ESSILOR INTERNATIONAL (COMPAGNIE GENERALE D'OPTIQUE)

Patent Trials and Appeals Board

Aug 28, 2020

2019006007 (P.T.A.B. Aug. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/094,235 04/08/2016 Luc NOUVELOT ESSR.P0166USC1/1000197529 8567
126623 7590 08/28/2020
NORTON ROSE FULBRIGHT US LLP -Essilor
98 San Jacinto Blvd., Suite 1100
Austin, TX 78701
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/28/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUC NOUVELOT, JOHANN ROTTE,
KARIN SCHERER, and DANIEL VALLET 1
Appeal 2019-006007
Application 15/094,235
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
optical article with antireflection properties, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Essilor International.
Appeal Br. 3. We use the word “Appellant” to refer to “applicant” as defined
in 37 C.F.R. § 1.42.
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Application 15/094,235

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STATEMENT OF THE CASE
“An antireflection coating is . . . a coating, deposited onto the surface
of an optical article.” Spec. 2:16–17. “Anti-reflection coatings are well
known and . . . are preferably multilayered coatings comprising alternatively
high refractive index layers and low refractive index layers.” Id. at 2:20–24.
The Specification states that
patent application WO 2005/059603[2] . . . describes an
ophthalmic lens substrate coated with a multilayered colored
antireflection coating, deposited without ion assistance, and
with an anti-fouling coating. The antireflection coating is
composed of a 100–110 nm-thick silica sub-layer, and of . . .
alternating high refractive index layers and low refractive index
layers.
Id. at 3:18–24. The Specification states that “[t]he optical article
manufactured according to . . . WO 2005/059603 has good abrasion
resistance properties, which may nevertheless be further improved.” Id. at
3:29–31.
“According to the present invention, a sub-layer is used in combination
with a multilayered stack comprising” high- and low-refractive index layers.
Id. at 9:1–3. “The sub-layer of the invention is a multilayered sub-layer
(laminated), preferably a bilayer.” Id. at 9:13–14. “[T]he second of these two
adjacent layers to be deposited . . . possess[es] a higher density as compared
to that of the first one, because it was formed under ion assistance whereas
the first of these two adjacent layers to be deposited was not.” Id. at 9:24–26.
The Specification states that this structure “improve[s] the abrasion resistance

2 WO 2005/059603 is the Thomas reference cited by the Examiner.
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of the final article while limiting the increase in the compressive stress so as
to avoid any antireflection coating structural weakening.” Id. at 12:11–13.
Claims 1–20 are on appeal. Claim 1, reproduced below, is illustrative
(emphasis added):
1. An optical article with antireflection properties,
comprising a substrate having at least one main surface coated
with an antireflection coating comprising, starting from the
substrate:
a sub-layer comprising two adjacent layers, the sum of the
thicknesses of the two adjacent layers being greater than
or equal to 75 nm; and
multilayered antireflection stack comprising at least one
high refractive index layer and at least one low refractive
index layer,
wherein the second adjacent layer of the sub-layer is directly
deposited upon the first adjacent layer of the sub-layer,
wherein the deposition of the first adjacent layer of the sub-
layer has been carried out without ion assistance and the
deposition of the second adjacent layer of the sublayer
has been carried out under ion assistance, and
wherein the sub-layer is deposited on an abrasion- and/or
scratch-resistant coating.

The claims stand rejected as follows:
Claims 1–6 and 8–20 under 35 U.S.C. § 103 as obvious based on
Thomas3 and Klemm4 (Ans. 3) and

3 Thomas et al., WO 2005/059603 A1, published June 30, 2005. The
Examiner cites to Thomas et al., US 2007/0178315 A1, published August 2,
2007, as the English-language equivalent. Appellant does not dispute that
the disclosures of the US publication and the WO publication are equivalent.
4 Klemm et al., US 2003/0116872 A1, published June 26, 2003.
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Claim 7 under 35 U.S.C. § 103 as obvious based on Thomas, Klemm,
and Schulz5 (Ans. 5).
OPINION
All of the claims stand rejected as obvious based on Thomas and
Klemm, and further in view of Schulz in the case of claim 7. The same issue
is dispositive for both rejections.
The Examiner finds that Thomas discloses “a coated optical article . . .
compris[ing] a transparent substrate upon which, in order, a primer coating,
anti-abrasion coating, an SiO2-based layer that is over 75 nm thick, and an
AR [antireflection] stack formed from alternating high and low [refractive]
index layers are disposed.” Ans. 3. The Examiner interprets “the SiO2-based
layer as the presently claimed sub-layer” but acknowledges that “Thomas is
silent to the sub-layer being two adjacent layers as claimed.” Id.
The Examiner finds, however, that “Klemm discloses a first thin sub-
layer deposited by vacuum evaporation and a second sub-layer deposited by
an ion-assisted vacuum deposition process wherein the materials are each
silicon dioxide.” Id. at 4. The Examiner finds that “[t]he two-stage adhesion
coating aids in providing good adhesion between the topcoat and the AR
stack.” Id. The Examiner acknowledges that “sub-layers are deposited in
reference to the hydrophobic topcoat and the AR stack,” but reasons as
follows:
[T]he hydrophobic topcoat comprises a silicon-containing
organic compound. Given that an epoxysilane [i.e., the material
of Thomas’ anti-abrasion coating] is a silicon-containing

5 Schulz et al., “Optical coating on transparent plastics,” VIP Vacuum’s
Best, pp. 26–29 (2005).
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organic compound, there is reasonable expectation of success of
using the two-stage adhesion coating disclosed by Klemm as
the SiO2-based layer of Thomas in order to provide improved
adhesion between the anti-abrasion coating . . . and the AR
stack since both the topcoat and the anti-abrasion coating are
both formed from silicon-containing organic compounds.
Id.
Appellant argues that Klemm’s layer 21, which the Examiner refers to
as corresponding to the sub-layer of claim 1, “is composed of ‘two sub-
layers,’ . . . [but] does not correspond to the sub-layer as presently claimed
because it is not located between the substrate and the antireflection stack.
Rather, it constitutes the external layer of the anti-reflection stack 20 and is
adjacent to the hydrophobic top coat 10.” Appeal Br. 6.
Instead, Appellant argues,
[s]ub-layer 25 of Klemm corresponds to the presently claimed
sub-layer because it resides on an abrasion- and/or scratch-
resistant coating 30 . . . [and] “promote(s) adhesion of the AR
stack (20) to the siloxane-based anti-scratch coating (30).” This
arrangement corresponds exactly to the abrasion-resistant
coating/sub-layer/anti-reflection stack arrangement of the
presently claimed invention.
Id. at 5 (citation omitted).
Appellant also argues that “[t]he mere fact that the compounds of the
hydrophobic top coat and the anti-abrasion coating may both be silicon-
containing organic compounds is not sufficient to establish a similarity
between the two materials.” Id. at 9. Rather, Appellant argues, “[t]he silicon
components of the hydrophobic top coat of Klemm are hydrophobic
fluorinated compounds, and their chemical makeup and physical properties
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are very different from that of the epoxysilanes used in the anti-abrasion
coating of Thomas.” Id.
Appellant argues that “[l]ayer 21 . . . is described by Klemm as
making the hydrophobic top coat 10 adhere to the anti-reflecting coating
20.” Id. at 8. Likewise, “[s]ub-layer 25 of Klemm is provided to promote
adhesion between anti-reflecting stack 20 and scratch-resistant coating 30,
however, this layer is provided as a single layer, and is not deposited as a
two-stage layer like layer 21.” Id. at 10. Appellant points out that “Thomas
does not disclose problems of poor adhesion associated with anti-abrasion
coatings because the anti-abrasion coating layer of Thomas is made of
different materials that exhibit different properties.” Id. Thus, Appellant
argues, “[t]here is no motivation in the disclosure of Klemm to adapt the
two-stage deposition process of layer 21 to the deposition process of (single
layer) sublayer 25 because the two different layers are provided to adhere
layers made of different materials.” Id. at 10–11.
We agree with Appellant that the Examiner has not shown that a
skilled artisan would have had a reason to modify Thomas in the manner
required by the claims. Appellant accurately summarizes the arrangement of
the relevant layers in the optical articles of Thomas and Klemm in the
diagram provided at page 12 of the Appeal Brief, which is reproduced
below:
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The diagram shows the layers of the optical articles in Thomas and
Klemm, arranged with the substrate at the bottom and the hydrophobic top
coat at the top.
As shown, the sub-layer defined by the claims corresponds to the sub-
layer (“layer n° 1”) of Thomas and sub-layer 25 of Klemm, because those
layers are positioned between an abrasion-resistant coating and the
antireflection stack. See Thomas ¶¶ 92–97 (An anti-abrasion coating was
applied to the substrate, then pre-cleaned and “an anti-scratch SiO2 layer
(layer n° 1) was deposited . . . by evaporating the silicon source material”
without ion assistance.); Klemm ¶ 95 (“[A] thin layer of SiO2 25 . . . is
deposited. This layer 25 promotes the adhesion between the anti-reflecting
stack and the scratch-resistant coating 30.”).
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Thomas’ anti-abrasion layer and Klemm’s scratch-resistant coating
are composed of the same type of material. See Thomas ¶¶ 92–93 (The
example’s anti-abrasion coating is “[e]poxysilane hydrolyzate (γ-glycidoxy-
propyltrimethoxysilane.)”); Klemm ¶ 99 (“The most preferred scratch-
resistant coating compositions are those comprising as the main constituents
an epoxyalkoxysilane such as, for example, γ-glycidoxypropyltrimethoxy-
silane.”).
Klemm states that “[i]n order to improve adhesion of the anti-
reflecting coating 20 onto the hydrophobic top coat 10 . . . , the SiO2 layer
21 of the anti-reflecting coating is deposited on the top coat 10 using a two-
stage process.” Klemm ¶ 91 (emphasis added). Klemm describes this two-
stage process as necessary because the hydrophobic top coat has a tendency
to adhere poorly to the anti-reflecting coating, a problem that is solved by
depositing the first layer of the anti-reflecting stack in the disclosed two-
stage process. See id. ¶¶ 34, 38, 49–50.
By contrast, Klemm does not note any problems with the adhesion of
SiO2 layer 25 to the adjacent scratch-resistant coating, nor does it describe a
two-stage deposition process like the one used for layer 21. Klemm simply
states that “after deposition of the four-layer anti-reflecting stack, a thin
layer of SiO2 25 of 1 to 50 nm thick, is deposited.” Id. ¶ 95.
In summary, we agree with Appellant that the Examiner has not
provided sufficient evidence or sound technical reasoning to show that a
skilled artisan would have had a reason to apply the two-stage deposition
process disclosed by Klemm—for a SiO2 layer between a hydrophobic top
coat and an anti-reflecting stack—to the SiO2 layer of Thomas’ article that is
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positioned between an anti-abrasion coating and an anti-reflecting stack.
We therefore reverse the rejection of claims 1–6 and 8–20 under 35 U.S.C.
§ 103 based on Thomas and Klemm. For the same reason, we reverse the
rejection of claim 7 under 35 U.S.C. § 103 based on Thomas, Klemm, and
Schulz.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–20 103 Thomas, Klemm 1–6, 8–20
7 103 Thomas, Klemm,
Schulz
7
Overall
Outcome
1–20

REVERSED