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 .
Status of Claims
Claims 1-9 are pending and examined below.
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.
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.
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 non-obviousness.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 107502011).
Regarding claim 1, Zhang discloses a normal-temperature-hardenable antistatic coating agent (see para [0033]) comprising:
tin oxide (SnO2) and a carbon nanotubes (see para [0023], e.g., one or more);
silica (SiO2) (see para [0024]);
tungsten oxide (WO3) (see para [0024] and para [0070] wherein SiO2 and WO3 are used together); and
a liquid medium (see para [0026] and [0030]).
As Zhang discloses choosing from a finite number of identified, predictable solutions i.e., conductive inorganic particles of SnO2 and carbon nanotubes, one of ordinary skill in the art would have found obvious to pursue the known options with a reasonable expectation of success (see MPEP § 2143).
In regards to the nanotubes being single-walled, it is a well-known expedient in the art that carbon nanotubes are inclusive of single walled carbon nanotubes (see MPEP § 2144.03).
The Courts have held that it would be obvious to a person having ordinary skill in the art to select a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07; see also § 716.02(d)).
Regarding claim 2, Zhang discloses an antistatic coating agent according to claim 1, wherein the content of the single-walled carbon nanotube is 10% by weight (see para [0074]). The weight percent would vary by the use of other conductive inorganic nanoparticles (see para [0023]). Zhang discloses the mass percent is a result effective variable as the conductivity provides the anti-static property (see para [0004]-[0010] and [0023]).
Therefore it would be obvious to a person having ordinary skill in the art to optimize the mass of carbon nanotubes based on the additional conductive inorganic nanoparticles to be in the recited range of 0.008 to 0.07% by mass as the Court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Regarding claim 3, Zhang discloses an antistatic coating agent according to claim 1, wherein the single-walled carbon nanotube has a diameter of 0.1 to 100 nm (see para [0016]), which overlaps the recited range of 3 nm or smaller.
The court has held 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), (see MPEP § 2144.05).
Regarding claim 4, Zhang discloses an antistatic coating agent according to claim 1, wherein the liquid medium comprises a water-soluble organic solvent and water (see para [0026] and [0030]).
Regarding claim 5, Zhang discloses an antistatic coating agent according to claim 1 (see discussion of claim 1).
The limitation that the agent is to be used for forming a coat layer on a surface of a substrate made of glass is intended use and is given weight to the extent that the prior art is able to perform the intended use. Zhang discloses the recited intended use (see para [0038]).
Regarding claim 6, Zhang discloses an antistatic glass substrate comprising:
a substrate made of glass; and
a coat layer being a hardened layer provided on a surface of the substrate, the hardened layer formed from the antistatic coating agent according to claim 5 (see para [0038]).
Regarding claim 7, Zhang discloses an antistatic glass substrate according to claim 6, wherein the coat layer has a surface resistance value [see para [0038]). Zhang discloses surface resistance as a result effective variable (see para .
It would be obvious to a person having ordinary skill in the art to optimize the surface resistance of the recited range of 106 Q or less as the Court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Zhang does not disclose a visible light transmittance variation ratio is -0.5% or more as calculated by the following formula (1): R = {(T-TB)/TB}x 100 ...(1) wherein R represents the visible light transmittance variation ratio (%), TB represents visible light transmittance (%) of the substrate, and T represents visible light transmittance (%) of the antistatic glass substrate. Zhang does disclose a substantially identical structure (see claims 1-4).
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). See § MPEP 2112.01.
Regarding claim 8, Zhang discloses an antistatic glass substrate according to claim 7 (see discussion above). The limitation that said glass substrate is a protective cover for a solar panel intended use and is given weight to the extent that the prior art is able to perform the intended use. The prior art discloses the intended use (see para [0038] and [0050]-[0051]).
Regarding claim 9, Zhang discloses a solar panel comprising the antistatic glass substrate according to claim 8 as a protective cover (see para [0050]-[0051]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721
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