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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-6 and 8-12 in the reply filed on 9 December 2024 is acknowledged.
Claims 7 and 13-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 December 2024.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 9-11 is 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.
Claim 9 recites the limitation “comprising alternating layers of aluminium(III) oxide (A1203) and titanium(IV) oxide (TiO2).” The limitation is indefinite as ambiguous, because it is not clear whether it means that each layer of alternating layers comprises both alumina and titania or whether it means that a layer comprising titania alternates with a layer comprising alumina. Examiner also notes that the interpretation, “a layer comprising titania alternates with a layer comprising alumina” does not exclude layers comprising both titania and alumina. Examiner considers the limitation to include either interpretation.
Claim 10 recites the limitation “within a range of about 20 nm to about 300 nm, preferably, within a range of about 50 nm to about 150 nm.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “within a range of about 20 nm to about 300 nm,” and the claim also recites “preferably, within a range of about 50 nm to about 150 nm,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers Claim 10 to require only the broader statement.
Claim 11 recites the limitation “essentially transparent.” The limitation is indefinite, because claims do not define and the specification does not provide adequate guidance as to how to distinguish between “transparent” and “essentially transparent.” Examiner interprets the limitation to be a synonym of “see-through,” which follows the limitation. Examiner also interprets the term “see-through” to include “translucent,” since light can be seen through a translucent material.
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.
Claim(s) 1-6,8-9, and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al. (KR 20230147271A).
Regarding Claim 1, Examiner interprets the preamble, “A coating film deposited by a process of Atomic Layer Deposition (ALD) on at least one surface of a substrate configured to contain (i.e. capable of containing) a light-sensitive substance,” to require both a film and a substrate on which the film is deposited, not the film alone. Additionally, the phrase “by a process of Atomic Layer Deposition (ALD)” is not given significant patentable weight for the claimed product.
Song et al. (KR’271) teach a coating film deposited on at least one surface of a substrate configured to contain (i.e. capable of containing) a light-sensitive substance, the coating film comprising one or more layers configured to absorb and/or reflect one or more wavelengths of light incident on the coated surface (Fig. 5; [0026,0040,0050]), thereby preventing said wavelength(s) of light from deteriorating light-sensitive contents of the substrate, wherein the coating film has a thickness determined based on a refractive index of a material said layer or layers is/are composed of, at a predetermined wavelength of incident light [0040]. The substrate is light sensitive, since light is harmful to the substrate [0020,0052,0058]. Notwithstanding the lack of patentable weight of the limitation “by a process of Atomic Layer Deposition (ALD),” KR’271 teaches this process for depositing the film [0019].
Regarding Claim 2, KR’271 teaches the coating film configured as a laminate structure and comprising one or more layers composed of a first material and one or more layers composed of a second material, wherein the first material differs from the second material at least in terms of its refractive index at a predetermined wavelength of incident light [0007].
Regarding Claim 3, KR’271 teaches that the layers composed of the first material alternate with the layers composed of the second material [0007].
Regarding Claim 4, KR’271 teaches that each layer in the laminate structure has a determined thickness based on a refractive index of a material said layer is composed of, at a predetermined wavelength of incident light [0040,0043].
Regarding Claim 5, KR’271 teaches that the coating film is configured to absorb (i.e. capable of absorbing) and/or to reflect light at a UV wavelength ranging from about 100 nm to about 400 nm.
Regarding Claim 6, KR’271 teaches that the coating film is configured to absorb and/or to reflect (i.e. capable of absorbing or reflecting, “or” being the broadest reasonable interpretation of “and/or”) light at a UV wavelength selected from any one of: a UVA wavelength ranging from about 315 nm to about 400 nm, a UVB wavelength ranging from about 280 nm to about 315 nm, and UVC wavelength ranging from about 100 nm to about 280 nm (Fig. 5).
Regarding Claim 8, KR’271 teaches that the coating film comprises one or more layers composed of (interpreted as “comprising) any one of: aluminium(III) oxide (A1203), titanium(IV) oxide (TiO2), hafnium(IV) oxide (HfO2), zirconium(IV) oxide (ZrO2), zinc oxide (ZnO), tantalum(V) oxide (Ta205), silicon dioxide (SiO2), and combinations thereof [0009-0010]. The compound names in KR’271 correspond to the recited compounds by default as conventional common names for the recited compounds. See, also [0034,0045] of original publication.
Regarding Claim 9, KR’271 teaches that the coating film comprises alternating layers of aluminium(III) oxide (Al203) and titanium(IV) oxide (TiO2) [0034,0051].
Regarding Claim 11, KR’271 teaches a coating film configured to provide (i.e. capable of providing) see-through visibility with a human eye, when deposited on essentially transparent (read “translucent or transparent”), see-through (read “translucent or transparent”) surfaces [0020].
Regarding Claim 12, KR’271 teaches the coating film deposited on at least one surface of the substrate configured as a receptacle- and/or packaging item (e.g. vehicles, electronic devices, buildings, airplanes, ships,fibers, fabrics) [0003,0020,0035-0036].
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR 20230147271A).
Regarding Claim 10, KR’271 teaches a thickness within a range of 5-100 nm for each film, or 10-200 nm for a composite coating film, including a first and second film, and each range substantially and obviously overlaps the recited range. Moreover, KR’272 provides evidence that thickness is result-effective, known in the prior art to affect a film’s ability to block light [0040]. Thus, it would have been obvious to a person to modify the coating film of KR’271 to within the recited thickness through routine optimization.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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