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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 23, 2026 has been entered.
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 Currently, claim 1 is amended; claims 10 and 11 are cancelled; claims 13 and 14 are withdrawn; resulting in claims 1-9, 12, and 15 pending for examination.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 Objections
Claims 3 and 9 are objected to because of the following informalities:
Regarding claim 3, in the claim set filed 03/23/2026, claim 3 is shown with an underline indicating an amendment to add a period at the end of the claim. However, this amendment was already made in the previous claim set filed 10/08/2025. The claim status “(Previously Presented)” shown next to claim 3 is correct, and the claim is interpreted as not being currently amended.
Regarding claim 9, it is suggested to amend the limitation reciting “the TiN layer” to --the single TiN layer-- in order to clearly refer back to the previously-recited single TiN layer set forth in claim 1.
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 1-9, 12, and 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the limitation reciting “a single intermediate layer directly located on the base hardcoating or on the front surface of the plastic substrate” is indefinite because it is not clear whether the claim is intended to require that the single intermediate layer is located directly on the base hardcoating or directly on the front surface of the plastic substrate, or if in the instance where the base hardcoating is not provided, the single intermediate layer must only be located “on” the plastic substrate rather than “directly on” the plastic substrate (i.e., such that there may be interposed layers between the single intermediate layer and the plastic substrate). The current language of the claim utilizing the phrase “directly located on” is unclear and causes confusion as to what layers are required to be located directly on one another.
In order to overcome this rejection, it is suggested to amend the limitation to replace the five instances of the phrase “directly located on” in lines 4, 5, 6, 7, and 8 of claim 1 to --located directly on--. For the purpose of examination, the limitation in lines 4-5 reciting “a single intermediate layer directly located on the base hardcoating or on the front surface of the plastic substrate” is interpreted to mean --a single intermediate layer located directly on the base hardcoating or directly on the front surface of the plastic substrate--. Clarification from the Applicant is respectfully requested.
Regarding claim 2, the limitation reciting “wherein the plastic substrate is formed from a material selected from the group consisting of … polymethylmethacrylate and polystyrene polycarbonate, and blends thereof” is indefinite because it is not clear what is meant by the phrase “polymethylmethacrylate and polystyrene polycarbonate”.
It is not clear whether this phrase is intended to refer to a blend of polymethylmethacrylate, polystyrene, and polycarbonate, if it is intended to set forth polymethylmethacrylate, polystyrene, and polycarbonate as separate members of the Markush group, or if it is meant to set forth polymethylmethacrylate and polystyrene-polycarbonate as separate members. It is noted, however, that the Markush group already separately lists polystyrene and polycarbonate in lines 2 and 3 of the claim, but that the term “polystyrene polycarbonate” does not appear to be a term of the art.
In looking to paragraph [0023] of the as-filed specification, the substrate is said to be formed from any suitable plastic material, wherein examples include: acrylonitrile ethylene styrene (AES), acrylonitrile butadiene styrene (ABS), acrylonitrile styrene acrylate (ASA), polyamide (PA), polybutylene terephthalate (PBT), polycarbonate (PC), polyethylene (PE), polyethylene terephthalate (PET), poly(methyl methacrylate) (PMMA), Polyoxymethylene (POM), Polypropylene (PP), Polyurethane (PU), polyvinylchloride (PVC), high-flow AES, acrylonitrile-(ethylene-propylene-diene)-styrene (AEPDS), blends of thermoplastics, or PC-ABS blended thermoplastic. Based on this disclosure, it appears as if the term “polystyrene polycarbonate” is a broader recitation of the disclosed PC-ABS thermoplastic, which is understood to be a blend of polycarbonate and acrylonitrile-butadiene-styrene. PC-ABS, however, is already encompassed by the members of the Markush group listing polycarbonate, acrylonitrile-butadiene-styrene, and blends thereof. Therefore, it remains unclear what is meant by the term “polystyrene polycarbonate” set forth in claim 2.
For the purpose of examination, the aforementioned limitation will be interpreted as setting forth “polymethyl methacrylate” and “polystyrene polycarbonate” as separate members of the Markush group, however, it is not clear what materials are encompassed by the claimed “polystyrene polycarbonate”. Clarification from the Applicant is respectfully requested.
Regarding claims 3-9, 12, and 15, the claims are rejected based on their dependency on claim 1.
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, 5-9, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schettler et al. (US 2007/0202344, previously cited) in view of Hall et al. (US 2017/0015802, previously cited).
Regarding claim 1, Schettler et al. teaches a multilayer structure suitable for anti-scratch sealing and decorative material finishing of polymer surfaces [0001]. The layer structure of the article comprises a polymer substrate (0; plastic substrate), an intermediate layer (Ia), a backing layer (I), an intermediate layer (IIa), a hard material multilayer composite (II), an optional intermediate layer (IIIa), an optional color-providing cover layer (III), and a transparent functional layer (IIIb) ([0032], [0049], [0075], [0079]).
Schettler et al. teaches that the hard material layer (II) functions as a protective layer to prevent mechanical wear, as well as to fixate a color characteristic for the surface, wherein the hard material layer comprises a plurality of individual layers produced on the basis of a combination of: a) a metal and b) a hard material compound ([0053], [0056]). The hard material layer (II) has a symmetrical structure in which the metal layer (single intermediate layer) is located at the center, while layers of the hard material compound are deposited on either side of the center layer [0063]. Schettler et al. teaches that the hard material compound may be composed of titanium nitride (TiN) ([0058], [0109]), such that the TiN layers in the hard material layer (II) located directly above the central metal layer correspond to the claimed single TiN layer located directly on the single intermediate layer. One or more of the TiN layers in the hard material layer (II) located directly below the central metal layer can be taken to correspond to the claimed base hardcoating which is located over the front surface of the polymer substrate.
Although Schettler et al. teaches that an optional transparent functional layer (IIIb) can be applied as the final layer over (i.e., directly on) the TiN layer, where coating systems such as PE-CVD coatings can be applied to improve the surface use characteristics (e.g., resistance to fingerprints, hydrophilic or hydrophobic properties, etc.) ([0093]-[0097]), the reference does not expressly teach that the transparent functional layer is an SiO2 layer or PECVD HMDSO + O2 etch layer or that a protective hardcoating is located directly on the SiO2 or PECVD HMDSO + O2 etch layer.
However, in the analogous art of decorative coatings for plastic substrates, Hall et al. teaches a plastic substrate coated with a decorative coating comprising a spectrally controlling system, a stress controlling system, and optionally a protective layer ([0012], Figs. 1-3). Similar to Schettler et al., Hall et al. teaches that the decorative coating is selected to provide the coated substrate with a desired optical effect, wherein the spectrally controlling system includes alternating layers of absorbing layers and transparent layers each selected from metals, metalloids, and metal alloys, and oxides, nitrides, or carbides thereof ([0002], [0015], [0028]-[0030]). Hall et al. teaches that the protective layer is applied on top of the spectrally controlling system to provide enhanced abrasion resistance, fingerprint resistance, and ‘easy clean’ functionality, wherein suitable materials for such a protective layer include plasma polymerized hexamethyldisiloxane (HMDSO) [0025]. Hall et al. teaches that the protective layer may also include a hardcoating, which is a coating that is harder and stiffer than the substrate, whereby it increases the abrasion resistance and reduces damage due to impacts and scratching ([0052], [0061]).
Given that Schettler et al. teaches an SiOx layer (where x ranges from 1.4 to 2) formed by plasma polymerization of HMDSO and O2, where varying the percentage of oxygen is increased in order to increase the layer hardness and to adapt the properties to ensure good adherence with the hard material layer ([0044]), 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 multilayer structure taught by Schettler et al. by forming an SiO2 layer or a PECVD HMDSO + O2 etch layer as the functional layer formed directly on the single TiN layer of the hard material layer and by forming a protective hardcoating directly on the SiO2 layer or PECVD HMDSO + O2 layer, as suggested by Hall et al. and Schettler et al., in order to improve the abrasion resistance, fingerprint resistance, and ‘easy clean’ functionality of the multilayer structure.
Regarding claim 2, Schettler et al. in view of Hall et al. teaches all of the limitations of claim 1 above, and Schettler et al. further teaches that the polymer substrate (0; plastic substrate) can be made of plastic materials such as polycarbonate, polyamide, polyolefin, polyester, or the like ([0034], Table 1).
Regarding claims 5-7 and 15, Schettler et al. in view of Hall et al. teaches all of the limitations of claim 1 above, and Schettler et al. further teaches that the central metal layer (single intermediate layer) in the hard material layer may be selected from cobalt (Co), titanium (Ti), hafnium (Hf), vanadium (V), niobium (Nb), tantalum (Ta), chromium (Cr), molybdenum (M), tungsten (W), zirconium (Zr), lanthanum (La), or thorium (Th), or mixtures and/or alloys thereof ([0055], Table 1).
Regarding claim 8, Schettler et al. in view of Hall et al. teaches all of the limitations of claim 1 above, and Schettler et al. further teaches that the central metal layer (single intermediate layer) in the hard material layer has a thickness ranging from 50 to 150 nm, preferably from 70 to 100 nm, or approximately 90 nm ([0064]), which overlaps the claimed range of about 20 nm 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, Schettler et al. in view of Hall et al. teaches all of the limitations of claim 1 above, and Schettler et al. further teaches that the thickness of the individual hard material layers (e.g., TiN sub-layers) within the multilayer structure of the hard material multilayer composite (II) are each in the range of 8 to 25 nm, wherein the number of TiN sub-layers on each side of the central metal layer can range from 1 to 10 ([0063]-[0064], [0111], Table 1). Therefore, the total thickness of the single TiN layer located directly on the central metal layer can range from about 8 nm (i.e., one sub-layer x 8 nm) to about 250 nm (i.e., 10 sub-layers x 25 nm), which overlaps the claimed range of about 15 nm 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, Schettler et al. in view of Hall 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 Schettler et al. in view of Hall 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 Schettler et al. teaches that the multilayer structure can be used to deposit coatings onto substrates for decorative parts, operating elements and coverings in the automotive sector, and the like [0130].
Claims 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mokerji (US 6,090,490, newly cited) in view of Benz et al. (US 4,830,873, newly cited).
Regarding claims 1-3 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 an additional 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).
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 § 103
Applicant's arguments, see page 5 of the remarks filed March 23, 2026, have been fully considered but they are not persuasive. In light of the Applicant’s amendments to claim 1, the previous rejections based on Schettler et al. in view of Hall et al. have been modified to address the new limitations directed to various layers being located “directly” on one another, and new rejections based on Mokerji in view of Benz et al. are presented above. The Applicant’s arguments directed to Schettler et al. in view of Hall et al. will be addressed insofar as they apply to the rejections as modified above.
The Applicant argues on page 5 of the remarks that the amendment to independent claim 1 specifying that the article has a decorative coating including a single intermediate layer directly located on the base hardcoating or on the front surface of the plastic substrate, a single TiN layer directly located on the base hardcoating or on the front surface of the plastic substrate, and an SiO2 layer or PECVD HMDSO + O2 etch layer directly located on the single TiN layer distinguishes from the cited references.
This argument is not persuasive. As explained in the prior art rejections above, the hard material multilayer composite (II) taught by Schettler et al. contains layers which satisfy the new limitations directed to the claimed base hardcoating, single intermediate layer, and single TiN layer being located directly on one another.
Conclusion
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/Rebecca L Grusby/Examiner, Art Unit 1785