-4, JP ‘569 discloses an optical element [0008] comprising a substrate [0017], an antireflection coating arranged on the substrate [0017], and an antifouling coating layer arranged on the antireflection coating [0017]. The antifouling coating can contain an acrylic polymer ([0013], [0014]) and 1 to 5 wt% of an alcohol or ester, such as phenoxyethanol ([0020], [0021], [0029]). JP ‘569 does not explicitly disclose the limitation of “wherein bonding to carbon of the end of the surface of the antifouling coating layer is C-OSi(OH)3”, but, as noted above, JP ‘569 uses the same materials in the same amounts as the presently claimed invention. US ‘630 discloses an antifouling coating layer which is useful for optical articles/elements [0194], wherein the coating is surface treated via a process ([0162], [0276]-[0279], Table 16), which is commensurate in scope with the presently disclosed treatment process disclosed in the present specification ([0045]-[0047]). US ‘630 discloses that the surface treatment process provides enhanced properties, such as adhesion properties. It would have been obvious to one of ordinary skill in the art to have prepared the optical element of JP ‘569, wherein the antifouling coating layer is surface treated, as taught in US ‘630, in order to enhance the properties of the layer, such as adhesion properties, which would result bonding to carbon of the end of the surface of the antifouling coating layer containing a C-OSi(OH)3 structure.
Regarding claims 5 and 6, JP ‘569 discloses the claimed layered antireflection coating stacks comprising alternating layers of high refraction index layers comprising ditantalum pentoxide and low refraction index layers comprising silicon oxide ([0017], [0018]).
Regarding claim 7, JP ‘569 discloses that the substrate can be a lanthanum-based glass [0027].
Regarding claim 8, JP ‘569 discloses that the antifouling coating layer can have a thickness of 1 to 10 nm [0028].
Regarding claim 10, JP ‘569 discloses that the optical element can be used in medical optical devices [0008].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
