Ex Parte Beinat et alDownload PDFPatent Trial and Appeal BoardAug 26, 201612306228 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/306,228 08/18/2009 126623 7590 08/30/2016 NORTON ROSE FULBRIGHT US LLP -Essilor 98 San Jacinto Blvd., Suite 1100 Austin, TX 78701 FIRST NAMED INVENTOR Olivier Beinat 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ESSR: 157US/10815313 1588 EXAMINER KAKALEC, KIMBERLYN ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 08/30/2016 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 OLIVIER BEINAT, JEAN-LOUIS SIRJEAN, and MICHELE THOMAS 1 Appeal2015-002801 Application 12/306,228 Technology Center 2800 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and JULIA HEANEY, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. § 103(a) of independent claim 25 as unpatentable over Teramoto (US 2005/0219724 Al, published Oct. 6, 2005) in view of Andreani (US 6,175,450 Bl, issued Jan. 16, 2001) and dependent claims 26- 40 and 42--48 as unpatentable over these references alone or in combination with additional prior art. We have jurisdiction under 35 U.S.C. § 6. 1 Essilor International (Compagnie Generale D'Optique) is identified as the real party in interest. App. Br. 1. Appeal2015-002801 Application 12/306,228 We AFFIRM. Appellants claim an optical article comprising a substrate and, starting from the substrate, a sub-layer comprising a Si02-based layer having a thickness greater than or equal to 75 nm and being free from Ah03, and a multilayered antireflection coating comprising a stack consisting of at least one high refractive index layer and at least one low refractive index layer wherein all the low refractive index layers comprise a mixture of Si02 and Ah03 (sole independent claim 25). A copy of representative claim 25, taken from the Claims Appendix of the Appeal Brief, appears below. 25. An optical article having antireflection properties, which comprises a substrate and, starting from the substrate: a sub-layer comprising a Si02-based layer, said Si02- based layer having a thickness greater than or equal to 7 5 nm and being free from Ah03; and a multilayered antireflection coating comprising a stack consisting of at least one high refractive index layer and at least one low refractive index layer, wherein all the low refractive index layers of the antireflection coating comprise a mixture of Si02 and Ah03, and wherein the high refractive index layers of the antireflection coating either (i) do not comprise a substoichiometric titanium oxide that absorbs in the visible region; or (ii) do comprise a substoichiometric titanium oxide that absorbs in the visible region, but do not reduce the relative visible light transmission factor (Tv) of said optical article by more than 10% as compared to a same article without any said layers that comprise a substoichiometric titanium oxide and absorb in the visible region. App. Br. 10. 2 Appeal2015-002801 Application 12/306,228 Appellants do not present separate arguments specifically directed to the dependent claims under rejection (App. Br. 1-9). Therefore, the dependent claims will stand or fall with their parent claim 25. We sustain the above rejections for the reasons given in the Final Action, the Answer, and below. In rejecting claim 25, the Examiner finds that Teramoto discloses an optical article having the claimed anti-reflection coating but not the claimed sub-layer (Final Action 3--4). The Examiner additionally finds that Andreani discloses an optical article having an anti-reflection coating adhered to a substrate via a sub-layer of the type claimed (id. at 4). The Examiner concludes that it would have been obvious "to modify the optical article of Teramoto by providing a sub-layer comprising a Si02-based layer, said Si02-based layer having a thickness greater than or equal to 75 nm and being free from Al203, as taught by Andreani, in order to improve adhesion between the substrate and the multilayered antireflection coating" (id.). 2 Appellants argue that Teramoto teaches away from the sub-layer of claim 25 and Andreani by teaching that cracking and exfoliation will be avoided by using a mixture of Si02 and Ab03, rather than Si02 free from Ab03, as the low refractive index layer of the antireflection coating (see, e.g., App. Br. 2--4). 2 Appellants misrepresent the Examiner's rejection by arguing "[a] person of ordinary skill in the art would not disregard the teachings of Taramoto [sic, Teramoto] and take the risk of developing intense compression stresses by replacing the Si02/AbQ3 sub-layer of Teramoto with the silica sub-layer of Andreani" (Reply Br. 8). As reflected by the above quotation from the Final Action, the Examiner does not propose any such replacement. 3 Appeal2015-002801 Application 12/306,228 As correctly explained by the Examiner, Teramoto's teaching relates to the antireflection coating, not a sub-layer between the substrate and the antireflection coating (Ans. 4--5). Appellants contend that one with ordinary skill in this art would consider the first layer (i.e., a Si02/Ah03 mixture) ofTeramoto's antireflection coating to be a sub-layer as defined in their Specification (see, e.g., App. Br. 4--5). The Examiner persuasively rebuts this contention by pointing out that the Specification defines the term "sub-layer" or bonding layer to mean "a coating which is deposited onto the substrate (bare or coated) prior to depositing the antireflection stack" (Spec. 5:27-28) and by explaining that such definition excludes the first layer of Teramoto' s antireflection stack/coating (Ans. 3). Similarly, Teramoto's first layer of the antireflection coating is distinguished from a sub-layer by the Specification disclosure that "the sub-layer ... does not belong to the antireflection stack and does not have any significant optical effect" (Spec. 5:32-34). Finally, the above contention is further undermined by Appellants' Specification discussion of the Teramoto reference as describing an antireflection coating having low refractive Index layers of Si02 doped with Ah03 (Spec. 2:8-12).3 Finally, Appellants argue that inventive Example 2 in combination with comparative Examples 3 and 5 (see Spec. 18-20) show their claimed article achieves unexpected results in the form of improved abrasion resistance while maintaining good thermal resistance (App. Br. 7-8). 3 These Specification disclosures on pages 2 and 5 likewise undermine Appellants' assertion that "[t]he naming convention of Teramoto is different from the current application" (Reply Br. 5). 4 Appeal2015-002801 Application 12/306,228 We agree with the Examiner that despite the different results of Example 2 and comparative Examples 3 and 5, Appellants have not established the difference is statistically and practically significant, and therefore unexpected (Ans. 8-9). For instance, inventive Example 2 and comparative Example 5 show the inventive article yields an inferior thermal resistance of 93°C versus 96°C and improved ASTM Bayer abrasion resistance of 4.3 versus 3.8 (Spec. 18, Table 1). However, Appellants do not provide any evidence that the 0.5 improvement in abrasion resistance would be considered significant and unexpected by a person with ordinary skill in this art. Moreover, Appellants do not even assert that inventive Example 2 is commensurate in scope with claim 25 whereas, on its face, Example 2 is limited to a Si02 sub-layer having a 150 nm thickness while claim 25 broadly encompasses any Si02-based sub-layer having a thickness greater than or equal to 7 5 nm. For the reasons stated above and given by the Examiner, the evidence of record for and against obviousness weighs most heavily in favor of an ultimate conclusion of obviousness. We sustain, therefore, the § 103 rejections of claim 25 and the claims which depend therefrom. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation