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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/23/2026, 07/21/2025, 10/28/2025, 04/13/2026 and 09/04/2026 has been considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4, 6, 9-13, 17 and 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-12 and 15, and 15 of U.S. Patent No. 11,360,242. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of independent claims 1 and 8 from the instant invention are to be found claims 1 and 5-7 of U.S. Patent No. 11,360,242, except for minor difference(s), for example “a protectant coating” and “a fluorinated alkyl ether polymer having a functionalized silane” as shown in the table below.
It is clear that all the elements of the instant application as claimed are to be found in patent claim(s) (as the patent claim(s) fully encompasses the application claim(s)). The difference between the application claim(s) and the patent claim(s) lies in the fact that the patent claim includes more elements and is thus much more specific.
Thus the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the instant application are anticipated by the claims of the patent 11,022,726, thereby the instant invention is not patentably distinct, where both inventions are directed to: “an optical device including a substrate and a coating applied to the substrate, wherein the optical device has a first side exposed to an environment and a second side that is unexposed.”.
Table shows the list of conflicting claims:
Claims from the instant application 19000123
Claims from application 16261189 now patent 11,360,242
Claim 1.
Claims 1 + 5 + 6.
Claim 2.
Claims 8 + 9.
Claim 4.
Claims 11 + 12.
Claim 6.
Claim 9.
Claim 9.
Claim 2.
Claim 10.
Claim 4.
Claim 12.
Claim 8.
Claim 13.
Claim 10.
Claim 17.
Claim 13.
Claim 19.
Claim 15.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Butterfield et al. (US PUB 4747674; herein after “Butterfield”) in view of Inui et al. (US PUB 20160152002; herein after “Inui”).
Butterfield and Inui disclose an optical component/device/article etc.. Therefore, they are analogous art.
Regarding claim 1, Butterfield teaches an optical device (an optical component/device/article 10, FIG. 1, column 7, lines 29-31), comprising: a substrate (a transparent support material 12 e.g., substrate); an anti-reflective coating (a layer of antireflection material 16) on a first side of the substrate (as shown in FIG. 1); a protectant coating (a protective layer, column 6, lines 46-48) on the anti-reflective coating; an electrical conducting coating (ITO 14) on a second side of the substrate (column 3, lines 30-32, FIG. 1, and column 10, lines 27-30); and a glare reducing coating on the electrical conducting coating (i.e., the article, substantially reduces specular glare, column 4, lines 58-65 and column 10, lines 63-68); wherein the first side (top surface of the article 10, FIG. 1) is exposed to an environment and the second side (bottom surface of the article 10, FIG. 2) is not exposed to the environment (as shown in FIGS. 1 and 2).
Butterfield teaches all limitations except for explicit teaching of an electrical conducting coating on a second side of the substrate.
However, in a related field of endeavor Inui teaches FIGS. 1 to 4 are cross-sectional views each showing an embodiment of the transparent conductive laminated film of the present invention. FIG. 1 shows a transparent conductive laminated film A including a first transparent film substrate 11, a first transparent conductive layer 21 provided on one surface of the first film substrate 11, a transparent cured adhesive layer 3 provided on the other surface of the first film substrate 11, and a second transparent film substrate 12 provided on the surface of the transparent cured adhesive layer 3 opposite to the first film substrate 11. In FIG. 2, a second transparent conductive layer 22 is further provided on the second film substrate 12 shown in FIG. 1. FIG. 3 shows a case where another transparent cured adhesive layer 3 and a third transparent film substrate 13 are further provided in this order on the second film substrate 12 of the transparent conductive laminated film A shown in FIG. 1. In FIG. 4, a second transparent conductive layer 22 is further provided on the third film substrate 13 shown in FIG. 3, para. [0049].
Therefore, 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 device of Butterfield such that a second transparent conductive layer is further provided on the second side of the second film substrate as taught by Inui, so that a higher level of active energy ray transmittance can be achieved while reducing glare and antireflection function.
Regarding claim 2, Butterfield fails to teach a bandpass filter on the second side of the substrate.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays as taught by Inui, so that a desired ray transmittance can be achieved.
Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art In re Japikse, 86 USPQ 70.
Regarding claim 3, Butterfield fails to teach the bandpass filter is capable of blocking wavelengths from about 400 to about 850 nm.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm as taught by Inui, so that a desired ray transmittance can be achieved.
Regarding claim 4, Butterfield teaches the anti-reflective coating is a dielectric stack of alternating layers of metal oxides (column 4, lines 1-5).
Regarding claim 5, Butterfield teaches the protectant coating includes a fluorinated alkyl ether polymer (e.g., fluorinated polymers, column 6, lines 46-53).
Butterfield fails to teach a functionalized silane.
However, in a related field of endeavor Inui teaches the compound having an alkoxyl group in the molecule may be any known compound having at least one alkoxyl group per molecule. Such a compound is typically a melamine compound, an amino resin, a silane coupling agent, or the like. It should be noted that the alkoxyl group-containing compound and polymer, para. [0108].
Therefore, 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 device of Butterfield such that a silane coupling agent as a functionalized silane as taught by Inui, so that a silane coupling agents can impart higher adhesion by acting on the surface of the film substrate such as the first or second film substrate.
Regarding claim 6, Butterfield fails to teach a bandpass filter on the first side of the substrate.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays as taught by Inui, so that a desired ray transmittance can be achieved.
Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art In re Japikse, 86 USPQ 70.
Regarding claim 7, Butterfield teaches the electrical conducting coating is a heating element (i.e., the microstructure and integrity of an optical thin film coating is oftentimes enhanced by application of the film onto a heated substrate (e.g., a heating element) or by annealing the coated article, column 1, lines 47-50).
Regarding claim 8, Butterfield teaches an optical device (an optical component/device/article 10, FIG. 1, column 7, lines 29-31), comprising: a substrate (12); an anti-reflective coating (16) on a first side of the substrate, wherein the anti-reflective coating is a dielectric stack of alternating layers of metal oxides (column 4, lines 1-5); a protectant coating (a protective layer, column 6, lines 46-48) on the anti-reflective coating and including a fluorinated alkyl ether polymer (e.g., fluorinated polymers, column 6, lines 46-53); an electrical conducting coating (ITO 14) on a second side of the substrate (column 2, lines 48-55 and as set forth in claim 1 above); and a glare reducing coating on the electrical conducting coating (i.e., the article, substantially reduces specular glare, column 4, lines 58-65 and column 10, lines 63-68); wherein the first side (top surface of the article 10, FIG. 1); wherein the first side (top surface of the article 10, FIG. 1) is exposed to an environment and the second side (bottom surface of the article 10, FIG. 2) is not exposed to the environment (as shown in FIGS. 1 and 2).
Butterfield teaches all limitations except for explicit teaching of an electrical conducting coating on a second side of the substrate.
However, in a related field of endeavor Inui teaches FIGS. 1 to 4 are cross-sectional views each showing an embodiment of the transparent conductive laminated film of the present invention. FIG. 1 shows a transparent conductive laminated film A including a first transparent film substrate 11, a first transparent conductive layer 21 provided on one surface of the first film substrate 11, a transparent cured adhesive layer 3 provided on the other surface of the first film substrate 11, and a second transparent film substrate 12 provided on the surface of the transparent cured adhesive layer 3 opposite to the first film substrate 11. In FIG. 2, a second transparent conductive layer 22 is further provided on the second film substrate 12 shown in FIG. 1. FIG. 3 shows a case where another transparent cured adhesive layer 3 and a third transparent film substrate 13 are further provided in this order on the second film substrate 12 of the transparent conductive laminated film A shown in FIG. 1. In FIG. 4, a second transparent conductive layer 22 is further provided on the third film substrate 13 shown in FIG. 3, para. [0049].
Therefore, 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 device of Butterfield such that a second transparent conductive layer is further provided on the second side of the second film substrate as taught by Inui, so that a higher level of active energy ray transmittance can be achieved while reducing glare and antireflection function.
Butterfield fails to teach a functionalized silane.
However, in a related field of endeavor Inui teaches the compound having an alkoxyl group in the molecule may be any known compound having at least one alkoxyl group per molecule. Such a compound is typically a melamine compound, an amino resin, a silane coupling agent, or the like. It should be noted that the alkoxyl group-containing compound and polymer, para. [0108].
Therefore, 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 device of Butterfield such that a silane coupling agent as a functionalized silane as taught by Inui, so that a silane coupling agents can impart higher adhesion by acting on the surface of the film substrate such as the first or second film substrate.
Regarding claim 9, Butterfield teaches the substrate includes plastics, synthetic sapphire, glass, optical ceramic materials, optical quality polymers, silicon, or synthetic diamond (e.g., a glass or plastic substrate, column 1, lines 50-56 and column 2, lines 58-60).
Regarding claim 10, Butterfield teaches the optical device includes two or more substrates (e.g., support members 12 and 22, as shown in FIG. 2).
Regarding claim 11, Butterfield teaches the two or more substrates are laminates (column 9, lines 1-8).
Regarding claim 12, Butterfield fails to teach a bandpass filter.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays as taught by Inui, so that a desired ray transmittance can be achieved.
Regarding claim 13, Butterfield fails to teach the bandpass filter is on the glare reducing coating.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays as taught by Inui, so that a desired ray transmittance can be achieved.
Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art In re Japikse, 86 USPQ 70.
Regarding claim 14, Butterfield fails to teach on the first side of the substrate a bandpass filter coating.
However, in a related field of endeavor Inui teaches the active energy rays to be used may include electron beams or visible rays with a wavelength in the range of 380 nm to 450 nm. Although the long wavelength limit of the visible rays is around 780 nm, visible rays with wavelengths of more than 450 nm would not take part in the absorption by polymerization initiators and may cause a transparent protective film and a polarizer to generate heat. In the present invention, therefore, a band pass filter is preferably used to block visible rays with wavelengths longer than 450 nm, para. [0124].
Therefore, 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 device of Butterfield such that a band pass filter is preferably used to block visible rays as taught by Inui, so that a desired ray transmittance can be achieved.
Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art In re Japikse, 86 USPQ 70.
Regarding claim 15, Butterfield teaches the electrical conducting coating repels soil, water, and dust (column 1, line 66 to column 2, line 5).
Regarding claim 16, Butterfield in view of Inui teaches the electrical conducting coating has a coefficient of friction less than 0.08 (i.e., Such advantage is believed in part to be attributable to a lowering of coefficient of friction (e.g., < 0.08) by reason of the presence of the siloxane polymer, column 6, lines 48-51).
Furthermore, it has held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 17, Butterfield teaches the electrical conducting coating includes indium tin oxide, nanoparticle based transparent composites, or optically transparent conductors (i.e., a layer of indium tin oxide 14, column 2, lines 48-51).
Regarding claim 18, Butterfield teaches the electrical conducting coating is a heating element (i.e., the microstructure and integrity of an optical thin film coating is oftentimes enhanced by application of the film onto a heated substrate (e.g., a heating element) or by annealing the coated article, column 1, lines 47-50).
Regarding claim 19, Butterfield teaches the glare reducing coating includes a linear polarizer (26) combined with a quarter wave optical retarder (24) (see FIG. 2 and column 7, lines 57-64).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. MILDEBRATH et al. (US PUB 20160319421) teaches “improved thin films include those provided as raw materials in a plurality of layers and applied to a surface of a substrate. The improved methods include means for evaporating and/or controlling the thickness of one or more layers.”, paragraph 0002.
Maikowski et al. (US PUB 20120250314) teaches “glass substrates that support antireflective and conductive coatings on opposing major surfaces thereof that help serve as chemical and environmental barriers to underlying luminaires and help remove moisture-related disturbances from surfaces thereof and reduce transmission losses related to reflection, and/or methods of making the same.”, paragraph 0002.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAK CHOUDHURY whose telephone number is (571)272-5247. The examiner can normally be reached on M-F 8AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached on (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MUSTAK CHOUDHURY/Primary Examiner, Art Unit 2872
September 17, 2026
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