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 .
Priority
Although priority claims to provisional application 62/783,787 is acknowledged, this provisional application does not provide adequate support for the limitation that ratio of first glass thickness to combined thickness of all glass panes > 0.2 + (combined thickness of all glass panes, in mm)/50 mm. While it is conceded that the claimed ratio is obvious in view of the disclosure in the provisional application, Applicant is reminded that “the mere fact that a certain thing may result from a given set of circumstances is not sufficient” for demonstration of support. In the instant case, while the claimed inequality may be derived from the respective thicknesses, there is no recognition in the provisional application that the ratio of the first glass thickness to total glass thickness has to exceed a certain threshold.
Claim Objections
Claim 1 is objected to, as the recitation “at least one of … and” is not proper for elements recited in the alternative. This should be replaced with statements that expressly recite elements in the alternative (e.g. the first pane or the third pane includes).
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, 3, 8-10, and 23-26 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2021/0140229 A1 (“Moschini”) in view of WO 2018/078248 A1 (referenced below using its English-language counterpart publication U.S. 2019/0284868 A1, “Schweitzer”) and optionally over teachings known in the art of laminated IGUs as evidenced by U.S. 2017/0028686 A1 (“Wilson”) and EP 2,318,206 B1 (referenced below using its machine translation, “EP ‘206 MT”).
Considering claims 1, 3, 8, and 23-26, Moschini discloses a triple-pane insulated glazing unit (IGU) having 1) a laminated external glass pane, 2) a monolithic external glass pane, and 3) an intermediate glass pane 2s located between the two external glass panes. (Moschini ¶ 0039 and Fig. 1M, reproduced infra). It is noted that the configuration of Fig. 1M of Moschini makes references to configurations in Figs. 1C, 1D, and 1E, each of which showing a respective IGU having a laminated glass pane. Moschini is analogous, as it is from the same field of endeavor as that of the instant application (IGU).
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While it may be inferred from Fig. 1M of Moschini that the thickness of the laminated external glass pane > thickness of the monolithic external glass pane > thickness of the intermediate glass pane, this is not expressly stated in the reference; nor are actual thickness ranges provided. However, in the art of IGUs, in particular ones having three panes of glasses, usage of external panes, each of which having thickness independently being 2-6 mm and a single internal pane having thickness of 0.1-2 mm is taught in Schweitzer. (Schweitzer ¶¶ 0029-0037).
As the laminated external pane in Moschini is effectively made of two monolithic panes joined by an interlayer, Moschini as modified by Schweitzer has 1) laminated external pane made of two glass layers, each having thickness of 2-3 mm 2) a monolithic external glass pane having thickness of 2-3 mm, and 3) an intermediate glass pane having thickness of 0.1-2 mm. The modification of Moschini by Schweitzer is considered obvious, as Moschini otherwise sets forth the general parameters without specifying the exact thicknesses, and Schweitzer remedies the deficiency of Moschini by showing what is generally known about pane thicknesses of triple-paned IGUs.
The minimum thickness of the laminated external pane is 2 × 2 mm + thickness of the interlayer. It is readily clear that the corresponding ratio from the prior art would overlap the claimed range, given that the minimum thickness ratio attributed to this laminated external pane is from 4 mm external laminated pane (not accounting for thickness of interlayer)/ 2 mm intermediate pane/ 3 mm monolithic pane, which yields a ratio of 44%. However, if lower values for the other panes are used (e.g. 0.5 mm for the intermediate pane and 2 mm for the monolithic external pane), the resulting ratio is 61%, and this ratio could be further increased by increasing the thickness of the laminated external pane. Furthermore, this value of 61% exceeds (0.2 + 7.13÷50) or 0.34. Selecting respective thicknesses that result in a ratio that overlaps the claimed ratio is obvious, 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).
Furthermore, when accounting for the thickness of the interlayer used to join the panes of the laminated external pane, this will further increase the ratio taken up by the laminated external pane, with standard thicknesses for such interlayers is at least 0.3 mm. (See ¶ 0076 of Wilson or alternatively ¶ 0040 of EP ‘206 MT). In which case, a laminated external pane having total thickness of 4.75 mm, when paired with a 0.75 mm thick intermediate pane and a 2 mm monolithic external pane, accounts for 63% of total pane thickness.
Moschini in view of Schweitzer or optionally over know teachings in the art renders obvious claims 1, 3, 8, and 23-26.
Considering claims 9 and 10, as the IGU of Moschini is formed in a manner similar to the way the IGU of the instant application is formed, the IGU of Moschini is considered to possess the claimed edge seal force. In particular, the IGUs of the instant application having requisite weight ratios are shown to possess the claimed edge seal force.
Claim 2 is rejected under 35 U.S.C. 103 as unpatentable over U.S. 2021/0140229 A1 (“Moschini”) in view of WO 2018/078248 A1 (referenced below using its English-language counterpart publication U.S. 2019/0284868 A1, “Schweitzer”) and optionally over teachings known in the art of laminated IGUs as evidenced by U.S. 2017/0028686 A1 (“Wilson”) and EP 2,318,206 B1 (referenced below using its machine translation, “EP ‘206 MT”), as applied to claim 1 above, and further in view of EP 2,318,206 B1.
Considering claim 2, EP ‘206 teaches that a single monolithic pane can replaced with a laminated pane of glass/ interlayer/ glass laminate, wherein the interlayer is a PVB layer having thickness of 0.38 mm. (EP ‘206 MT ¶¶ 0011, 0012, and 0045-0046). As such, replacing the monolithic external pane of Moschini with a laminated pane is deemed obvious.
Claims 4-7 and 21 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2021/0140229 A1 (“Moschini”) in view of WO 2018/078248 A1 (referenced below using its English-language counterpart publication U.S. 2019/0284868 A1, “Schweitzer”) and optionally over teachings known in the art of laminated IGUs as evidenced by U.S. 2017/0028686 A1 (“Wilson”) and EP 2,318,206 B1 (referenced below using its machine translation, “EP ‘206 MT”), as applied to claim 1 above, and further in view of U.S. 2017/0119176 A1 (“Christiansen”).
Considering claims 4-6, neither Moschini nor Schweitzer specifies respective compositions of each glass pane used. Christiansen teaches a triple-paned IGU having Corning Willow, Eagle XG, and Lotus glasses for the intermediate glass pane. (Christiansen ¶ 0029). It is noted that Corning Willow, Eagle XG, and Lotus glasses have respective CTEs of 30-50×10-7/ °C, 30-35 × 10-7/ °C, and 35 × 10-7/ °C in the range of 0 to 300 °C. (See respective datasheets for the three glasses). Given that the three types of commercially available glasses represent three of the four specifically disclosed glasses, the usage of any of the three is considered to have been disclosed with sufficient specificity. Furthermore, Eagle XG, Willow, and Lotus glasses are alumina borosilicate glasses, thus reading on claim 5. Christiansen further discloses that either of the external glass panes may be chemically strengthened. (Id. ¶ 0026).
Given that Christiansen is also directed to a triple-paned IGU, using the respective glass compositions taught therein for the triple-paned IGU of Moschini is obvious. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
Considering claim 7, Christiansen discloses that the central pane may be a chemically strengthened glass. (Christiansen ¶¶ 0029 and 0035). As chemical strengthening is a treatment resulting in a glass having surface refractive index different from refractive index at the center of the glass, this is considered to be surface features.
Considering claim 21, soda lime is known to have a CTE of ~89×10-7/K. (See U.S. 2016/0263969 A1 Tables 1 and 2). As each external panes can be a laminated pane containing soda lime glass, Moschini modified by Schweitzer and Christiansen reads on claim 21.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2021/0140229 A1 (“Moschini”) in view of WO 2018/078248 A1 (referenced below using its English-language counterpart publication U.S. 2019/0284868 A1, “Schweitzer”) and optionally over teachings known in the art of laminated IGUs as evidenced by U.S. 2017/0028686 A1 (“Wilson”) and EP 2,318,206 B1 (referenced below using its machine translation, “EP ‘206 MT”), as applied to claim 1 above, and further in view of WO 2017/011268 A1 (“Mathew”).
This is an alternate rejection of claim 7.
Considering claim 7, Moschini differs from the claimed invention, as it is silent re: the provision of light scattering features on the central glass pane. However, in the art of IGUs, it is known to include a patterned coating that scatters light, wherein the patterned coating is located on an interior pane of a triple-paned IGU. (Mathew ¶¶ 0016-0017 and 0089; and Figs. 4R-4T). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included such light scattering patterned coating on the third glass pane of Mathew in order to reduce occurrence of bird strikes.
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.
Claim 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. 11,312,658. Although the claims at issue are not identical, they are not patentably distinct from each other because the combination of claims 1, 6, 7, 9, and 14 of the ‘658 patent recites all limitations recited in claims 1-5.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5-7, and 9 of copending Application No. 17/710,162 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the combination of claims 1, 2, 4, 5-7, and 9 of the ‘162 Application (now passed to issuance) recites all limitations recited in claims 1-5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8, and 9 of copending Application No. 17/264,020 (reference application) in view of Moschini. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 8, and 9 of the ‘020 Application recite all limitations recited in claims 1-5 except for the greater thickness of one of the external panes. However, this feature is obvious in view of the teachings of Moschini.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments against the rejections relying upon at least Christiansen have been considered. In view of amendments to claim 1, these rejections have been withdrawn, and new rejections have been instated above.
The other double patenting rejections cannot be withdrawn, as Applicant has neither filed respective terminal disclaimers nor argued against merits of the respective rejections.
Concluding Remarks
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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