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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 December 2025 has been entered.
Claim Objections
While it is noted that each spacer can be integrally formed with the holder, the spacers are not integrally formed with each other. As such, the recitation of “where the first spacer and the second spacer are integrally formed” is objected to.
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 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 1-4, 6-8, 11, 20, and 26-29 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2017/0119176 A1 (“Christiansen”, cited in IDS) and U.S. 2012/0297707 A1 (“Lenz”) as evidenced by product data sheets on Corning Eagle XG glass furnished by Applicant during the prosecution of U.S. 15/318,495 and NPL on optical properties of soda-lime glass (“Synowicki”).
Considering claims 1-3, 8, 26, and 27, Christiansen discloses an IGU having first and second glass panes forming opposing external surfaces of the IGU and a third interior glass pane located between the first and second glass panes, wherein there is a) a sealed gap between the first glass pane and the third glass pane and b) another sealed gap between the second glass pane and the third glass pane. (Christiansen clms. 1 and 2 and ¶ 0029). Christiansen is analogous, as it is from the same field of endeavor as that of the instant application (IGU).
Christiansen notes that in particular embodiments, each of the first and second glass panes are thick glass panes having thickness of “about 1.7 mm to about 3.2 mm or more” and made of soda lime glass, and that the third glass pane is a thin glass pane made of a boro-aluminosilicate such as Eagle XG and having thickness of ~0.1 to ~0.7 mm. (Christiansen ¶¶ 0026 and 0029, emphasis added). It is noted that about 1.7 to about 3.2 mm or more overlaps the claimed range of ≥ 2 mm (and other ranges recited in claims 26 and 27), therefore reading on the ranges recited in claims 1, 26, and 27. Similarly, ~0.1 to ~0.7 mm overlaps each of the ranges required of the intermediate glass pane as respectively recited in claims 1, 26, and 27. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
It is noted that Corning Eagle XG, has CTEs of 30-35 × 10-7/ °C in the range of 0 to 300 °C. (See datasheet submitted by Applicant during the prosecution of U.S. 15/318,495). Given that this commercially available glass represents one of the four specifically disclosed glasses, its usage is considered to have been disclosed with sufficient specificity. Were this finding of sufficient specificity to be contested (which is not conceded), then the selection of Eagle XG glass would have been obvious in view of express guidelines provided in Christiansen.
The thickness relationship disclosed thus read on the limitation that the intermediate glass pane is thinner than each of the first and second glass panes. Furthermore, it is abundantly clear that the third glass pane of Christiansen is made of a material different from each of the first and second glass panes. As soda lime glass in general has CTE ~ 90 × 10-7/ °C, the CTE of the third glass pane is less than that of each of the first and second glass panes. Lastly, as the third glass pane is made of Corning Eagle XG, the limitation of a boro-aluminosilicate glass (as required by claim 8) is met.
Re: the claimed breakable edge strength, it is hereby noted that the types of glasses used for each pane in the IGU of Christiansen are exactly the same type used in the Instant Application. As discussed above, the panes constituting the exterior surfaces of the triple-paned IGU of Christiansen are each made of soda lime glass, and the central thinner pane is made of Corning Eagle XG glass (a boro-aluminosilicate glass). This exact configuration is used in the preferred examples of the Instant Application. (See Table 3 of Instant Application). As edge strength is a property of respective glasses per se, it naturally follows that when the prior art uses glasses that are exactly the same as those used in the Instant Application, the glasses of the prior art necessarily possess characteristics possessed by the glasses used in the Instant Application, especially as the Instant Application does not state that the respective glass plates are further modified (e.g. edge-polished) to have the requisite edge strength. This is further attested by information submitted by Applicant, showing that Eagle XG possessing edge strength greater than 80 MPa at 0.8% probability of failure, and this value is greater than the value of 40 MPa for soda lime glass.
Christiansen differs from the claimed invention, as it does not disclose the usage of spacers and a holder, wherein each spacer is integrated with the holder. However, the claimed spacers and holder are both well-known features in the art of IGUs. In particular, Lenz teaches the usage of an edge bracket (viz. frame) having integral therewith portions that serve to space adjacent glass panes, wherein the edge bracket has a base that covers minor surfaces of each glass pane and peripheral outer surfaces of each exterior glass pane. (Lenz ¶¶ 0055-0059 and 0068-0069, and Figs. 3 and 8, both reproduced infra).
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In particular for the embodiment discussed in ¶¶ 0055-0059 of the reference, Lenz teaches the formation of cavity and/or recesses, with the particular configuration illustrated having one cavity (between panes 2b and 2c) and one recess (between panes 2a and 2b). While this illustrated configuration reads on the requirement of holder and spacers being integrally formed, it is clear that the broader teachings of Lenz also extend to a bracket having two cavities, one between panes 2b and 2c and the other between panes 2a and 2b.
It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have applied the spacer and frames of Lenz to the IGU of Christiansen, as this allows the IGU to be affixed to other objects and be used as a window or door. (Id. ¶¶ 0002-0008). Alternatively, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have utilized the glass panes in Christiansen for the glasses in Lenz, as the usage of a central thin glass (as taught in Christiansen) leads to improved thermal insulation. (Christiansen ¶ 0030). Christiansen in view of Lenz or Lenz in view of Christiansen renders obvious claims 1-3, 8, 26, and 27.
Considering claim 4, Christiansen does not disclose strengthening of the third glass pane. Furthermore, as Corning Eagle XG does not contain any alkali oxide, it cannot undergo chemical strengthening.
Considering claims 6 and 29, these claimed features (re: intermediate pane having higher solar transmittance and lower solar absorbance) are readily apparent when comparing the optical transmission spectrum of Eagle XG glass to that of soda lime glass, with the latter having generally lower transmission (and higher absorbance), in particular around 900 – 1,300 nm.
Considering claim 7, soda lime glass is known to have a density of 2.5 g/cm3, while Corning Eagle XG has density of 2.3 – 2.4 g/cm3. Thus, the third glass pane has a density lower than that of each of the first and second glass panes.
Considering claim 11, Lenz teaches that an IGU comprising the holder and spacer taught therein can be used as part of a building. (Lenz ¶¶ 0002-0008).
Considering claim 20, following the rationale set forth in ¶ 10 above, and noting that soda-lime glass is stated to have breakable edge strength of 39 MPa while boro-aluminosilicate glass (broad genus to which Eagle XG belongs) has breakable edge strength of 94.5 MPa, the limitations of these two claims are deemed obvious.
Considering claim 28, direct contact between the bracket and minor surface of each pane is expressly shown in Fig. 3 of Lenz. This is also in direct contrast to embodiments from Lenz having an intervening adhesive (e.g. Fig. 2). Furthermore, each of Figs. 3 and 8 show direct contact between 1) a (base) portion of the bracket and each minor surface of each exterior pane and between 2) a peripheral portion of the bracket and at least one portion of the exterior major surface near a periphery of the respective exterior pane.
Double Patenting Rejection
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,312,658 in view of Christiansen and Lenz. The claims of the ‘658 Patent recite all limitations recited in claims 1-4 and 6-8 of the instant application except those concerning usage of soda lime glass, the spacer and the holder. In particular, claim 3 of the ‘658 patent recites usage of a boro-aluminosilicate glass (having optical transmission comparable to that of Eagle XG glasses), and usage of soda lime glasses would have been obvious. Furthermore, the spacer and the holder are obvious in view of the teaching of Lenz discussed above.
Claims 1-4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 9-14, and 20 of copending Application No. 17/710,162 (reference application, since passed to issuance) in view of Lenz. The claims of the ‘162 Application recite all limitations recited in claims 1-4 and 6-8 of the instant application except those concerning the spacer and the holder. In particular, claim 2 of the ‘162 application recites usage of a boro-aluminosilicate glass (having optical transmission comparable to that of Willow and Eagle XG glasses), and usage of soda lime glasses would have been obvious. Furthermore, the spacer and the holder are obvious in view of the teaching of Lenz.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 5 of copending Application No. 17/414,133 (reference application) in view of Christiansen and Lenz. Claims 1, 4, and 5 of the ‘133 Application recite all limitations recited in claims 1-4 and 7-9 of the instant application except those concerning the spacer and the holder. In particular, claim 5 of the ‘133 application recites usage of a boro-aluminosilicate glass (having optical transmission comparable to that of Willow and Eagle XG glasses), and usage of soda lime glasses would have been obvious in view of Christainsen. As discussed in the prior art rejection above, the spacer and the holder are obvious in view of the teaching of Lenz.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
In view of amendments to claim 1, all previously instated rejections have been withdrawn, and new rejection have been instated above.
Insofar as applicability of Applicant’s arguments to the newly instated rejections are concerned, while it is conceded that Fig. 4 of Lenz does not show a structure in which the bracket and spacing means are integrated, such features are taught in other embodiments of Lenz as discussed above.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached on M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781