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 .
Claim Objections
Claim 18 objected to because of the following informalities: Claim 18 recites “…meniscus-type or Fresnel lens;” and should be corrected as “…meniscus-type or Fresnel lens.”. Appropriate correction is required.
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.
Claims 4 and 16 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.
Claim 4 recites “depositing additional material layers between the mold and the high-purity aluminum layer, for assisting with the deposition of a high-quality, conformal, and well-adhered aluminum layer.” The term “high-quality” and “well-adhered” are relative/subjective terms because claim does not set forth objective boundaries for determining what level of quality or adhesion satisfied the claim. Accordingly, the metes and bounds of the claim are unclear.
Claim 16 is indefinite because the phrase “The optical article of claim 1 optical article is further formed by” is grammatically unclear and renders the scope of the claim uncertain. It is unclear whether the claim is intended to recite “The optical article of claim 1, wherein the optical article is further formed by…” or another construction.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,124,003. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Claim 1 of U.S. Patent No. 12,124,003 is directed to a method of producing an optical article having a motheye antireflective nanostructured surface. The method includes providing a mold cavity having an aluminum surface, anodizing and etching the aluminum surface to form tapered pits defining the antireflective nanostructured mold texture, injecting resin into the mold cavity, cooling the resin and removing the optical article from the mold cavity.
Present claim 1 is directed to an optical article “formed by” substantially the same process steps. The presently claimed optical article is the product necessarily produced by the method recited in clam 1 of U.S. Patent No. 12,124,003. Recasting the same subject matter from a method of making the optical article into a product-by-process optical article claim does not render the presently claimed optical article patentably distinct from the article produced by the patented method. The dependent claims merely recited additional features or obvious variations relating the same mold fabrication process, aluminum layer properties, anodization/etching conditions, release layer, and intended optical article form. These limitations do not render the presently claimed optical article patentably distinct from the optical article produced by the patented method. Accordingly, claims 1-19 are rejected on the ground of nonstatutory obviousness type double patenting over claims 1-19 of U.S. Patent No. 12,124,003.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 5, 13, 14, 16 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanagishita et al. NPL Titled “Fabrication of polymer antireflection structures by injection molding using ordered anodic porous alumina mold” 2014.
Regarding claim 1, Yanagishita teaches an optical article formed of a transparent optical resin (Yanagishita states that polycarbonate plates were formed. The abstract says an ordered array of tapered pillars or holes was formed on the surface of polycarbonate plates) with a motheye antireflective nanostructured (ARN) surface (Yanagishita teaches polymer antireflection structures composed of ordered arrays of tapered pillars or holes. The introduction explains that tapered structures smaller than the visible wavelength gradually changes the refractive index at the surface and suppress reflection) the optical article formed by: providing a mold having a cavity defining a shape for the optical article (Yanagishita expressly teaches injection molding, where molten polymer is injected into the mold. Fig. 1(a) shows molten polymer being injected into the mold and forming a polymer plate with antireflection structures),
the cavity having a surface layer formed of aluminum (Yanagishita teaches use of anodic porous alumina as a mold, and anodic porous alumina is formed from anodized aluminum. It also teaches a Ni replica mold made from anodic porous alumina);
imparting an ARN-mold surface texture to the aluminum surface layer via a series of sequential chemical treatments involving anodization and etching of the aluminum layer (Yanagishita states that ordered anodic porous alumina was prepared using a two-step anodization process. It says the oxide layer from the first anodization was removed using CrO3 and H3PO4, then a second anodization was performed. It further states that to form tapered holes, a combined process involving anodization and pore-widening treatment was adopted, and the pore-widening treatment used 5 wt.% phosphoric acid. See Experiment II section) to thereby produce a surface morphology comprising an array of tapered pits (Yanagishita says the anodic porous alumina mold had tapered holes. Fig. 5(a)-(b) show SEM images of an anodic porous alumina mold with tapered holes, arranged hexagonally with a 100 nm period and 200 nm depth);
producing the optical article having an ARN surface by further steps of:
injecting a transparent optical resin into the mold to fill the cavity (Yanagishita says polymer antireflection structures were fabricated by injection molding using anodic porous alumina or a Ni replica as a mold. The experiment section says polycarbonate was used, molten polymer was injected, and heat-assisted injection molding was adopted. See introduction section),
wherein the optical resin is chosen from a group consisting of including polymethyl methacrylate, polycarbonate, cyclic olefins, and polysiloxane (see abstract section: specifically uses polycarbonate);
cooling the mold (Yanagishita discloses heat-assisted injection molding with mold temperature controlled stepwise. It states injection was carried out at a mold temperature of 1600C, and the subsequent detachment of the mold from the polymer was carried out at a mold temperature of 80oC. Fig. 1(b) shows the mold temperature profile cycling between 1600C to 80oC); and
removing the formed optical article from the mold (Yanagishita teaches that detachment of the mold from the polymer was carried out at 80oC. It also discusses deformation during detachment of the sample from the mold).
Regarding claim 5, Yanagishita teaches the optical article of claim 1 wherein the pits are tapered and further wherein the pits either (a) have a depth of between 50 nm and 500 nm; (b) have an opening diameter between 50 nm and 500 nm; or (c) have a depth-to-opening-diameter aspect ratio of between 1 and 2 (Yanagishita discloses an anodic porous alumina mold with tapered holes, where the depth of the holes was 200 nm see page 4 right column lines 2-3).
Regarding claim 13, Yanagishita teaches the optical article of claim 1 wherein the etching additionally comprises: widening pores of the pits via a phosphoric acid etch (Yanagishita states that to form tapered holes in the anodic porous alumina, a combined process involving anodization and pore-widening treatment was adopted, and the pore-widening treatment was carried out in 5 wt.% phosphoric acid solution at 300C for 10 minutes).
Regarding claim 14, Yanagishita teaches the optical article of claim 13 wherein the pore widening is further performed with no anodic bias and concentration of phosphoric acid between 2% and 10% H3PO4 by weight; or performed in a controlled temperature bath, between 25° C. and 35° C (Yanagishita teaches that the pore-widening treatment was carried out in 5 wt.% phosphoric acid solution at 300C for 10 minutes. The 5 wt.% phosphoric acid concentration falls within the claimed 1-10% H3PO4 range).
Regarding claim 16, Yanagishita teaches the optical article of claim 1 optical article is further formed by: applying a release layer to the ARN mold surface (see page 2 left column lines 7-10: “Prior to injection molding, the mold was treated with a fluoroalkylsilane solution (Optool DSX, Daikin Industries, Ltd.) to form a releasing layer.”).
Regarding claim 17, Yanagishita teaches the optical article of claim 16 wherein the release layer comprises: a less than 10 nm layer applied conformally as a molecular monolayer; or formed of a fluorinated silane compound (see page 2 left column lines 7-10: “Prior to injection molding, the mold was treated with a fluoroalkylsilane solution (Optool DSX, Daikin Industries, Ltd.) to form a releasing layer.”).
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.
Claim(s) 2, 11, 15 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita as applied to claim 1 above, and further in view of Onomoto et al. US 2015/0378059.
Regarding claim 2, Yanagishita teaches the optical article of claim 1, but fails to teach wherein the mold is formed of aluminum or aluminum alloy and the surface layer is an integral part of the mold.
Onomoto teaches using anodized porous alumina as a mold, where aluminum is anodized to form a fine concavo-convex structure that may be used as a mod (see para 0052). Onomoto further teaches applying voltage to an aluminum substrate and anodizing the surface of the aluminum substrate to form an oxide film (see para 0054, 0061). Onomoto states that the aluminum substrate may have any shape as long as it can be used as a mold (see para 0064). Therefore, it would have been obvious to one of ordinary skill in the art to form the mold of Yanagishita from aluminum or aluminum alloy with an integral anodized surface layer, as taught by Onomoto, in order to provide a known anodized porous alumina mold surface directly on aluminum mold substrate for transferring fine moth-eye antireflection structures.
Regarding claim 11, Yanagishita teaches the optical article of claim 1, but fails to teach wherein the anodization additionally comprises: anodization via a phosphoric acid based electrolyte operated under an applied voltage.
Onomoto teaches using anodized porous alumina as mold and teaches that aluminum is anodized at a predetermined voltage using oxalic acid, sulfuric acid or the like as an electrolyte to form a fine concavo-convex structure that may be used as mold (see para 0052). Onomoto further teaches applying voltage to an aluminum substrate and anodizing the surface of the aluminum substrate to form an oxide film (see para 0051, 0061), and para 0069 further identifies phosphoric acid as an acid aqueous electrolyte for anodization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to perform the anodization of Yanagishita using a phosphoric acid based electrolyte operated under applied voltage as taught by Onomoto, because phosphoric acid was known electrolyte for anodizing aluminum to form porous alumina mold structures.
Regarding claim 15, Yanagishita teaches the optical article of claim 1 wherein the sequential chemical treatments comprise: a first anodization; a first pore-widening etch; a second, shorter duration, anodization; a final etch for providing smoothed profiles of the tapered pits (Yanagishita teaches preparing ordered anodic porous alumina by a two-step anodization process, including a first anodization for 6 hours, removal of the oxide layer, and a second anodization for 20 seconds, followed by pore-widening treatment in 5 wt.% phosphoric acid at 300C for 10 minutes. However, Yanagishita fails to teach: first anodization, first pore widening etch, second shorter anodization and final etch order.
Onomoto teaches a process including: (a) anodizing an aluminum substrate to form an oxide film; (b) removing at least part of the oxide film: (c) anodizing the aluminum substrate to form an oxide film having pores; (d) expanding the pore diameter; and (e) repeatedly and alternately performing steps (c) and (d) (see paragraphs 0054-0058). Onomoto further teaches that the pore-diameter expanding treatment is performed by immersion in an etching solution that dissolves the oxide film, such as approximately 5% by mass aqueous phosphoric acid (see para 0083). In para 0086 further teaches that repeated anodization and pore-diameter expansion form pores whose diameter continuously decreases from an opening toward a depth direction, and that the final step is preferably the pore-diameter expanding treatment. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to use Onomoto’s repeated anodization and pore-diameter expanding sequence in the process used by Yanagishita because both references form anodized porous alumina molds with tapered pores for producing moth-eye antireflective structures, and Onomoto teaches that repeated anodization and pore-diameter expansion forms pores whose diameter continuously decreases from the opening toward the depth direction.
Regarding claim 19, Yanagishita teaches the optical article of claim 1, but fails teaches to wherein the optical article comprises a freeform optic; a TIR optic; an optical waveguide; or a monolithic array of lenses, or prisms.
Onomoto teaches that a molded body having a fine concavo-convex structure on its surface may be developed for optical uses including a light guide and an optical lens (see para 0147). Therefore, it would have been obvious to one of ordinary skill in the art to form Yanagishita’s antireflective nanostructure optical article as an optical waveguide/light guide to reduce reflection and improve light transmission.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita and Onomoto as applied to claim 11 above, and further in view of Matsuo et al. US 2005/0219353.
Regarding claim 12, the combination of Yanagishita and Onomoto teaches the optical article of claim 11, but fails to teach additionally wherein the electrolyte is between 0.1% and 2% H3PO4 by weight; or wherein the applied voltage is between 160 V and 190 V to further control pit depth and diameter; or wherein a temperature of the anodization controls relative rates of oxidation and etching of the aluminum, and is between 0° C. and 10° C.
Matsuo teaches immersing the mold having the positive electrode together with the negative electrode into a 5-wt% phosphoric acid solution at a regulated temperature of 10° C for anodic oxidation, and then applying a D.C. voltage across the electrodes (see para 0104). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to use Matsuo’s regulated 10° C phosphoric acid anodization condition in the anodization process of Yanagishita/Onomoto because Matsuo teaches this condition forming pores in an anodized mold used to produce subwavelength antireflective optical structures.
Claim(s) 3, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita as applied to claim 1 above, and further in view of Isurugi et al. US 2011/0297640.
Regarding claim 3, Yanagishita teaches the optical article of claim 1 but fails to explicitly express wherein the optical article is further formed by: depositing the aluminum surface layer onto the mold.
Isurugi teaches a motheye mold fabrication method including anodizing a surface of an aluminum film or aluminum base to form a porous alumina layer having very small recessed portions, etching to enlarge the recessed portions, and further anodizing to grow the recessed portions (see para 0022), and further teaches that an aluminum film may be formed over a base, such as a glass substrate using a thin film deposition techniques i.e., depositing of a 1 µm thick aluminum film 10a by sputtering over a square glass substrate (see para 0046 and 0048). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to form the aluminum surface layer of the mold used in Yanagishita by depositing an aluminum film onto a mold/base as taught by Isurugi to provide an anodizable aluminum surface layer for forming an inverted motheye mold structure.
Regarding claim 8, Yanagishita teaches he optical article of claim 1, but fails to teach wherein the aluminum layer is between 90% and 100% aluminum by mass.
Isurugi teaches that the aluminum layer is between 90% and 100% aluminum by mass, specifically para 0048 discloses forming a sample by depositing an aluminum film by sputtering over a glass substrate, wherein an aluminum target with a purity of 99.999 mass % was used. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to use such a high purity aluminum layer in the mold of Yanagishita to reduce impurity caused corrosion defects and improve the quality of the anodized porous alumna motheye mold surface.
Regarding claim 9, the combination of Yanagishita and Isurugi teaches the optical article of claim 3, and Isurugi further teaches wherein the aluminum layer has a thickness of at least 50 nm (see para 0048: depositing of a 1 µm thick aluminum film 10a by sputtering over a square glass substrate).
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita and Isurugi as applied to claim 3 above, and further in view of Matsuo et al. US 2005/0219353.
Regarding claim 4, the combination of Yanagishita and Isurugi teaches the optical article of claim 3, but fails to teach wherein the optical article is further formed by: depositing additional material layers between the mold and the high-purity aluminum layer, for assisting with the deposition of a high-quality, conformal, and well-adhered aluminum layer.
Matsuo expressly teaches depositing a primer layer and then an aluminum layer on the mold surface (see para 0104). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to include Matsuo’s primer layer between the mold surface and the deposited aluminum layer in the deposited aluminum mold of Yanagishita/Isurugi because Matsuo teaches the primer layer in the same context of depositing an aluminum layer on an optical mold surface before anodizing the aluminum to form pores for subwavelength antireflective structures. The use of a prime layer would have been a predictable way to improve adhesion and quality of the deposited aluminum layer on the mold surface.
Regarding claim 6, the combination of Yanagishita teaches the optical article of claim 3, but fails to teach wherein depositing the aluminum layer deposits aluminum only over selected areas depending upon where the ARN-mold surface texture is to be imparted.
Matsuo teaches depositing aluminum on a selected area depending on where the antireflective mold texture is to be formed (see para 0094). It would have been obvious to one of ordinary skill in the art before the effective filing date to deposit the aluminum layer on the selected mold surface where the ARN texture desired, as taught by Matsuo, because Matsuo teaches forming pores only on the selected free curved optical surface that will transfer the antireflective structure to the molded optical element i.e., would have predictably avoided unnecessary processing of non-optical mold regions while forming the desired antireflective mold texture at the functional optical surface.
Claim(s) 7 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita as applied to claim 1 above, and further in view of Matsuo et al. US 2005/0219353.
Regarding claim 7, Yanagishita teaches the optical article of claim 1 but fails to teaches wherein the ARN-mold surface texture is confined to selected areas of the mold by further: masking other portions of an interior surface of the mold during the process of imparting the ARN-mold surface texture.
Matsuo teaches confining the ARN/SWS mold texture to selected areas of a mold by masking other portions during the texture forming process. Specifically, Matsuo teaches preparing a mold having a free curved surface for forming lens, depositing a primer layer and aluminum layer on the free curved surface, coating the overall mold with masking tape so as to expose only the free curved surface, and then anodizing the aluminum layer to form pores (see para 0104). Therefore, it would have been obvious to mask other portion of the mold used in Yanagishita so that the antireflective nanostructured mold texture is imparted only to selected mold areas.
Regarding claim 18, Yanagishita teaches the optical article of claim 1, and Yanagishita further teaches that injection molding allows integral formation of antireflection structures with polymer products of various shapes, but fails to teach wherein the optical article comprises a plano-convex, plano-concave, double-convex, double-concave, meniscus-type or Fresnel lens.
Matsuo teaches applying subwavelength antireflection structures to a molded optical lens, specifically an optical element having convex optical pieces with an antireflection function on a surface having finite curvature to obtain fθ lens, where the optical pieces are transferred over the curved surface and the reflectivity is reduced to 1.6% (see para 0096-0099). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to form antireflective nanostructured surface of Yanagishita on a molded optical lens as taught by Matsuo, to predictably reduced surface reflection and improve light transmission in the optical lens application.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagishita and Isurugi as applied to claim 3 above, and further in view of Onomoto et al. US 2015/0378059.
Regarding claim 10, the combination of Yanagishita teaches the optical article of claim 3, and but fails to teach wherein the aluminum layer is machined or polished to produce a desired surface shape.
Onomoto further teaches wherein the aluminum layer is machined or polished to produce a desired surface shape (see para 0065: that aluminum substrate used to form the anodized porous alumina mold is subjected to a machining process). It would have been obvious to one of ordinary skill in the art before the effective filing date to machine or polish the aluminum layer to improve the quality and shape accuracy of the resulting ARN mold texture transferred to the optical article.
Conclusion
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/EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872
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