DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of App. No. PCT/JP2022/024675, filed on 06/21/2022. The preliminary amendment filed on 11/07/2024 is entered and acknowledged by the Examiner.
3. Claims 1-7 are pending. Claims 1-7 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statement submitted on 11/07/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 11/07/2024. These drawings are acceptable.
Priority
6. Acknowledgment is made of applicant's claim for foreign priority based on an application filed on 06/21/2022. However, that applicant has not filed a certified copy of the application PCT/JP2022/024675 as required under 35 U.S.C. 119(a)-(d).
Claim Objections
7. Claims 1-2, 5-6 are objected to because of the following informalities: It is suggested that unit for an attenuation coefficient of each layer of iron oxide is equal to or greater than 0.1 is missing (i.e., cm-1). Appropriate correction is required.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 1-4 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 pre-AIA the applicant regards as the invention. The term "type" in claim 1 is a relative term which renders the claim indefinite. The term "type" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what a thin-film "type" filter is intended to convey. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite, see Ex parte Copenhaver, 109 USPQ 1 18 (Bd. App. 1955). See also MPEP 2173.05 (B) (e). Claims 2-4 being depended on claim 1 are rejected as well.
10. Claims 1-4 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 pre-AIA the applicant regards as the invention. Claim 1 recites “an attenuation coefficient of each layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the thin-film filter that the attenuation coefficient is measured, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2-4 being depended on claim 1 are rejected as well.
11. Claims 1-4 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 applicant regards as the invention. Claim 1 recites the limitation "layers of iron oxide and of other material” in line 4, “in each layer of iron oxide” in line 5, and “each layer of iron oxide” in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 2-4 being depended on claim 1 are rejected as well.
For the purpose of examination against the prior art, claim 1 is construed to recites "the layers of iron oxide and of other material” in line 4, “in each of the layer of iron oxide” in line 5, and “each of the layer of iron oxide” in line 8.
12. Claims 5-7 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 pre-AIA the applicant regards as the invention. The term "type" in claim 5 is a relative term which renders the claim indefinite. The term "type" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what a thin-film "type" filter is intended to convey. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite, see Ex parte Copenhaver, 109 USPQ 1 18 (Bd. App. 1955). See also MPEP 2173.05 (B) (e). Claims 6-7 being depended on claim 5 are rejected as well.
13. Claims 5-7 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 pre-AIA the applicant regards as the invention. Claim 5 recites “an attenuation coefficient of each layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of the thin-film filter that the attenuation coefficient is measured, thus claim 5 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 6-7 being depended on claim 5 are rejected as well.
14. Claims 5-7 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 applicant regards as the invention. Claim 5 recites the limitation "layers of iron oxide and of other material” in line 4, “in each layer of iron oxide” in line 5 , and “each layer of iron oxide” in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 6-7 being depended on claim 5 are rejected as well.
For the purpose of examination against the prior art, claim 1 is construed to recites "the layers of iron oxide and of other material” in line 4, “in each of the layer of iron oxide” in line 5, and “each of the layer of iron oxide” in line 8.
Claim Rejections - 35 USC § 103
15. 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.
16. Claims 1-2, 5-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Aono et al. (JP2017-188415 A, machine translation, hereinafter “’415”) in view of Minagawa et al. (JP2010-191471 A, machine translation, hereinafter “’471”).
Regarding claim 1: ‘415 teaches a thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5). ‘415 teaches that it is known a high refractive index film having a high absorption coefficient of visible light is formed to have a large film thickness in order to improve an antiglare level (Page 6/18, [0004]). Thus, one having ordinary skill in the art would consider the absorption characteristics of the multilayer film
filter can be adjusted by using the total value of the oxygen concentration of the high-refractive-index layer and the thickness of the high-refractive-index layer. ‘415 does not expressly teach a ratio of the number of iron atoms to the number of oxygen atoms in each of the layer of iron oxide is equal to or greater than 4/3 and less than 3/2 and an attenuation coefficient of each of the layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers.
However, ‘471 teaches optical filter suitable for an image pickup apparatus capable of photographing in both a visible light band and an infrared band (Page 8/19, [0018]). ‘471 teaches the first filter and the second filter are formed on a surface of a single optical substrate in order to suppress an increase in aberration due to the overlap of the optical substrates (Page 8/19, [0015]). ‘471 teaches in the dielectric multilayer film, deviation from the stoichiometric composition usually occurs (i.e., effective variable, Page 9/19, [0023]). Thus, a person skilled in the art could easily have conceived of making the ratio of the number of iron atoms to the number of oxygen atoms in each of the layer of iron oxide is equal to or greater than 4/3 and less than 3/2 by routine experimentation.
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Pertaining to an attenuation coefficient, since ‘415 in view of ‘471 teaches identical or substantially identical the thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. the attenuation coefficient, would expect to be the same as claimed (i.e., the attenuation coefficient of each of the layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers). If there is any difference between the product of ‘415 in view of ‘471 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975). It is known that for most of the 700–2000 nm range, the linear attenuation coefficient of an iron oxide layer is indeed greater than 0.1 cm⁻¹, with the highest values near 700 nm and a gradual decrease toward 2000 nm.
Regarding claim 2: The disclosure of ‘415 in view of ‘471 is adequately set forth in paragraph above and is incorporated herein by reference. ‘415 in view of ‘471 does not expressly teach the multilayer film includes plural layers of iron oxide and the maximum difference in attenuation coefficient between two layers of the plural layers of iron oxide is equal to or greater than 0.1 for light of wavelength of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers.
However, since ‘415 in view of ‘471 teaches identical or substantially identical the thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. the attenuation coefficient, would expect to be the same as claimed (i.e., the maximum difference in attenuation coefficient between two layers of the plural layers of iron oxide is equal to or greater than 0.1 for light of wavelength of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers). If there is any difference between the product of ‘415 in view of ‘471 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claim 5: ‘415 teaches a method of producing a thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5). ‘415 teaches that it is known a high refractive index film having a high absorption coefficient of visible light is formed to have a large film thickness in order to improve an antiglare level (Page 6/18, [0004]). Thus, one having ordinary skill in the art would consider the absorption characteristics of the multilayer film filter can be adjusted by using the total value of the oxygen concentration of the high-refractive-index layer and the thickness of the high-refractive-index layer. ‘415 does not expressly teach a ratio of the number of iron atoms to the number of oxygen atoms in each of the layer of iron oxide is equal to or greater than 4/3 and less than 3/2 and an attenuation coefficient of each of the layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers.
However, ‘471 teaches optical filter suitable for an image pickup apparatus capable of photographing in both a visible light band and an infrared band (Page 8/19, [0018]). ‘471 teaches the first filter and the second filter are formed on a surface of a single optical substrate in order to suppress an increase in aberration due to the overlap of the optical substrates (Page 8/19, [0015]). ‘471 teaches in the dielectric multilayer film, deviation from the stoichiometric composition usually occurs (i.e., effective variable, Page 9/19, [0023]). Thus, a person skilled in the art could easily have conceived of making the ratio of the number of iron atoms to the number of oxygen atoms in each of the layer of iron oxide is equal to or greater than 4/3 and less than 3/2 by routine experimentation.
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Pertaining to an attenuation coefficient, since ‘415 in view of ‘471 teaches identical or substantially identical method of producing the thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. the attenuation coefficient, would expect to be the same as claimed (i.e., the attenuation coefficient of each of the layer of iron oxide is equal to or greater than 0.1 for light of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers). If there is any difference between the product of ‘415 in view of ‘471 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975). It is known that for most of the 700–2000 nm range, the linear attenuation coefficient of an iron oxide layer is indeed greater than 0.1 cm⁻¹, with the highest values near 700 nm and a gradual decrease toward 2000 nm.
Regarding claim 6: The disclosure of ‘415 in view of ‘471 is adequately set forth in paragraph above and is incorporated herein by reference. ‘415 in view of ‘471 does not expressly teach the multilayer film includes plural layers of iron oxide and the maximum difference in attenuation coefficient between two layers of the plural layers of iron oxide is equal to or greater than 0.1 for light of wavelength of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers.
However, since ‘415 in view of ‘471 teaches identical or substantially identical method of producing the thin-film type filter for attenuating light (Page 6/18, [0004]) comprising a multilayer film (Page 8/18, [0017]) including a layer or layers of iron oxide Fe2O3 and a layer or layers of other material having refractive index lower such as SiO2 than refractive index of iron oxide, wherein the multilayer film comprises alternate the layers of iron oxide and of other material (Page 9/18, [0026]; Fig. 5) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. the attenuation coefficient, would expect to be the same as claimed (i.e., the maximum difference in attenuation coefficient between two layers of the plural layers of iron oxide is equal to or greater than 0.1 for light of wavelength of a certain wavelength in a wavelength from 700 nanometers to 2000 nanometers). If there is any difference between the product of ‘415 in view of ‘471 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claim 7: ‘514 teaches the method of producing a thin-film type filter for attenuating light, wherein the multilayer film is formed using a vacuum deposition method or a spattering method (Page 8/18, [0018]).
17. Claims 3-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Aono et al. (JP2017-188415 A, machine translation, hereinafter “’415”) in view of Minagawa et al. (JP2010-191471 A, machine translation, hereinafter “’471”) as applied to claim 1 above, and further in view of Uefuji et al.(WO2013/024531, machine translation, hereinafter “’531”).
Regarding claims 3-4: The disclosure of ‘415 in view of ‘471 is adequately set forth in paragraph 16 above and is incorporated herein by reference. ‘415 in view of ‘471 does not expressly teach a value of thickness of the layer of iron oxide or the sum of the values of thickness of the layers of iron oxide is less than 500 nanometers, and wherein the multilayer film is provided on a plastic substrate.
However, ‘531 teaches a thin film type light absorption film comprising a multilayer film formed on a plastic substrate (Page 6/12, [0028], Example 1), wherein the multilayer film includes an iron oxide layer made of ferric oxide and a dielectric layer made of a dielectric, and a thickness of the iron oxide layer is 50 nanometers or more, and the iron oxide layer and the dielectric layer form an antireflection layer (Page 4/12, [0009]-[0010]). ‘531 teaches when a layer composed of two or more iron trioxide is present, the optical path length of light passing through the layer made of ferric trioxide is increased by multiple reflection between layers, and the absorption amount of light is increased by the increased optical path length. Therefore, the absorption rate of light is improved as compared with the case of a layer made of a single iron trioxide having the same thickness as the sum of the thicknesses of the two or more layers made of ferric trioxide (Page 4/12, [0012]).
In an analogous art of the multi-film layer for attenuating light, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the thickness of the layer of iron oxide by ‘415, so as to include a value of thickness of the layer of iron oxide or the sum of the values of thickness of the layers of iron oxide is less than 500 nanometers, and wherein the multilayer film is provided on a plastic substrate as taught by ‘531, and would have been motivated to do so with reasonable expectation that this would result in providing to obtain a thin-film light-absorbing film which does not deteriorate light absorption characteristics even when used in a high-temperature environment or a high-humidity environment, and can be manufactured by a simple manufacturing process (Page 4/12, [0010]).
Examiner Information
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
07/17/2026
bijan.ahvazi@uspto.gov
Prosecution Insights