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 with traverse of Group I, Claims 1-9 in the reply filed on 6/25/26 is acknowledged. The traversal is on the ground(s) that there is no evidence of record to show that the claimed products could be made as the Office has alleged; and the Office has failed to show that the alleged process of reactive sputtering is materially different from the claimed process; and that a search of all the claims would not impose a serious burden on the Office.
This is not found persuasive because reactive sputtering (e.g., sputtering) in a reactive gas atmosphere is a different and distinct process from post-oxidation sputtering (e.g., depositing a pure metal then oxidation of the metal after deposition. Furthermore, exists when one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/25/26.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Colbert et al (US 2,852,415 A) in view of Korshunov et al (Effect of Preliminary Severe Plastic Deformation on Structure and Durability of Nickel Subjected to Oxidation, 2015).
Colbert teaches a far-infrared transmitting member (e.g., windshield) comprising: a substrate (e.g., support body of glass glass) that transmits a far infrared ray; and a functional film formed on the substrate and including one or more NiOx layers (e.g., nickel oxide) containing NiOx as a main component; wherein the NiOx layer is formed on an outermost side; wherein the far-infrared transmitting member is mounted on a vehicle; wherein the far-infrared transmitting member is disposed in a window member of the vehicle (col 1, lines 15-26; claims 8, 10, 15; col 7 ,lines 55-61; fig 1).
Colbert fails to suggest wherein an average transmittance of light having a wavelength of 8 µm to 12 µm is 50% or more, and a maximum value Hmax of indentation hardness in a range of an indentation depth of 40 nm or more and 110 nm or less from a surface of the functional film measured by a nanoindentation method is 10 GPa or more; wherein a ratio Hmax/E of the maximum value Hmax of the indentation hardness and a Young's modulus E is 0.045 or more and 0.120 or less; wherein an arithmetic average roughness Ra is 6 nm or less; an extinction coefficient with respect to light having a wavelength of 10 µm is 0.4 or less.
Korshunov teaches oxidizing nickel at high temperatures (e.g., 800 °C) to increase its wear resistance (page 517, conclusions).
Therefore, per Korshunov, it would have been obvious to one of ordinary skill in the art at the time of invention to subject the nickel of Cobert to an oxidation process at higher temperatures (e.g., 800 °C) to increase its wear resistance.
Regarding the limitations “wherein an average transmittance of light having a wavelength of 8 µm to 12 µm is 50% or more, and a maximum value Hmax of indentation hardness in a range of an indentation depth of 40 nm or more and 110 nm or less from a surface of the functional film measured by a nanoindentation method is 10 GPa or more; wherein a ratio Hmax/E of the maximum value Hmax of the indentation hardness and a Young's modulus E is 0.045 or more and 0.120 or less; wherein an arithmetic average roughness Ra is 6 nm or less; an extinction coefficient with respect to light having a wavelength of 10 µm is 0.4 or less;” Colbert teaches the nickel or nickel oxide may be applied by sputtering (col 1, lines 26-43); and Korshunov suggests an oxidation process to an already existing layer of nickel (i.e., post-oxidation sputtering); so Colbert as modified by Korshunov suggests both the structure, composition, and method of making the far-infrared transmitting member of the instant claims. Therefore, the far-infrared transmitting member of Colbert as modified by Korshunov is deemed to possess this structure and these properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regard the limitations “wherein the far-infrared transmitting member is disposed in an exterior member for a pillar of the vehicle” and “wherein the far-infrared transmitting member is disposed in a light blocking region of an exterior member for the vehicle;” Colbert teaches the NiOx layer is that of a conductive film, so it would have been obvious to one of ordinary skill in the art at the time of invention adjust the location of the far-infrared transmitting member based upon where a conductive film is needed.
Conclusion
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783
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