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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/5/26 has been entered.
Claims 1, 18, 23, and 45 are currently pending examination, claim 43 is withdrawn, and claims 2-17, 19-22, 24-42, 44, and 46 canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 18, 23, and 45 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 as amended requires “wherein removing all of the portion of the first transparent electronically conductive layer comprises leaving a portion of the first sacrificial coating on the edge portion of the substrate;” Applicant cites [0064] of the PGPUB and emphases teachings of the sacrificial coating withstanding prior wash operations in scenarios 1d, 2d, 3d, and 4d and ultimately being removed in the later (third) wash. When considering Applicant’s specification, the closest support to the presently claimed “removing” step appears to equate to the “pre-scribe” substrate step. In all argued embodiments (1, 2, 3, 4 d) the examiner notes that the taught sequence comprises a processing including the deposition of TEC prior to deposition of the sacrificial coating and prior to the pre-scribe / removal step. Similarly, claim 1 requires wherein “the first TECL is disposed…between the substrate and the first sacrificial coating” so the orientation of substrate – TECL – sacrificial coating has been established. The only portions of Applicants original disclosure describing any further particular details of what the “pre-scribe” operation involves appears to originate at [0034] of the PGPUB. No explicit teaching therein addresses any type of relationship between pre-scribe removal processes and retention of overlying sacrificial material. At [0034] a series of prior art documents have been incorporated by reference. The examiner notes that both PCT App # 2013090209 and PCT / US2012/068817 appear to be equivalents to the examiner relied upon Strong reference. Applicant has stated (pg 5 of the 3/5/26 remarks) that “Strong does not even teach sacrificial coating, much less ‘leaving…the substrate’. Moreover, Strong repeatedly describes edge deletion as removing ‘all the layers’ in the perimeter zone don to the substrate…”. Thus the examiner maintains that such statements similarly apply to Applicant’s equivalent incorporations. The examiner is unable to similarly find any teaching of sacrificial coating and its presence in a scribed / deleted surface area wherein the 1st TECL has been removed in the remaining (US 12/645,111, 13/456056) incorporated content. All of these incorporations appear to teach removal processes wherein portions of any layers directly above the removed portions of the 1st TECL would similarly have been removed with the 1st TECL (echoing Applicant: “the edge deletion in Strong [the incorporated by reference prior art] would remove any sacrificial coating if arguendo any were to exist”). Thus the Applicant’s original disclosure does not support / provide possession of the claimed invention of “wherein removing all of the portion of the first transparent electronically conductive layer comprises leaving a portion of the first sacrificial coating on the edge portion of the substrate;”.
The other dependent claims do not cure the defects of the claims from which they depend.
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, 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.
Claims 1 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhatnagar et al (US 2014/0329006; hereafter Bhatnagar) in view of Strong et al (US 2014/0340731; hereafter Strong), Colbert et al (US 2,383,469; hereafter Colbert), Medwick et al (US 2002/0176988; hereafter Medwick), and Richardson et al (US 2005/0210921; hereafter Richardson). {Sugiyama et al (US 2015/0343825; hereafter Sugiyama); provided only as evidence for claim 1}
Claim 1: Bhatnagar teaches a method of manufacturing an electrochromic device comprising an electrochromic stack (320) between a first transparent electronically conductive layer (TECL) (304) and a second (312) transparent electronically conductive layer configured to deliver an electrical potential difference over surfaces of the electrochromic stack and thereby cause optical switching of the electrochromic device (see, for example, abstract, Fig 1-4, [0005], [0013-14], [0033—0034]). Bhatnagar further teaches wherein the method of manufacture comprises steps of receiving TECL coated large area glass substrates from a glass production plant, then cutting / sizing, then tempering, then polishing, and then washing /cleaning; and then following such processes, fabricating / depositing the EC stack and then forming the second transparent electronically conductive layer on the EC stack (see, for example, [0004], [0014], [0016-17], [0039], Fig 2-3, and [0055-58]). Bhatnagar further teaches the tempered 1st TECL over the entirety of the substrate and consisting of a edge portion of the first TECL consisting of a portion disposed only on portions of the substrate that are within a predetermined distance of an edge of the substrate and a remaining portion disposed only on the remaining portion of the substrate (See, for example, Fig 3, [0004-6]). Bhatnagar does not explicitly teach removing all of the portions of the first TECL that is disposed on the edge portion of the substrate. Strong teaches a method of fabrication of electrochromic devices, further on TCL coated glass substrates (See, for example, abstract, Figures, [0008-0010]). Strong further explicitly incorporates by reference the content of Bhatnagar (via invocation of its priority “PCT/US12/57606”) (see, for example, [0069]). Strong further teaches wherein following such a polishing step as in Bhatnagar, an edge deletion process removing all the 1st TECL from all portions of the substrate that are within a predetermined distance of the edge of the substrate (such as portion 140) provides for ensured isolation from any edge defects, and addresses unwanted coloration and charge buildup in areas of the device (See, for example, [0006], [0069], Fig 1-4). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an edge deletion process removing all the portion of the first TECL disposed on the edge portion of the substrate within a predetermined distance of an edge of the substrate since such a removal would predictably enhance performance by ensuring isolation from any edge defects, and addressing unwanted coloration and charge buildup in areas of the device.
Bhatnagar further particularly teaches that after cleaning the sample is passed onto fabrication, particularly to an integrated deposition system having a controlled ambient environment, such as vacuum, for depositing the EC stack and 2nd TECL (see, for example, [0024], [0028]). Bhatnagar does not explicitly deposit a first sacrificial coating over the tempered substrate comprising the first TECL where the first TECL is between the substrate and the first sacrificial coating; and prior to coating a glass substrate with the second TECL of the electrochromic stack, removing the first sacrificial coating by a first wash operation.
Colbert teaches a method of preparing glass for subsequently applied permanent coatings (See, for example, pg 1, col 1 lines 1-11). Colbert further teaches wherein coated glasses suffer from poor adhesion and pinholing attributed to minute particles of foreign matter / dirt / lint, etc on the surface of the glass to which the coatings are to be applied, and while they can be removed by cleaning, the clean glass rapidly absorbs such foreign matter from the surrounding environment, that the purity is lost unless additional action is taken (See, for example, pg 1, col 1 lines 30-40). Colbert further notes that even if immediately transferring a thoroughly cleaned surface into an integrated deposition system (such as vacuumized chamber) the surface would still be too rapidly contaminated to achieve a desired clean state (see, for example, pg 4 col 1 line 35-col 2 line 45 and pg 5 col 2 line 72-pg 6 col 1 line 18). Colbert teaches wherein such issues can be overcome by immediately applying a temporary sacrificial coating following the cleaning which will maintain the surface in such a thoroughly cleaned state until the time at which it is to receive the permanent coating, at which point the temporary coating is removed prior to said permanent coating (See, for example, pg 1 col 2 lines 43-52, pg 5 col 2 line 72-pg 6 col 1 line 18). Colbert further teaches wherein in addition to enhancing the surface purity of samples being directly passed into chambers for subsequent coating, it additionally provides benefits in large scale operations since the cleaning and coating operations need not be synchronized, thus enhancing the flexibility of production methods (see, for example, pg 4 col 1 line 72 – col 2 line 14). Medwick, like Colbert, similarly teaches wherein a sacrificial layer, can predictably be applied following tempering, and further teaches wherein sacrificial coatings can predictably be applied over coated glass surfaces and removed by washing (removal by such washing is interpreted as the claimed first wash) (see, for example, abstract, [0011-12] [0017], [0023], [0031], [0054]). Medwick, like Bhatnagar, similarly further teaches that in the glass industry it is known that separate glass manufacturers produce and provide large area glass substrates including functional conductive / oxide coatings, to one or more fabricators and customers (See, for example, [0004-0005], [0016-18], [0054]). Medwick further teaches wherein applied temporary protective coatings can be repeatably applied at different phases of the process, and can predictably be applied to coated glass substrates to provide protection from mechanical, chemical, handling damage and or from misidentification (See, for example, [0011-12], and [0054]). Medwick further teaches wherein such sacrificial coatings comprises an organic or inorganic coating selected from the group consisting of adhesive materials (See, for example, [0032], such as starches, casein, polyvinyl acetate, polyvinyl alcohol, methyl cellulose, etc. {Sugiyama} evidences that at least these recited materials are adhesive materials see, for example, [0086]}). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated application of a first sacrificial coating at a point in the process of Bhatnagar just following the post-tempering cleaning / “second” washing step and its removal by washing prior to depositing the EC stack and 2nd TECL, as it would predictably ensure retention of the purity of cleaned state during either of immediate transfer, or storage periods, prior to receipt at the fabrication chamber and up to deposition of the EC stack and second TECL; thereby predictably enhancing adhesion and prevention of contamination and defects between the 1st TECL coated glass substrate and the subsequently applied permanent coatings and further allowing for enhanced flexibility of production methods.
Bhatnagar in view of Strong, Colbert and Medwick teach the method above, Bhatnagar further teaches cutting prior to tempering (thus prior to deposition of the first sacrificial coating) (see, for example, Bhatnagar [0016], [0055]), and per the combination above Colbert has taught washing / cleaning of the substrate prior to deposition of the first sacrificial coating (see above), but they do not explicitly additionally state grinding before this deposition. Richardson teaches wherein steps of cutting, edge seaming and grinding and an additional washing all are performed prior to tempering to properly size, shape, and clean the article (See, for example, Fig 3, [0020], [0040], claim 1). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have similarly incorporated a grinding and a washing in conjunction with the cutting step prior to tempering and subsequent deposition of the first protective layer since such steps are conventionally conducted prior to tempering and since they would predictably properly size, shape and clean the article in preparation for tempering.
By the above combination of prior art the application of overall process flow comprises: receive TECL coated substrate ->cut / size -> temper -> polish -> edge deletion -> wash / clean -> apply first sacrificial coating. As the application of the sacrificial coating is applied over the entire substrate, and as it occurs after edge portions of the TECL have been deleted, the amended limitation of “wherein removing all the portion of the first transparent electronically conductive layer comprises leaving a portion of the first sacrificial coating on the edge portion of the substrate;” is met; (the above sub-processes of “edge deletion -> wash / clean -> apply first sacrificial coating” are interpreted as occurring within the claimed “removing all of the portion of the first transparent electronically conductive layer” process step, as upon completion of the removing step, the 1st sacrificial layer would reside on all portions (both the edge portions and the remaining portions).
Claim 23: Bhatnagar in view of Strong, Colbert, Medwick, and Richardson teach the method of claim 1, Bhatnagar has further taught using commercially sourced TECL coated float glass, and wherein in large scale production it is common for such class to be shipped in from a commercial source (See, for example, [0004], [0054]). Medwick has further taught its protective process can be applied for the protection of “untempered” substrates which subsequently undergo tempering (see Medwick [0011], [0017], [0023]). Medwick further teaches wherein glass substrates are conventionally stacked with interleaving material and packed / unpacked for / from shipping to facilitate sample separation (See, for example, [0005], [0046-47]). Medwick further teaches depositing a plurality of sacrificial coatings in sequence (See, for example, [0017], [0054]). Medwick further teaches that in addition to using the sacrificial coatings for protection or identification purposes during shipment, they too can predictably provide such protection during periods of storage, handling, and processing ([0011-12], and [0054]). Although no exemplary embodiment is taught including unpacking the substrate from a stack of substrates comprising interleaving materials occurs before deposition of the “first” sacrificial coating, considering the implication toward large scale production, and the sourcing of the initial float glass within the method of Bhatnagar (as described in the rejection of claim 1 above) it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated unpacking of the substrate from a stack of substrates comprising interleaving material since the shipping of more than a singularly packaged float glass sample would provide benefits with respect to cost (bulk shipping “x” samples once vs shipment of each sample within “x” total samples “x” times) and reduction of waste of containment materials and economy and enhancement of scale or production and as such packaging would predictably enhance separation among the samples.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Bhatnagar in view of Strong, Colbert, Medwick, and Richardson as applied to claim 1 above, and further in view of Bernhard (US 4,565,581; hereafter Bernhard
Claim 18: Bhatnagar in view of Strong, Colbert Medwick, and Richardson teach the method of claim 1 (described above), wherein Medwick further teaches that the sacrificial coating is doped with various additives including colorants, like iron oxides, and powders flakes or foils of metallic composition (See, for example, [0051]). But they do not explicitly provide further details on the metals, so it does not explicitly teach the sacrificial coating is doped with manganese. Bernhard teaches a method of pigmenting coatings with metallic species (See, for example, abstract, col 1 lines 7-48). Bernhard further teaches the addition of manganese with the pigment improves the light fastness / resistance and further can provide for attractive two-color effects (See, for example, col 1 lines 1-48 and col 3 lines 28-51). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated manganese with the colorant in the method of Bhatnagar in view of Strong, Colbert, Medwick and Richardson as manganese coated pigment achieves the predictable result of a colorant, and further provides benefits with respect to color fastness, and attractive two-color effects, and since where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Bhatnagar in view of Strong, Colbert Medwick, and Richardson as applied to claim 1 above, and further in view of Zhou et al (US 2003/0130149; hereafter Zhou).
Claim 45: Bhatnagar in view of Strong, Colbert Medwick, and Richardson teach the method of claim 1 (described above), wherein Medwick further teaches that the sacrificial coating is preferably polymeric, and further can be doped with various additives including colorants, like iron oxides, and powders flakes or foils of metallic composition and is removed by washing with aqueous, non-aqueous, organic, alkaline, or acidic solvents (See for example, [0031-32], [0051]). But they do not explicitly teach the wash solution further includes a claimed chelating agent. Zhou teaches a method concerned with the removal of temporary polymer masks / coatings and etch residue (See, for example, abstract, [0001]). Zhou further teaches wherein its cleaning compositions are intended for use on substrates including functional layers, without harming any previously applied layers (See, for example, abstract, [0001], [0006]). Zhou further teaches wherein chelating agent additives, such as EDTA, is well known in the art to improve the effectiveness of the cleaner to reduce surface metal contamination, remove etch residue and remaining temporary coating materials (See, for example, [0019], [0047], [0051], [0056], [0069], [0087]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an EDTA chelating agent into the first wash operation as it would predictably improve the effectiveness of the cleaner to reduce surface metal contamination and remove etch residue.
Response to Arguments
Applicant’s arguments that the references do not teach the newly added limitations are unconvincing.
The examiner agrees with Applicant (and thus Applicant’s own incorporated by reference equivalents: PCT Application No. 2013090209 and PCT Patent application No. PCT/US2012/068817 (see Applicant’s PGPUB at [0034]) that “the edge deletion in Strong would remove any sacrificial coating if arguendo any were to exist” (see further, grounds for 112 a rejections above). However as noted in the rejection above the sacrificial layer is not yet present during the active deletion, thus Applicant’s argument is moot. As noted in the rejection above, per the collective teaching of the combination of prior art, the overall process flow comprises: receive TECL coated substrate ->cut / size -> temper -> polish -> edge deletion -> wash / clean -> apply first sacrificial coating. As the application of the sacrificial coating is applied over the entire substrate, and as it occurs after edge portions of the TECL have been deleted, the amended limitation of “wherein removing all the portion of the first transparent electronically conductive layer comprises leaving a portion of the first sacrificial coating on the edge portion of the substrate;” is met; (the above sub-processes of “edge deletion -> wash / clean -> apply first sacrificial coating” are interpreted as occurring within the claimed “removing all of the portion of the first transparent electronically conductive layer” process step, as upon completion of the removing step, the 1st sacrificial layer would reside on all portions (both the edge portions and the remaining portions).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
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