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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 17, 2026 has been entered.
Summary
The Applicant’s arguments and claim amendments received on August 17, 2026 are entered into the file. Currently, claim 1 is amended; claims 3, 10, and 11 are cancelled; claims 13 and 14 are withdrawn; resulting in claims 1, 2, 4-9, 12, and 15 pending for examination.
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.
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.
Claims 1, 2, 4-9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mokerji (US 6,090,490, previously cited) in view of Benz et al. (US 4,830,873, previously cited).
Regarding claims 1, 2, and 5-7, Mokerji teaches an article or substrate (18; plastic substrate) coated with a multi-layer coating comprising a polymeric or resinous layer or basecoat (20; base hardcoating), a titanium compound layer (21; single TiN layer), and a top coat (22) applied over the titanium compound layer (col 1, Ln 62-65; col 3, Ln 7-22; col 5, Ln 1-2; Fig. 1). As shown in Fig. 1, the basecoat (20) is located directly on the substrate (18), the titanium compound layer (21) is located directly on the basecoat, and the top coat (22) is located directly on the titanium compound layer.
Mokerji teaches that the substrate can be composed of a plastic material such as polycarbonates, nylons (polyamides), acrylonitrile-butadiene-styrene, polyesters, polyvinyl chlorides, or the like (col 1, Ln 53-58). The basecoat may be comprised of thermoplastic or thermoset polymeric or resinous materials such as polyacrylates (acrylic) (col 1, Ln 63-col 2, Ln 5). The titanium compound layer may consist of titanium nitride, which provides a decorative coating having a gold color (col 3, Ln 7-22; col 4, Ln 1-4). A strike layer (single intermediate layer) may be deposited between the titanium compound layer and the basecoat in order to improve the adhesion therebetween, wherein the strike layer may be comprised of titanium when the titanium compound layer is comprised of titanium nitride (col 4, Ln 15-30).
Mokerji teaches that the top coat applied over the titanium compound layer may be weather resistant, impact resistant, abrasion resistant, flexible, and transparent (col 5, Ln 1-4). Although Mokerji teaches that the top coat can be made of a silicone resin or organopolysiloxane, such as by a plasma enhanced chemical vapor deposition (PECVD) process using hexamethyl disiloxane as a siloxane monomer (col 7, Ln 11-15; col 8, Ln 46-50), the reference does not expressly teach that the top coat is a PECVD HMDSO + O2 etch layer or an SiO2 layer.
However, in the analogous art of coatings for plastic substrates, Benz et al. teaches a process for applying a thin, transparent layer onto the surface of plastic elements for protecting such elements against mechanical and chemical influences (Abstract). Similar to Mokerji, Benz et al. teaches that a protective layer formed by this process has good abrasion and scratch resistance and is formed by subjecting the substrate to a monomeric vapor of a silicon-organic substance, preferably hexamethyl disiloxane, wherein a layer hardening substance such as oxygen is added to the monomer stream during the layer growth such that the organic polymer layer assumes a more inorganic quartz like character (Abstract; col 3, Ln 12-30). Benz et al. teaches that the nature of the protective layer can be varied by the amount of hardness increasing substances (i.e., oxygen) added during the layer growth, wherein the polymer films that are formed without addition of oxygen are relatively soft and do not offer significant abrasion protection (col 2, Ln 5-11; col 3, Ln 33-45). Benz et al. further teaches that the process can be used to form protective layers, for example, on the surface of plastic elements and on aluminum vaporized reflectors (col 6, Ln 50-56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article taught by Mokerji by adding oxygen during the formation of the PECVD HMDSO top coat layer in order to form a PECVD HMDSO + O2 etch layer directly on the titanium compound layer, as suggested by Benz et al., in order to enhance the hardness and abrasion resistance of the protective top coat layer.
Mokerji in view of Benz et al. differs from the claimed invention in that the combination of references does not expressly teach that a protective hardcoating is located directly on the PECVD HMDSO + O2 etch layer. It would, however, have been obvious to one of ordinary skill in the art to form a second layer (protective hardcoating) of the PECVD HMDSO + O2 etch layer taught by Benz et al. thereon in order to further improve the abrasion resistance. It is well settled that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04(VI)(B). When the second PECVD HMDSO + O2 etch layer is formed over the first PECVD HMDSO + O2 etch layer, the first layer serves as an adhesion-promoting layer that enables direct adhesion of the second layer to the underlying single TiN layer, and the second layer is formed from an organo-silicon or a SiOxCyHz material.
Regarding claim 4, Mokerji in view of Benz et al. teaches all of the limitations of claim 3 above, and Mokerji further teaches that the basecoat (20) has a thickness effective to level out the surface of the substrate, in the range of from about 0.1 mil to about 10 mils, preferably from about 0.3 mil to about 1.5 mils (col 3, Ln 3-7). Mokerji therefore teaches that the basecoat has a thickness of about 7.6 microns to about 38.1 microns, which overlaps the claimed range of about 1 micron to about 15 microns. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 8, Mokerji in view of Benz et al. teaches all of the limitations of claim 1 above, and Mokerji further teaches that the strike layer has a thickness effective to improve the adhesion of the titanium compound layer to the basecoat, in the range of from about 30 Angstroms to about 1 micron, preferably from about 350 Angstroms to about 0.25 microns (col 4, Ln 33-38). Mokerji therefore teaches that the strike layer has a thickness of about 35 nm to about 250 nm, which overlaps the claimed range of about 20 to about 80 nm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 9, Mokerji in view of Benz et al. teaches all of the limitations of claim 1 above, and Mokerji further teaches that the titanium compound layer (21) has a thickness effective to provide abrasion and corrosion resistance to the underlying substrate and to provide a decorative coating of a gold color, wherein the thickness is at least about 300 Angstroms, wherein the upper limit is preferably about 0.5 microns but is not critical and is controlled by secondary considerations such as cost and the like (col 4, Ln 1-15). Mokerji therefore teaches that the titanium compound layer has a thickness of about 30 nm to about 500 nm, which overlaps the claimed range of about 15 to about 50 nm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 12, Mokerji in view of Benz et al. teaches all of the limitations of claim 1 above. It is noted that the limitation reciting “wherein the article is for automotive applications” is a functional limitation related to an intended use of the claimed article. The article taught by Mokerji in view of Benz et al. includes all of the structural features of the claimed invention and is capable of being used in the manner claimed, thus satisfying the claimed intended use limitation. It is further noted that Mokerji teaches that the article may be used as part of a vehicle, such as for example, a wheel cover (col 1, Ln 59-61).
Response to Arguments
Response-Claim Rejections - 35 USC § 102
In light of the amendments to claim 1 requiring that the protective hardcoating is formed from a material selected from the group consisting of an organo-silicon, an acrylic, a urethane, melamine, and a SiOxCyHz, the previous rejections under 35 U.S.C. 102 based on Kimock et al. are withdrawn.
Specifically, as explained in the previous rejections, Kimock et al. teaches an embodiment of a coated substrate product which comprises a polymeric parent substrate (1; plastic substrate), an adhesion mediating layer (2; base hardcoating), a first interlayer (3; single intermediate layer), a second interlayer (5; single TiN layer), a first interlayer (3; SiO2 layer), and a diamond-like carbon layer (4; protective hardcoating) in that order (Abstract; col 9, Ln 48-52; Fig. 3). The Applicant’s arguments, see pages 5-6 of the remarks filed August 17, 2026, directed to Fig. 3 of Kimock failing to teach the claimed layer arrangement are therefore not persuasive, as the reference teaches various alternative embodiments having similar but different layer configurations relative to that shown in Fig. 3 (see col 9, Ln 36-56 of Kimock).
However, it is noted that Kimock et al. does not teach the claimed combination of layer arrangement and coating materials, in particular, where the protective hardcoating is formed from the claimed materials and is located directly on the SiO2 or PECVD HMDSO + O2 etch layer. Rather, the diamond-like carbon layer (4) arranged on the first interlayer (3; SiO2 layer) which is arranged directly on the second interlayer (5; single TiN layer) cannot correspond to the claimed protective hardcoating in that it is not formed from a material selected from the group consisting of organo-silicon, acrylic, urethane, melamine, or SiOxCyHz. Furthermore, the prior art does not provide any motivation for one of ordinary skill in the art to modify the coated substrate product of Kimock et al. by replacing the diamond-like carbon layer(s) with a protective hardcoating as claimed. For these reasons, the previous rejections based on Kimock et al. are withdrawn in light of the amendment to claim 1.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see page 6 of the remarks filed August 17, 2026, with respect to the previous rejections based on Mokerji et al. in view of Benz have been fully considered but they are not persuasive. The Applicant argues that claim 1 does not require two identical layers but requires one specific adhesion-promoting layer (SiO2 or PECVD HMDSO + O2 etch) between TiN and a protective hardcoating for the specific functional purpose of enabling adhesion. The Applicant argues that this is not a mere duplication of parts because each of the layers has a distinct functional role.
This argument is not persuasive. As explained in the prior art rejections above, Mokerji et al. teaches a PECVD HMDSO top coat which is weather resistant, impact resistant, abrasion resistant, flexible, and transparent, and Benz renders obvious the use of oxygen during formation of an abrasion resistant PECVD HMDSO protective layer for the purpose of increasing the hardness an abrasion resistance of the protective layer. Although the combination of references does not expressly teach forming an additional protective hardcoating over the PECVD HMDSO + O2 etch layer, it would have been obvious to one of ordinary skill in the art to provide a second PECVD HMDSO + O2 etch layer over the first layer in order to further enhance the abrasion resistance of the protective layer. Such duplication of parts is held to be obvious absent evidence of unexpected results. See MPEP 2144.04(VI)(B). When the second PECVD HMDSO + O2 etch layer is formed over the first PECVD HMDSO + O2 etch layer, the first layer serves as an adhesion-promoting layer that enables direct adhesion of the second layer to the underlying single TiN layer. Therefore, the claimed function of the PECVD HMDSO + O2 etch layer is satisfied by the structure that results from the proposed modification.
Nevertheless, it is noted that the limitation reciting “is an adhesion-promoting layer configured to enable direct adhesion of the protective hardcoating to the single TiN layer” is considered functional language related to the intended use of the claimed layer and is accorded limited weight as the language does not specifically limit the structure of the product. Any layer arranged between the protective hardcoating and the single TiN layer that does not have anti-adhesive properties is considered to be capable of enabling adhesion between the adjacent layers, thus satisfying the claimed functional language. Given that a first sub-layer of PECVD HMDSO + O2 would have cohesive properties relative to an adjacent second sub-layer of PECVD HMDSO + O2, the first sub-layer would have adhesion-promoting properties between the TiN layer and the second sub-layer.
Allowable Subject Matter
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or render obvious the claimed invention of the instant application.
Independent claim 1 in combination with dependent claim 15 recites an article having a decorative coating, comprising: (i) a plastic substrate having a front surface; (ii) an optional base hardcoating located directly on the front surface; (iii) a single intermediate layer located directly on the base hardcoating or directly on the front surface of the plastic substrate; (iv) a single TiN layer located directly on the single intermediate layer; (v) an SiO2 layer or PECVD HMDSO + O2 etch layer located directly on the single TiN layer; and (vi) a protective hardcoating located directly on the SiO2 or PECVD HMDSO + O2 etch layer. The base hardcoating is formed from one or more abrasion resistant layers formed from a material selected from the group consisting of an organo-silicon, an acrylic, a urethane, melamine, and a SiOxCyHz, and the protective hardcoating is also formed from a material selected from the group consisting of an organo-silicon, an acrylic, a urethane, melamine, and a SiOxCyHz. The SiO2 layer or PECVD HMSO + O2 etch layer is an adhesion-promoting layer configured to enable direct adhesion of the protective hardcoating to the single TiN layer. The single intermediate layer is a layer selected from the group consisting of chromium, aluminum, nickel, molybdenum, zirconium, tungsten, silicon, niobium, tantalum, vanadium, cobalt, manganese, silver, zinc, and mixtures thereof; and an oxide, nitride, boride, or carbide thereof, alloys thereof and mixtures thereof.
The closest prior art is made of record. The prior art does not teach an article as claimed in which an optional base hardcoating, a single intermediate layer, a single TiN layer, an SiO2 or PECVD HMDSO + O2 layer, and a protective hardcoating layer formed of the claimed materials are provided on a plastic substrate in the layer arrangement specified by the claim. Although the prior art teaches similar configurations of various decorative coating structures, the prior art does not teach or render obvious the claimed combination of the coating layers made of the specified materials arranged directly on one another in the specified layer arrangement.
For example, Mokerji (US 6,090,490) teaches an article or substrate (18; plastic substrate) coated with a multi-layer coating comprising a polymeric or resinous layer or basecoat (20; base hardcoating), a titanium compound layer (21; single TiN layer), and a top coat (22) applied over the titanium compound layer (col 1, Ln 62-65; col 3, Ln 7-22; col 5, Ln 1-2; Fig. 1). As shown in Fig. 1, the basecoat (20) is located directly on the substrate (18), the titanium compound layer (21) is located directly on the basecoat, and the top coat (22) is located directly on the titanium compound layer.
Mokerji teaches that the substrate can be composed of a plastic material such as polycarbonates, nylons, acrylonitrile-butadiene-styrene, polyesters, polyvinyl chlorides, or the like (col 1, Ln 53-58). The basecoat may be comprised of thermoplastic or thermoset polymeric or resinous materials such as polyacrylates (acrylic) (col 1, Ln 63-col 2, Ln 5). The titanium compound layer may consist of titanium nitride, which provides a decorative coating having a gold color (col 3, Ln 7-22; col 4, Ln 1-4).
A strike layer (single intermediate layer) may be deposited between the titanium compound layer and the basecoat in order to improve the adhesion therebetween, wherein the strike layer may be comprised of titanium when the titanium compound layer is comprised of titanium nitride (col 4, Ln 15-30). Mokerji therefore differs from the claimed invention in that the reference does not expressly teach or reasonably suggest that the single intermediate layer is a layer selected from the materials recited in claim 15. Rather, Mokerji specifically teaches that the strike layer is comprised of the same non-precious refractory metal as the non-precious refractory metal compound layer (21) in order to improve the adhesion of the metal compound layer (21) to the polymeric layer (20) (col 4, Ln 15-32), thus teaching away from the strike layer being formed of any material other than titanium.
Mokerji further differs from the claimed invention in that the reference teaches that the top coat can be made of a silicone resin or organopolysiloxane, such as by a plasma enhanced chemical vapor deposition (PECVD) process using hexamethyl disiloxane as a siloxane monomer (col 7, Ln 11-15; col 8, Ln 46-50), but does not expressly teach that the top coat is a PECVD HMDSO + O2 etch layer or an SiO2 layer.
Benz et al. (US 4,830,873) was previously relied upon to render obvious the formation of a PECVD HMDSO + O2 etch layer directly on the single TiN layer, and the cited prior art renders obvious the addition of a second PECVD HMDSO + O2 etch layer as a protective hardcoating (formed from organo-silicon or SiOxCyHz) located directly over the first PECVD HMDSO + O2 etch layer. However, Benz et al. does not remedy the above deficiency of Mokerji failing to teach the material of the single intermediate layer as recited in claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/REBECCA L GRUSBY/Primary Examiner, Art Unit 1785
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