DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 16 December 2024, 03 March 2025, and 18 March 2025 have been considered by the examiner.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claims 3 and 9-11 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.
With regard to Claims 3 and 9-11, the term “optionally” renders each claim ambiguous, as it is unclear as to whether that which follows is a required element. For purposes of examination, the term “optionally” is not given any weight, and each of Claims 3 and 9-11 are understood to require the listed elements, particularly in view of the instant Specification, which only discloses working examples featuring tin(II) chloride.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
2. Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aswathy et al., "Deposition of Tin Oxide Thin Film by Sol-Gel Dip Coating Technique and its Characterization," AIP Conference Proceedings, 29 October 2019, Vol. 2162, No.1; (“Aswathy”).
With regard to Claims 1-4 and 7, Aswathy teaches a mixed-valence transparent sol-gel material formed from a mixture comprising tin(II) chloride precursor, alcohol, and water (see Abstract; Introduction at Pg. 1; Experimental Details at Pg. 1). Aswathy teaches depositing films thereof and annealing, thereby yielding a sol-gel material featuring a refractive index within the claimed range (see Experimental Details at Pg. 2; Optical Studies at Pgs. 3-4; Table 2 at Pg. 4). Aswathy thus teaches the claimed sol-gel material using the claimed constituents prepared as claimed, with claimed properties attributable thereto understood to be implicit within the disclosure of Aswathy.
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.
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.
3. Claims 5-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Aswathy as applied to Claim 4, and further in view of US 2017/0199313 to Fukuda et al. (“Fukuda”).
With regard to Claims 5-6, Aswathy does not teach the claimed constituents. Fukuda teaches optical components featuring a sol-gel deposited layer, and teaches inclusion of antioxidants and amine stabilizers, as well as methoxy propanol solvent (see Abstract; ¶¶ [0103]-[0106]; Claim 11). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed known sol-gel additives and solvents within the field of optical films in the composition of Aswathy, as taught by Fukuda, with a reasonable expectation of success.
Allowable Subject Matter
Claims 9-11 are noted as directed to allowable subject matter pending resolution of the issues giving rise to rejection thereof under 35 U.S.C. 112 as noted herein. Additionally, Claim 9 is otherwise objected-to as being dependent upon a rejected base claim, but would be allowable if amended to overcome the rejection under 35 U.S.C. 112 and rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach or suggest sol-gel material comprising the claimed constituents in the claimed amounts.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sehrish Gul et al., "Tin Oxide Thin Films Prepared By Sol-Gel For PV Applications," Materials Today: Proceedings, 4 December 2015, Vol. 2, No.2, pp. 5793-5798; (“Sehrish”).
Marikkannan et al., "A Novel Synthesis of Tin Oxide Thin Films by the Sol-Gel Process for Optoelectronic Applications," AIP Advances, American Institute of Physics, 13 February 2015, Vol. 5, No. 2; (“Marikkannan”).
Sehrish teaches preparation of transparent tin oxide films via sol-gel from tin(II) chloride precursor in ethylene glycol solvent (see Abstract; Experimental Details at Pg. 2). Marikkannan teaches preparation of transparent tin oxide films via sol-gel from tin(II) chloride precursor in ethanol, isopropanol, and methanol solvents (see Abstract; Experimental Materials at Pg. 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715