DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 18 June 2026 has been entered.
Response to Amendment
The Amendment filed 18 June 2026 has been entered. Claims 1, 3 – 9, and 11 – 13 remain pending in the application.
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, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3 – 9, and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jaeger (US 2009/0324858 A1) in view of Horiguchi (JP 2000-054745 A, referencing a machine translation thereof provided with the Office Action mailed 18 December 2025).
Regarding claim 1, Jaeger discloses a glass unit (“glazing element”, e.g. “glazing element” 110: e.g. Fig. 1 – 10; ¶¶ [0010] – [0113]) comprising:
a first glass plate (a “glass pane”, e.g. a first one of “glass pane” 1, “glass pane” 2, and “glass pane” 3: e.g. Fig. 1, 4 – 9; ¶¶ [0010] – [0014], [0018] – [0021], [0032] – [0036], [0038] – [0043], [0045], [0047], [0050], [0052], [0053], [0057] – [0059], [0061]);
a second glass plate that is arranged facing the first glass plate with a predetermined interval therebetween and forms an internal space with the first glass plate (an adjacent “glass pane” to the aforementioned “glass pane” corresponding to the first glass plate to form a “space”/“gap”, e.g. “space”/“gap” 4-1, 4-2: e.g. Fig. 1, 4 – 9; ¶¶ [0010] – [0014], [0018] – [0021], [0032] – [0036], [0038] – [0043], [0045], [0047], [0050], [0052], [0053], [0057] – [0059], [0061]);
a sealing member that seals a gap at peripheral edges of the first glass plate and the second glass plate (“seal”, e.g. “seal” 6-1, 6-2: e.g. Fig. 1, 5; ¶¶ [0014], [0040], [0050] – [0054]); and
a plurality of spacers arranged between the first glass plate and the second glass plate (“spacer assemblies”, e.g. “spacer assemblies” 5: e.g. Fig. 1, 4 – 7; ¶¶ [0014] ,[0036] – [0038], [0041] – [0044], [0046] – [0049], [0058]),
wherein the glass unit includes, as glass plates forming the internal space, only the first glass plate and the second glass plate (“glass pane” 1 and “glass pane” 2 form the “space” 4-1, and “glass pane” 2 and “glass pane” 3 form “space” 4-2, where “space” 4-1 and “space” 4-2 are separate from one another; or where only “glass panes” 1, 2 are provided: e.g. Fig. 1A, 5A – 5C, 5E, 5F, 7; ¶¶ [0072], [0084] – [0093]),
the spacers are each shaped as a circular column or as a polygonal column (e.g. ¶ [0046]),
the internal space has been depressurized to a vacuum state (e.g. ¶¶ [0043], [0044], [0050], [0052], [0053]),
the spacers have a compressive strength of, e.g., greater than 350 MPa (“resistance to compression”: e.g. ¶ [0043]),
the first and second glass plates each have a thickness of 10 mm or less, e.g. 6 mm or less (e.g. ¶ [0034]),
the spacers having a thermal conductivity of 25 W/m·K or less, e.g. 5 W/m·K or less (e.g. ¶ [0044]).
With respect to expression (1) and (2), Jaeger discloses embodiments wherein the spacers are cylindrical and have a diameter smaller than 1.5 mm (e.g. ¶ [0049]) and a maximum spacing of 60 mm (e.g. ¶¶ [0037], [0038]). Accordingly, the cross-sectional area S is less than
π
d
2
2
=
π
1.5
m
m
2
2
=
0.5625
π
m
m
2
=
5625
*
10
-
4
π
m
m
2
which encompasses expression (2). From this range, a maximum for R can also be established
800
π
0.5625
π
m
m
2
+
13
=
463
m
m
which Jaeger’s range of 60 mm or less falls within, satisfying expression (1).
Although Jaeger is not explicit as to the spacers being specifically a solid circular column with flat ends or a solid polygonal column with flat ends, this feature would have been obvious in view of Horiguchi.
Horiguchi discloses spacers for glass units, wherein the spacers are shaped as solids with flat ends as this helps maintain a stable position of the spacer during assembly of the glass unit (“regular hexahedron”, i.e. a cube: e.g. Fig. 1, 6; ¶¶ [0005] – [0046]).
In one embodiment, Jaeger states the spacer can be rhombohedral or rectangular (e.g. ¶ [0046]), both of which can be understood to include cubes as a species thereof. Given Horiguchi assigns the property of stable positioning at least in part to a flat face of the spacer against a glass pane (e.g. ¶¶ [0007] – [0009], [0013] – [0016], [0025] – [0027], [0030], [0046]), similar advantages would have been understood to spacer shapes equivalent to cubes, including cylinders as Jaeger discloses (e.g. ¶¶ [0046], [0049]), on the faces thereof which are flat.
Accordingly, it would have been obvious to form Jaeger’s spacers a solid circular columns with flat ends or as a solid polygonal column with flat ends as Horiguchi suggests, the motivation being that such a configuration is useful for maintaining the position of the spacers when manufacturing the glass unit.
The range Jaeger discloses for the compressive strength lies within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Additionally, the ranges Jaeger discloses for the thickness of the first and second glass plates, thermal conductivity, and cross-sectional area S encompass the respective claimed ranges. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 3, in addition to the limitations of claim 1, Jaeger discloses the spacers are arranged in a grid pattern (e.g. ¶ [0037]).
As to expression (3), Jaeger notes discloses the distance between adjacent spacers may be 20 mm to 50 mm (e.g. ¶ [0037]). Given S is at most 0.5625π mm2 as shown in the 35 U.S.C. 103 rejection of claim 1 in view of Jaeger and Horiguchi, this yields Pmin ≤ 463 mm, which Jaeger’s previously cited range satisfies.
Regarding claim 4, Jaeger discloses a glass unit (“glazing element”, e.g. “glazing element” 110: e.g. Fig. 1 – 10; ¶¶ [0010] – [0113]) comprising:
a first glass plate (a “glass pane”, e.g. a first one of “glass pane” 1, “glass pane” 2, and “glass pane” 3: e.g. Fig. 1, 4 – 9; ¶¶ [0010] – [0014], [0018] – [0021], [0032] – [0036], [0038] – [0043], [0045], [0047], [0050], [0052], [0053], [0057] – [0059], [0061]);
a second glass plate that is arranged facing the first glass plate with a predetermined interval therebetween and forms an internal space with the first glass plate (an adjacent “glass pane” to the aforementioned “glass pane” corresponding to the first glass plate to form a “space”, e.g. “space” 4-1, 4-2: e.g. Fig. 1, 4 – 9; ¶¶ [0010] – [0014], [0018] – [0021], [0032] – [0036], [0038] – [0043], [0045], [0047], [0050], [0052], [0053], [0057] – [0059], [0061]);
a sealing member that seals a gap at peripheral edges of the first glass plate and the second glass plate (“seal”, e.g. “seal” 6-1, 6-2: e.g. Fig. 1, 5; ¶¶ [0014], [0040], [0050] – [0054]); and
a plurality of spacers arranged between the first glass plate and the second glass plate (“spacer assemblies”, e.g. “spacer assemblies” 5: e.g. Fig. 1, 4 – 7; ¶¶ [0014] ,[0036] – [0038], [0041] – [0044], [0046] – [0049], [0058]),
wherein the glass unit includes, as glass plates forming the internal space, only the first glass plate and the second glass plate (“glass pane” 1 and “glass pane” 2 form the “space” 4-1, and “glass pane” 2 and “glass pane” 3 form “space” 4-2, where “space” 4-1 and “space” 4-2 are separate from one another; or where only “glass panes” 1, 2 are provided: e.g. Fig. 1A, 5A – 5C, 5E, 5F, 7; ¶¶ [0072], [0084] – [0093]),
the spacers are each shaped as a circular column or as a polygonal column (e.g. ¶ [0046]),
the internal space has been depressurized to a vacuum state (e.g. ¶¶ [0043], [0044], [0050], [0052], [0053]),
the spacers have a compressive strength of, e.g., greater than 350 MPa (“resistance to compression”: e.g. ¶ [0043]),
the first and second glass plates each have a thickness of 10 mm or less, e.g. 6 mm or less (e.g. ¶ [0034]),
the spacers having a thermal conductivity of 25 W/m·K or less, e.g. 5 W/m·K or less (e.g. ¶ [0044]).
With respect to expression (4) and (5), Jaeger discloses embodiments wherein the spacers are cylindrical and have an outer diameter Φ (mm) smaller than 1.5 mm (e.g. ¶ [0049]), which encompasses expression (5). Accordingly, expression (4) results in P ≤ 155 mm, which encompasses Jaeger pitch P (mm) of 20 to 60 mm of the spacers (e.g. ¶¶ [0037], [0038]), thus satisfying expression (4).
Although Jaeger is not explicit as to the spacers being specifically a solid circular column with flat ends or a solid polygonal column with flat ends, this feature would have been obvious in view of Horiguchi.
Horiguchi discloses spacers for glass units, wherein the spacers are shaped as solids with flat ends as this helps maintain a stable position of the spacer during assembly of the glass unit (“regular hexahedron”, i.e. a cube: e.g. Fig. 1, 6; ¶¶ [0005] – [0046]).
In one embodiment, Jaeger states the spacer can be rhombohedral or rectangular (e.g. ¶ [0046]), both of which can be understood to include cubes as a species thereof. Given Horiguchi assigns the property of stable positioning at least in part to a flat face of the spacer against a glass pane (e.g. ¶¶ [0007] – [0009], [0013] – [0016], [0025] – [0027], [0030], [0046]), similar advantages would have been understood to spacer shapes equivalent to cubes, including cylinders as Jaeger discloses (e.g. ¶¶ [0046], [0049]), on the faces thereof which are flat.
Accordingly, it would have been obvious to form Jaeger’s spacers a solid circular columns with flat ends or as a solid polygonal column with flat ends as Horiguchi suggests, the motivation being that such a configuration is useful for maintaining the position of the spacers when manufacturing the glass unit.
The range Jaeger discloses for the compressive strength lies within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Additionally, the ranges Jaeger discloses for the thickness of the first and second glass plates, thermal conductivity, and cross-sectional area S encompass the respective claimed ranges. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 5, in addition to the limitations of claim 1, Jaeger discloses an outer diameter Φ (mm) of the spacers is 1.5 mm or less (e.g. ¶ [0049]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 6, in addition to the limitations of claim 5, Jaeger discloses a pitch P (mm) of the spacers is 20 mm or more and 60 mm or less (e.g. ¶¶ [0037], [0038]), and a compressive strength of the spacers is 1000 MPa or more (e.g. ¶ [0043]).
Jaeger’s pitch P overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Meanwhile, Jaeger’s compressive strength encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Jaeger discloses an outer diameter Φ (mm) of the spacers is 1.5 mm or less (e.g. ¶ [0049]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Jaeger discloses an outer diameter Φ (mm) of the spacers is 1.5 mm or less (e.g. ¶ [0049]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 8, Jaeger discloses a compressive strength of the spacers is 1000 MPa or more (e.g. ¶ [0043]), which encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 11, in addition to the limitations of claim 1, Jaeger discloses a pitch P (mm of the spacers is 20 mm or more and 60 mm or less (e.g. ¶¶ [0037], [0038]), which is within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 12, in addition to the limitations of claim 1, Jaeger discloses the spacers are formed using a material that does not contain a carbon component (species are listed which do not contain carbon: e.g. ¶¶ [0043], [0044]).
Regarding claim 13, although Jaeger and Horiguchi are not explicit as to a fracture toughness value KIC of the spacers is 1.0 MPa·m1/2, as noted in the 35 U.S.C. 103 rejection of claim 1 in view of Jaeger and Horiguchi, Jaeger and Horiguchi provide spacers having substantially the same structure as claimed. Furthermore, Jaeger also provides the same compositions for the spacers which are thermally insulating (such as zirconium oxide: e.g. ¶¶ [0043], [0044]) as the instant specification (mentions zirconia, i.e. zirconium oxide: e.g. ¶ [0040]).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I. Therefore, a prima facie case of obviousness exists regarding the fracture toughness.
Response to Arguments
Applicant’s arguments, see pp. 5 – 9, filed 18 June 2026, with respect to the rejections of claims 1 and 3 – 13 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant asserts patentability, in a first respect, on the basis that the claimed glass units require a two-plate configuration whereas Jaeger relates to solving issues with three-plate configurations.
As to the interpretation of claims 1 and 4, the examiner notes claims 1 and 4 do not limit the glass units to two glass plates.
First, both claims 1 and 4 use “comprising” as the transitional phrase between the preamble and the body. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP § 2111.03, I.
Second, claims 1 and 4 each recite “the glass unit includes, as glass plates forming the internal space, only the first glass plate and the second glass plate” (cl. 1, ll. 8 – 9; cl. 4, ll. 8 – 9). The recitation limits the number of glass plates forming the internal space, not the number of glass plates in the overall glass unit.
Accordingly, more that one glass plate may be included in the glass units as claimed.
Returning to Jaeger, Jaeger discloses embodiments where only two glass plates are provided (e.g. Fig. 7; ¶¶ [0072], [0084] – [0093]). However, even where three glass plates are provided with two internal spaces (e.g. Fig. 1A, 5A – 5C, 5E, 5F), the fact that the two internal spaces are separate from one another means that each internal space is formed by only two glass plates, as required of the claim. Thus, regardless of the number of glass plates in the glass unit, Jaeger describes the highlighted feature of the glass unit including, as glass plates forming the internal space, only the first glass plate and the second glass plate.
In response to Applicant’s argument that the claimed glass units possess improved suppression of cracking of the glass plates and improved sound insulation, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Moreover, it should be noted no claim currently specifies any particular requirement for cracking suppression or sound insulation properties.
“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See MPEP § 2111.01, II.
Thus, the claims should not be interpreted to include any such cracking suppression or sound insulation properties as Applicant asserts.
In regard to R and S in claim 1, Applicant asserts Jaeger fails to simultaneously teach these features. Applicant makes similar assertions regarding P and Φ in claim 4.
With respect to claim 1, Applicant asserts Jaeger’s example wherein a diameter of 0.5 mm (corresponding to an S of 625 * 10-4π mm2) for the spacers exceeds the upper limit of S in claim 1. As Applicant acknowledges (see p. 8), this is an example with Jaeger’s disclosure.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also MPEP § 2123, I. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See also MPEP § 2123, II.
More generally, Jaeger relates to diameters to smaller than 1.5 mm (e.g. ¶ [0049]), which correspond to an area of smaller than 5625 * 10-4π mm2. This encompasses the claimed range for (2) in claim 1. Without considering other disclosures in Jaeger, this implies a maximum for R to be 463 mm. Jaeger’s disclosed maximum for R can be 60 mm (e.g. ¶ [0038]) falls squarely within this range.
Given claim 1 defines S to be within the range 25*10-4π to 400*10-4π (expression 2), R≤(800/π)*S+13 (expression 1) is thus set in claim 1 to be a maximum of 64 mm.
Accordingly, Jaeger encompasses and/or overlaps expressions (1) and (2) as a combination in claim 1.
In regard to P and Φ in claim 4, Jaeger discloses an outer diameter Φ (mm) smaller than 1.5 mm (e.g. ¶ [0049]), which encompasses expression (5). Without considering other disclosures in Jaeger, this implies P ≤ 155 mm. Jaeger disclosed P of 20 to 60 mm (e.g. ¶¶ [0037], [0038]) falls squarely within this range.
Given claim 4 defines Φ to be within the range 0.1 to 0.4 (expression 5), P≤100*Φ+5 (expression 5) is thus set in claim 4 to a maximum of 45 mm. Accordingly, Jaeger encompasses and/or overlaps expressions (4) and (5) as a combination in claim 4.
With further respect to R, S, P, and Φ, Jaeger acknowledges the actual size of the spacers is variable within these ranges to attain desired properties:
[0036] Spacer assemblies 5 are arranged across the entire area in the spaces 4-1, 4-2 between the glass panes 1, 2, 3. The user is required to define the quantity, size, shape, material to be used and the distribution of the spacer assemblies as well as the distances between the glass panes in such a way that the strength of the glazing system is adequate for the practical application, the glass panes do not hit one another as a result of the exposure to compressive forces and other mechanical and/or thermal stresses, the glass surfaces are not damaged or destroyed and potential cold bridges are minimized. In addition, it should be taken into account that the spacer assemblies 5 are aesthetically appealing. The spacer assemblies 5 may be designed in such a way that the positions taken up by them are virtually invisible to the naked eye and do not have a distracting effect on the user with respect to their reflexion and color.
Additionally, Jaeger mentions sound/noise insulation and protection as a goal of various embodiments of their glass units (e.g. ¶¶ [0034], [0094], [0097], [0098], [0111]). Accordingly, the overlapping and/or encompassing of Jaeger’s ranges for R, S, P, and Φ are understood to serve the same purposes Applicant asserts of the claimed glass units. As such, it is not a hindsight reconstruction of Jaeger’s disclosure to arrive at the claimed invention.
Applicant’s mentions Horiguchi in the context of not resolving asserted deficiencies of Jaeger’s disclosure. As such, the examiner finds the combination of Jaeger and Horiguchi to provide the claimed glass units for the reasons outlined above.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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