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 with traverse of claims 32-47 in the reply filed on March 23, 2026 is acknowledged. The traversal is on the following grounds: the Applicant argued that Mitamura relied on by the Examiner does not teach a special technical feature which is patterning that alters the surface properties of the patterned substrate compared to the unpatterned substrate so that super-hydrophilic properties with the recited in claim 1 water contact angles are reliably generated, and the anti-fogging properties of “Claim 32” can be achieved (pp. 7-8) of the Remarks. The Applicant argued Mitamura does not disclose cones having rounded cone tips, does not disclose a substrate having anti-fogging properties. This is not found persuasive because as specified in the restriction requirement the groups of inventions of claims 32-47 and 48-51 do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical feature for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a patterned substrate having a surface having anti-fogging properties, the surface having a patterned region, the patterned region comprising a first periodic dot structure with an interference period in the range of 50 nm to 50 µm, or a first periodic dot structure with an interference period in the range of from 50 nm to 2.0 µm and/or in the range from 9.5 µm to 50 µm, wherein the dot structure is formed of inverse cones formed in the substrate to be patterned, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Mitamura (US 2015/0183152 A1). Thus, rounded cone tips are not required by both Group I and Group II.
The Applicant discussed the processes used by Mitamura and contaminants that are the result of that process, as well as hydrophilic properties of silicon, and concluded that Mitamura does not disclose a substrate with pronounced antifogging properties and a water contact angle of less than 20˚. The Applicant stated that the substrate of claim 32 is novel relative to Mitamura. However, novelty is not at issue in the restriction requirement, but a presence of a special technical feature. The Examiner notes in the restriction requirement it was not stated that claim 32 is novel with respect to Mitamura. It was stated that the Groups of inventions I and II require the technical features as discussed above, and that those features are taught by Mitamura, thus, the common technical feature is not a special technical feature as it does not make a contribution over the prior art. See PCT Rules 13.1 and 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 32, 36, 37, 40, 42, 43, and 44 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.
Claim 32 recites “a first periodic dot structure in the micro- or sub-micrometer range” in line 4. It is not clear what is in the recited range, whether these are the dimensions of the structure.
Claim 32 recites “the inverse cones are formed into the substrate to be patterned” in line 11. The claim is not clear, as the substrate has been patterned since the inverse coned are formed into it.
Claim 32 recites “less than 20˚, preferably less than 10˚, preferably less than 5˚” in line 14. The claim is indefinite.
Claim 36 recites “a transmittance of at least 50 % or preferably at least 70 % or particularly preferably at least 80 % or at least 90% for each wavelength in the partial range in a partial range of the electromagnetic spectrum.” The claim is indefinite and not clear.
Claim 37 recites the limitation “the partial range” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 40 recites the limitation “varies only by a maximum of 5˚, preferably a maximum of 3˚.” The claim is indefinite.
Claim 42 recites the limitation “the line structure” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 43 recites the limitation “the quasi-periodic wave structure” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 43 recites “wherein the quasi-periodic wave structure (19) is located within or on the surface of the inverse cones . on the surface of the inverse cones (14) or cones” in lines 3-5. The recitation is not clear.
Claim 44 recites the limitation “the line structure” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 32-37, 39, 40, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al. (US 2014/0205801 A1) (“Iwata”).
With respect to claim 32, Iwata discloses a patterned substrate comprising a surface with anti-fogging properties – hydrophilic resin layer has been interpreted as the patterned substrate (0001, 0087, 0094-0097, 0310, 0358), the surface comprising a patterned region and an unpatterned region (Figs. 6C and 14A), wherein the patterned region is formed by a first periodic dot structure in the sub-micrometer range with a first interference period of from 50 nm to 300 nm (0105); the range of the first interference period overlaps the range recited in claim 32; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Iwata discloses the first periodic dot structure is formed of inverse cones, the inverse cones formed into the substrate, and having a rounded cone tip at their saddle point (0102, Figs. 6C and 14B), wherein the surface of the substrate having the first dot structure has a water contact angle of less than 10˚ or 5˚ (0127).
Regarding claim 33, Iwata teaches the substrate of claim 32, wherein the substrate has an unpatterned surface, wherein the first periodic dot structure is arranged on and in the material of the substrate - Fig. 14A. Regarding the material wherein the unpatterned surface has hydrophilic properties, Iwata discloses that the substrate comprises a resin composition and provides non-limiting examples of the hydrophilic monomer (0094-0097, 0132-0146), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the unpatterned surface has hydrophilic properties.
As to claim 34, Iwata teaches the substrate of claim 32. Iwata discloses that the combined patterned substrate and the substrate – element 211 (Fig. 6C) are transparent (p. 19, Table 2), thus, it would be obvious to one of ordinary skill in the art that the patterned substrate is transparent.
With respect to claim 35, Iwata teaches the substrate of claim 32, wherein the first periodic dot structure has a structure depth of from 1 nm to 1000 nm (0108). The range of the depth overlaps the range recited in claim 35; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 36, Iwata teaches the substrate of claim 32. Iwata discloses the patterned substrate and the substrate have a total light transmittance above 90% (p. 19, Table 2), thus, since the substrate is transparent (0089), it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the substrate has a transmittance of at least 90%.
As to claim 37, Iwata teaches the substrate of claim 32. Iwata discloses the patterned substrate and the substrate have a total light transmittance above 90% (p. 19, Table 2), thus, since the substrate is transparent (0089), it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the range of from 380 nm to 780 nm the transmission range overlaps the recited range; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 39, Iwata teaches the substrate of claim 32. Regarding the surface of the substrate comprising the first dot structure having hydrophilic and/or superhydrophilic properties, Iwata discloses a water contact angle of less than 10˚ or of 5˚ (0127).
Regarding claim 40, Iwata teaches the substrate of claim 32. Regarding the water contact angle of the surface comprising the first periodic dot structure varying as recited in the claim, since the substrate is used in various products, including products for optical use and solar battery panels (0001), it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust how much the water contact angle of the surface of the patterned substrate should vary according to the intended use of the substrate.
As to claim 46, Iwata teaches the substrate of claim 32, wherein the surface of the substrate comprising the first dot structure has self-cleaning properties (0001, 0011).
Claim(s) 38, 45, 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwata, in view of Li et al. (US 2018/0059291 A1) (“Li”).
With respect to claim 38, Iwata teaches the substrate according to claim 32, but is silent with respect to a further periodic structure superimposed on the periodic dot structure. Li discloses an anti-fogging substrate comprising nano-sized surface features (abstr.), on which there are superimposed periodic structures (0010, 0011, 0020, 0021, 0035, 0050, 0075, Fig. 4), in order to obtain improved optical properties of the substrate and a wettability adjustment (0003 – 0006). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the substrate of Iwata a periodic structure superimposed on the periodic dot structure in order to improve optical properties of the substrate and adjust wettability.
With respect to claim 45, Iwata teaches the substrate according to claim 32, but is silent with respect to a further periodic dot structure superimposed on the first periodic dot structure. Iwata discloses the first periodic dot structure having dimensions in sub- micrometer range (0105). Li discloses an anti-fogging substrate comprising surface features in a micrometer range - surface features (abstr., 0035), on which there is superimposed a further periodic dot structure in a sub-micrometer range (0010, 0011, 0020, 0021, 0035, 0050, 0075, Fig. 4), in order to obtain improved optical properties of the substrate and wettability adjustment (0003 – 0006). The further periodic dot structure patterns the substrate uniformly within an interference pixel (Fig. 4a). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the substrate of Iwata a further periodic dot structure superimposed on the periodic dot structure in order to improve optical properties of the substrate and adjust wettability. Regarding the interference period of the further dot structure as recited in the claim, the further periodic dot structure is a hierarchical structure with respect to the first dot structure, which has impact on optical properties of the substrate (Li, 0021), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the interference period of the further dot structure with respect to the interference period of the first periodic dot structure in order to obtain the desired optical characteristics of the substrate.
Regarding claim 47, Iwata teaches the substrate of claim 32, but is silent with respect to a coating arranged on the substrate on the patterned surface such that the first dot structure is formed in the coating and in an underlying layer.
Li discloses an anti-fogging substrate comprising surface features comprising a first dot structure (abstr., 0035), wherein a coating of an amorphous metal oxide is arranged on the substrate on the patterned surface to improve anti-fogging and anti-reflective properties of the substrate (0009). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the substrate of Iwata with a coating arranged on the substrate on the patterned surface in order to improve anti-fogging and anti-reflective properties of the substrate. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the patterned substrate of Iwata and Li, the first dot structure would be present in the coating and in an underlying layer – the bottom layer of element 212 of Iwata.
Claim(s) 41-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwata, in view of Sebastian et al. (US 2005/0186416 A1) (“Sebastian”).
With respect to claim 41, Iwata teaches the substrate of claim 32. Iwata is silent with respect to a line structure as recited in the claim. Sebastian discloses hydrophilic articles which include antifogging films (abstr., 0020), wherein the substrates include cones and line structures (0032). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include a line structure of Sebastian in the substrate of Iwata to be superimposed on the first periodic dot structure with dimensions in the sub-micrometer range of Iwata as discussed above in order to obtain the desired hydrophilicity of the substrate
Regarding claim 42, Iwata teaches the substrate of claim 32, but is silent regarding the line structure as recited in the claim. The Examiner notes the claim was considered for examination purposes as being dependent from claim 41. Sebastian discloses the line is in the form of a wave structure (0032). Regarding the quasi-periodic properties and the interference period of the wave structure as recited in the claim, Sebastian discloses that the nature of individual lines can be varied (0032), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust line structure as a quasi-periodic line pattern and the interference period of the wave structure in order to obtain specific individual properties of the substrate.
As to claim 43, Iwata teaches the substrate of claim 32, but is silent regarding a spatial position of the quasi-periodic wave structure with respect to the cones and the region which is unpatterned remaining unpatterned. The Examiner notes the claim was considered for examination purposes as being dependent from claim 42. Sebastian discloses that the nature of individual lines can be varied and their pattern can be varied (0032), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust the special position of the wave structure in order to obtain specific individual properties of the substrate.
With respect to claim 44, Iwata teaches the substrate according to claim 32. The Examiner notes the claim was considered for examination purposes as depending from claim 41. Sebastian discloses hydrophilic articles which include antifogging films (abstr., 0020), wherein the substrates include cones and line structures (0032). The line structures can be periodic – regular (0032). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include a line structure of Sebastian on the first periodic dot structure of Iwata as it is known in the art of anti-fogging substrates to include line structures in them. Regarding the periodic line structure patterning the substrate uniformly within an interference pixel and comprising an interference period as recited in the claim, Sebastian discloses that the number and spacing of the lines can be varied (0032), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust the patterns of the line structures in order to obtain the desired anti-fogging characteristics.
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights