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 without traverse of Group III (claims 15-24), Species III-A-1 (a and Species III-B-1, in the reply filed on 16 February 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-6, 9-10, 12, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claim 24 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 16 February 2026.
Claim Interpretation
Claim 15 recites a DLC coating and an AF coating. These abbreviations are not defined in the claim, but are considered to refer respectively to a diamond-like coating (i.e. the meaning of “DLC” is indicated in paragraph 0004 of the instant specification) and an anti-fingerprint coating (i.e. the meaning of “AF” is indicated in paragraph 0003 of the instant specification).
Claim 15 recites a DLC coating according to claim 1, and claim 1 is noted as being defined by how it is made rather than reciting strictly structural features. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP § 2113. In this respect, the instant specification also does not provide further detail regarding the structure of the DLC coating except for a DLC coating thickness of 5 nm to 100 nm (paragraphs 0011 and 0044). Therefore, the coating shall be regarded to be a DLC coating (i.e. having a hybrid of allotropes of carbon as stated in paragraph 0004 of the instant specification) that further contains silicon presumably from the silane monomer (i.e. paragraph 0004 of the instant specification discloses silicon-doped DLC coating or doping with Si etc.).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15-23 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuhashi et al. (US 2019/0300726, previously cited) in view of Mahoney et al. (US 6,086,962).
Claim 15: Mitsuhashi teaches an antifouling article having a base material, a diamond-like carbon (“DLC”) layer (i.e. a DLC coating) and an antifouling coating layer of a surface-treating agent on the DLC layer (paragraph 0012) (i.e. a composite coating), wherein the antifouling article may be an optical member such as a touch panel sheet, etc. (paragraph 0306), and requires resistance to human sweat (i.e. the antifouling coating is also an anti-fingerprint coating). The base material may be glass etc. (paragraph 0029), The DLC coating may contain atoms other than carbon, such as hydrogen, silicon, etc. (paragraph 0034), may have a thickness of 1 nm to 100 µm, and more preferably 1 nm to 100 nm (paragraph 0035), and may be formed by a plasma CVD method etc. (paragraph 0036). The DLC coating has a binding ability to the surface-treating agent and enhances hardness etc. of the article (paragraph 0037). However, Mitsuhashi does not teach the instantly claimed DLC coating precursors (or provide a specific motivation for a silicon-containing DLC; see claim interpretation above).
In a related field of endeavor, Mahoney teaches deposition of thin, hard, wear-resistant diamond-like carbon (DLC) and silicon-doped diamond-like carbon (Si-DLC) coatings using gridless Hall-Current ion sources (Col. 1, l. 10-17), where the Hall-Current ion source is a plasma beam (Col. 2, l. 5-39) (i.e. by PECVD) and the layer of Si-DLC is deposited from a mixture of silicon-containing and carbon-containing precursor gases (Col. 5, l. 65 to Col 6, l. 8). Mahoney teaches that it is known to produce DLC coating with other dopant elements such as silicon, as Si-DLC coatings are characterized by nanoindentation hardness of about 12-19 GPa, compressive stress of about 0.4-1.8 GPa, etc. (Col. 1, l. 41-58). For deposition of Si-DLC coatings, the precursor feed gas mixture is made up of silicon-containing and carbon containing compounds such as silane compounds which may be silane, disilane (i.e. z=2), organosilanes, etc. such as methylsilane (C1H6Si1), dimethylsilane (C2H8Si1), trimethylsilane (C3H10Si1), tetramethylsilane (C4H12Si1), diethylsilane (C4H12Si1), etc., mixed with hydrocarbon compounds such as methane (CH4), ethane (C2H6), ethylene (C2H4), butane (C4H10), butadiene (C4H6), hexane (C6H14), cyclohexane (C6H12), etc. (Col. 8, l. 61 to Col. 9, l. 14). These example hydrocarbons (i.e. hydrocarbon monomer) have a coefficient of carbon (i.e. corresponding to x1 in the instant claims) that ranges from 1 to 6 and a coefficient of hydrogen (i.e. corresponding to y1 in the instant claims) that ranges from 4 to 14. The example silane compounds (i.e. silane monomer) have a coefficient of carbon (i.e. corresponding to x2 in the instant claims) that ranges from 1 to 4, a coefficient of hydrogen (i.e. corresponding to y2 in the instant claims) that ranges from 6 to 12, and a coefficient of silicon (i.e. corresponding to z in the instant claims) that is 1 (or 2 for disilanes). Each of these ranges lie within (i.e. overlap) the instantly claimed ranges, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. It is noted that the method of depositing the layer from precursor gases and in the presence of plasma is considered to be a plasma CVD method (i.e. based on the description).
As both Mitsuhashi and Mahoney teach a hard diamond-like carbon (DLC) coating that may also contain silicon, they are analogous. Furthermore, as outlined above, both teach that the DLC coating may be deposited by a plasma CVD method, as outlined above. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the generally taught DLC coating which may contain silicon of Mitsuhashi to be specifically a Si-DLC coating deposited from the precursor gases disclosed by Mahoney as this is considered a conventionally known method of forming a thin, hard DLC coating containing silicon because a Si-DLC coating has known properties of hardness (i.e. about 12-19 GPA) and compressive stress (i.e. about 0.4-1.8 GPa), and one would have had a reasonable expectation of success.
Claim 16: Mitsuhashi teaches that the antifouling coating layer (i.e. the AF coating) is formed on the DLC layer by using a surface-treating agent containing a fluorine-containing compound such as a perfluoropolyether group-containing compound (i.e. made of a raw material comprising a polymer of perfluoropolyether) (paragraph 0038).
Claim 17: Mitsuhashi teaches that the fluorine-containing compound (i.e. such as a perfluoropolyether group-containing compound) is one or more compounds represented by disclosed formulas having X1 and X2 that are each having a single bond or a 2-10 valent organic group (paragraphs 0013-0025). Mitsuhashi defines a 2-10 valent organic group as containing carbon and may have hydrogen removed from a hydrocarbon group (i.e. X1 and X2 include hydrocarbon groups) (paragraph 0044), and a hydrocarbon group may have one or more of Si, siloxane, etc. (i.e. a silane or alkoxysilane) (paragraph 0045), and therefore the polymer of perfluoropolyether may be a perfluoropolyether silane or perfluoropolyether alkoxysilane.
Claim 18: Mitsuhashi teaches that the antifouling coating layer (i.e. the AF coating as outlined above) can have a thickness of 1 to 50 nm, and more preferably 1 to 15 nm (paragraph 0304), which overlaps the instantly claimed thickness. See MPEP § 2144.05.
Claim 19: The limitations of instant claim 19 are directed to product-by-process limitations and therefore are not limited to the recited steps, only the structure implied by the steps. See MPEP § 2113. In this respect, Mitsuhashi teaches that the antifouling coating layer (i.e. the AF coating as outlined above) can be deposited using a dry coating method (paragraph 0295) and examples of dry coating methods include deposition that is usually vacuum deposition by sputtering, high-frequency heating, etc. (i.e. by vacuum evaporation) (paragraph 0297).
Claim 20: Mitsuhashi teaches an antifouling article having a base material, a DLC layer, and an antifouling coating layer (i.e. an AF coating as outlined above) (paragraph 0028), wherein the surface region of the base material where the antifouling coating layer should be formed may be at least a part of the base material surface (paragraph 0031) and the antifouling coating layer is formed on the DLC layer (paragraph 0038) (i.e. a coated product, having at least a part of a surface thereof coating with the composite coating).
Claim 21: Mitsuhashi teaches that the antifouling article (i.e. the coated product as outlined above) may be an optical member such as touch panel sheets (i.e. a touch panel) of cellular phone or personal digital assistant (paragraph 0306).
Claim 22: Mitsuhashi does not teach the specific property of color difference value before and after coating. However, as outlined above, Mahoney-modified Mitsuhashi teaches substantially identical materials and deposited by substantially identical method as the instantly claimed composite coating and coated product, and therefore the antifouling article of Mahoney-modified Mitsuhashi is considered to have substantially identical properties and functions. See MPEP § 2112.01.
Claim 23: Mitsuhashi teaches that the base material (i.e. the substrate) may be glass etc. (paragraph 0029). Mitsuhashi teaches the static contact angle of the antifouling coating layer (i.e. on the coated surface) is 109° or 111° even after 168 hours, and higher for less time (Table 1), but does not disclose a water drop contact angle under the same conditions as the instantly claimed coated product. However, as outlined above, Mahoney-modified Mitsuhashi teaches substantially identical materials and deposited by substantially identical method as the instantly claimed composite coating and coated product, and therefore the antifouling article of Mahoney-modified Mitsuhashi is considered to have substantially identical properties and functions. See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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