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 .
Summary
The Applicant’s arguments and claim amendments received on March 23, 2026 are entered into the file. Currently, claim 1 is amended; claims 10 and 11 are cancelled; claims 13 and 14 are withdrawn; resulting in claims 1-9, 12, and 15 pending for examination.
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.
Claims 1, 2, 4, 5, 12, and 15 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Kimock et al. (US 5,190,807, newly cited).
Regarding claims 1, 5, and 15, Kimock et al. teaches a coated substrate product with an abrasion-resistant diamond-like hard coating with the ability to reflect decorative colors, wherein an embodiment of the coated substrate product 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 3, Ln 56-59; col 9, Ln 48-52; Fig. 3).
Kimock et al. teaches that the adhesion mediating layer (2) is preferably a polysiloxane polymer (organo-silicon), while the first interlayer (3) preferably comprises silicon dioxide due to its ability to form a strong chemical bond with the polysiloxane of the adhesion mediating layer and with the diamond-like carbon layer (col 5, Ln 1-61; col 6, Ln 61-68). The second interlayer (5) may be a substantially optically transparent layer of titanium nitride (col 8, Ln 14-28). The layer structure of the coated substrate product taught by Kimock et al. includes a plastic substrate, a base hardcoating formed from an abrasion resistant layer of organo-silicon, a single intermediate layer of silicon oxide, a single TiN layer, an SiO2 layer, and a protective hardcoating each located directed on one another, thus satisfying the claimed layer configuration. As noted above, Kimock et al. teaches that the first interlayer (3; SiO2 layer) comprises silicon dioxide due to its ability to form a strong chemical bond with the diamond-like carbon layer, such that the SiO2 layer is an adhesion-promoting layer capable of enabling direct adhesion of the diamond-like carbon protective hardcoating layer to the second interlayer made of TiN.
Regarding claim 2, Kimock et al. teaches all of the limitations of claim 1 above and further teaches that the polymeric substrate can be made of polycarbonate (col 1, Ln 15-25).
Regarding claim 4, Kimock et al. teaches all of the limitations of claim 1 above and further teaches that the adhesion-mediating polysiloxane layer (2) has a thickness of from 1 to 20 microns (col 5, Ln 62-65), thus anticipating the claimed range of about 1 micron to about 15 microns.
Regarding claim 12, Kimock 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 Kimock 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 Kimock et al. teaches that the coated substrate product may be useful for commercial plastic articles such as optical lenses made of polycarbonate (Abstract), such that the product is capable of being used in automotive applications (e.g., as a vehicle headlight or taillight cover).
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 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kimock et al. (US 4,830,873, previously cited) as applied to claim 1 above.
Regarding claim 8, Kimock et al. teaches all of the limitations of claim 1 above and further teaches that the first interlayer (3; single intermediate layer) has a thickness of from 5 Å to 10,000 Å, preferably at least 200 Å (col 6, Ln 40-41; col 7, Ln 1-21), equivalent to 20 nm to 1,000 nm, which overlaps the claimed range. 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, Kimock et al. teaches all of the limitations of claim 1 above and further teaches that the second interlayer (5; single TiN layer) has a thickness of from 5 Å to 10,000 Å (col 8, Ln 18-20), equivalent to 0.5 nm to 1,000 nm, which overlaps the claimed range. 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).
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.
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 Objections
The previous objections to claims 3 and 9 are overcome by the Applicant’s cancellation of claim 3 and by the amendments to claim 9 in the response filed June 4, 2026.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 1-9, 12, and 15 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are overcome by the Applicant’s amendments to claims 1 and 2 in the response filed June 4, 2026.
Response-Claim Rejections - 35 USC § 103
Applicant’s arguments, see pages 5-6 of the remarks filed June 4, 2026, with respect to Schettler et al. in view of Hall et al. have been fully considered and are persuasive. In particular, the combination of references does not teach the limitations of previous dependent claim 3, now incorporated into claim 1, in combination with the remaining limitations of the claim. The previous rejections based on Schettler et al. in view of Hall et al. have therefore been withdrawn.
Applicant's arguments, see page 6 of the remarks filed June 4, 2026, with respect to Mokerji in view of Benz et al. have been fully considered but they are not persuasive. In particular, the Applicant argues that the prior art uses the etched HMDSO layer only to increase hardness and scratch resistance, such that there is no motivation for the skilled person to combine the cited prior art for achieving the desired adhesion promotion function as required by claim 1.
This argument is not persuasive. The newly added limitation in claim 1 requiring that “the SiO2 layer of PECVD HMDSO + O2 etch layer is an adhesion-promoting layer configured to enable direct adhesion of the protective hardcoating to the single TiN layer” is directed to the properties and/or intended function of the claimed SiO2 layer or the PECVD HMDSO + O2 etch layer. As explained in the prior art rejections above, when two PECVD HMDSO + O2 etch layers are formed on the single TiN layer, as suggested by Mokerji in view of Benz et al., the first layer is considered to function as an adhesion-promoting layer which is inherently capable of enabling direct adhesion of the second layer to the single TiN layer, thus satisfying the claimed functional limitation. In response to applicant's argument that the prior art does not provide a motivation for achieving the desired adhesion promotion function, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP 2145(II).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Examiner, Art Unit 1785
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