Prosecution Insights
Last updated: October 25, 2026
Application No. 18/816,038

STRUCTURAL MEMBER

Final Rejection §102§103
Filed
Aug 27, 2024
Priority
Aug 28, 2023 — JP 2023-137699
Examiner
KHATRI, PRASHANT J
Art Unit
1783
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Toto Ltd.
OA Round
2 (Final)
62%
Grant Probability
Moderate
3-4
OA Rounds
1y 3m
Est. Remaining
90%
With Interview

Examiner Intelligence

Grants 62% of resolved cases
62%
Career Allowance Rate
546 granted / 887 resolved
-3.4% vs TC avg
Strong +28% interview lift
Without
With
+28.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
35 currently pending
Career history
929
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
48.6%
+8.6% vs TC avg
§102
18.5%
-21.5% vs TC avg
§112
23.2%
-16.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 887 resolved cases

Office Action

§102 §103
DETAILED ACTION In response to Amendments/Arguments filed 8/7/2026. Claims 1-6 are pending. Claim 1 was amended. Claim Rejections - 35 USC § 102 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohara et al. (EP 1391537). Ohara discloses an abrasive coating disposed on a substrate. Concerning claims 1 and 2, Ohara discloses the abrasive coating disposed on a substrate, wherein the coating comprises a matrix having a hardness less than particles disposed within the film and a plurality of particles protrude the coating (para. 0067-0069 and FIG. 2d). Given that the particles have a higher hardness than the matrix, which is the same as that claimed, the coated substrate can protect a base material from plasma. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mayers et al. (US 20090041984). Mayers discloses a structured smudge-resistant coating. Concerning claims 1 and 2, Mayers discloses the coating comprises an organic matrix having a hardness less than the particles disposed within the matrix, wherein a plurality of particles protrude from the coating (FIG. 2; para. 0011). Given that the particles have a higher hardness than the matrix, which is the same as that claimed, the coated substrate can protect a base material from plasma. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara et al. (EP 1391537). Ohara discloses the above, including the protrusion size to the particle size is 30% to 60%, wherein as shown in Figure 2d, the ratio is such as to provide optimal polishing ability (para. 0072). As such, for sufficient polishing ability, it would have been obvious to one of ordinary skill in the art to have a uniform amount the particles protruding from the coating. Regarding claim 4, as shown in Figure 2d, there is a plurality of particles that are roughly flat; given that Ohara discloses the ratio of the protrusion size of the particles to the particle size affects the resulting polishing ability, one of ordinary skill in the art would have a flat surface for each particle. Allowable Subject Matter Claims 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art is silent to the specific combination of materials as claimed in claims 5 and 6. As such, these claims are found to be allowable over the closest prior art. Response to Arguments Applicant's arguments filed 8/7/2026 regarding the art rejections have been fully considered but they are not persuasive. Applicant asserts that the prior art does not teach using the laminate under plasma and therefore the references are not applicable. While it is agreed that Ohara and Mayers are silent to exposing the laminates to plasma, the limitation “the protective film is a film formed to protect the base material from plasma” is a functional limitation. Given that Ohara and Mayers both disclose the particles have a higher hardness than the matrix, which is the same as that claimed, the coated substrate can protect a base material from plasma. Examiner notes that Applicant has not provided a showing and the assertions are not commensurate in scope to the disclosure. As such, the claims are properly finally rejected. Conclusion THIS ACTION IS MADE FINAL. 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. PRASHANT J. KHATRI Primary Examiner Art Unit 1783 /PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
Read full office action

Prosecution Timeline

Aug 27, 2024
Application Filed
May 13, 2026
Non-Final Rejection mailed — §102, §103
Aug 07, 2026
Response Filed
Oct 02, 2026
Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12763402
FLAME-RETARDANT, THERMAL-INSULATING, AND FIREPROOF MATERIAL FOR BATTERIES
2y 8m to grant Granted Oct 13, 2026
Patent 12763230
Transparent Conductive Oxide Having an Embedded Film
2y 9m to grant Granted Oct 13, 2026
Patent 12765253
POLYESTER FILM AND USE THEREOF
2y 5m to grant Granted Oct 13, 2026
Patent 12746742
CO-EXTRUDED SHEET
2y 9m to grant Granted Sep 29, 2026
Patent 12734792
FULL POLYETHYLENE BLOWN FILM THROUGH DOUBLE BUBBLE PROCESS
2y 9m to grant Granted Sep 15, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
62%
Grant Probability
90%
With Interview (+28.0%)
3y 5m (~1y 3m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 887 resolved cases by this examiner. Grant probability derived from career allowance rate.

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