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 .
Objection to the Specification
Despite the specification otherwise indicating thickness of 0.2 to 3.0 µm for the copper-zinc alloy layer, the specific examples appear to indicate thickness of 40 to 70 µm. (Spec. Table 1). Applicant is required to make necessary corrections.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2009/0233037 A1 (“Medwick”).
Considering claims 1, 2, 4, and 5, Medwick discloses a coated substrate comprising a transparent ply of polycarbonate, a basecoat 102 of silicon dioxide, a reflective coating 22 made of 50 to 500 nm of a metal such as copper or an alloy thereof, an anti-corrosion coating 104 having thickness of 1 to 500 nm and made of various Cu-based brass alloys, and a protective coating 50 having thickness of 10 to 100 nm and containing zirconium oxide. (Medwick ¶¶ 0026, 0028-0032, and 0037; and Fig. 1). Medwick is analogous art, for it is directed to the same field of endeavor as that of the instant application (optical structures having low transmittance).
Although the reference does not disclose the polycarbonate to be molded, this is a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113). In the instant case, Medwick further discloses that its polymeric panes can be curved, which further suggest a material that is molded or formed by a shaping method substantially similar to molding. Formation via molding as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art.
Either reflective coating 22 or anti-corrosion coating 104 maps onto the claimed copper-zinc alloy layer, especially as the reference discloses usage of various Zn-containing brasses. (Medwick ¶ 0037). Furthermore, various specific brass materials have composition reading on the limitations of claims 2 and 4.
The various thickness ranges overlap respective recited ranges. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Medwick renders obvious claims 1, 2, 4, and 5.
Considering claim 3, as polymers have melting point lower than that of either alloy or ceramic, and as even polycarbonate has minimum MP of 150 °C, the alloy or ceramic materials from Medwick reads on claim 3.
Considering claims 8-15, Medwick discloses that brass alloy is resistant to corrosion and that its coated article can have any desired transmittance characteristics. (Medwick ¶¶ 0023 and 0034). Furthermore, it is abundantly clear that material compositions and layer thicknesses utilized are also substantially similar. As such, Medwick’s coated substrate is considered to be capable of meeting various limitations recited re: transmittance and resistance to corrosion.
Claims 1-5 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/133618 A2 (“Seeto”) in view of U.S. 2016/0068432 A1 (“Singh”) and U.S. 2018/0029931 A1 (“Schürmann”).
Considering claims 1, 2, 4, 5, and 16, Seeto discloses a safety eyewear having a substrate 110 made of molded polycarbonate, adhesion layer 130 made of SiO2, layer 120 of copper and having thickness of at least 140 nm, and a protective layer 140 having thickness of 20-600 nm and protecting the underlying layer 120. (Seeto ¶¶ 21, 25-26, 29-30, 31, and 33). Seeto is analogous art, for it is directed to the same field of endeavor as that of the instant application (eyewear lens having a metal layer). Seeto differs from the claimed invention, as it a) fails to teach a copper alloy that contains Zn and b) fails to teach usage of ZrO2 for its protective layer.
Re: deficiency a), it is noted that in the optical arts, inclusion of Zn into a copper-based alloy to produce a brass having 35-65 at.% (and 65-35 at.% Cu) improves resistance toward oxidation and water while largely maintaining the very similar optical characteristics. (Singh ¶¶ 0083 and 0084). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used a brass having 35-65 at.% (and 65-35 at.% Cu) for improved resistance to degradation.
Re: deficiency b), it is noted that ZrO2, ZrN, TiN, and TiO2 are all known in the art of optical coatings as dielectric materials that can protect underlying layer of Cu from environmental damages. (Schürrmann ¶¶ 0025 and 0048). With Seeto disclosing TiO2 as a protective material, and with Schürrmann teaching other dielectric materials used for similar aims, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used that ZrO2, ZrN, or TiN as material for forming the protective layer 140 in Seeto.
The various thickness ranges overlap respective recited ranges. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
Seeto in view of Singh and Schürmann renders obvious claims 1, 2, 4, 5, and 16.
Considering claim 3, as polymers have melting point lower than that of either alloy or ceramic, and as even polycarbonate has minimum MP of 150 °C, the alloy or ceramic materials from Seeto reads on claim 3.
Considering claims 8-15, as noted in Singh, the particular brass alloy used is resistant to corrosion. Seeto further discloses transmittance of at least about 8% in the range of 380 nm to 2000 nm. (Seeto ¶ 0039). Furthermore, it is abundantly clear that material compositions and layer thicknesses utilized are also substantially similar. As such, the lens of Seeto and Singh and Schürmann is considered to be capable of meeting various limitations recited re: transmittance and resistance to corrosion.
Claims 6, 7, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Seeto in view of Singh and Schürmann, as applied to claim 1 above, and further in view of U.S. 2017/0363777 A1 (“Maeda”).
Considering claims 6, 7, and 17, Seeto differs from the claimed invention, as it does not disclose the inclusion of a polymeric primer layer. However, usage of a transparent primer layer formed from a (meth)acrylate or urethane resin between a polymeric substrate and a vapor-deposited oxide layer such is taught in Maeda. (Maeda ¶¶ 0030-0032). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included such a layer to reduce stress concentration generated by the deposition of a metal oxide on the polymeric substrate. (Id. ¶ 0030).
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights