DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
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.
Claim 17 is 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 17 requires that the film region which is substantially identical to the first film region is formed on the first surface of the glass plate. Note that Applicant’s specification only provides support for a film region on the second glass plate and does not disclose a substantially identical film region. Additionally, Applicant has not provided a citation to the specification that provides support for the amendment.
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.
Claims 1, 3-10, 15-17 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Rousselet et al. (US 2015/0343884).
Regarding claim 1, Rousselet discloses a glass pane with an outer face and an inner face and at least one transparent electrically conductive coating, which is arranged on the outer face and/or the inner face, see abstract and [0037]. The electrically conductive coating preferably has particularly low emissivity (low-E) [0048]. Additionally, the reference discloses that the pane is optimized for the transmission of mobile phone radiation, which corresponds to radio wave transmittance [0099].
The reference further discloses that the electrically conductive coating is partially de-coated in a plurality of regions, which corresponds to a plurality of non-continuous islands separated by a plurality of gaps with substantially the same size and shape, see Fig. 3A and [0107].
While the reference does not specifically disclose the claimed radio wave transmittance, the reference does disclose adjusting the distance h and the line width d in order for transmission attenuation [0129-0130]. Note that wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality. MPEP 2144.05 II. As such, it would have been obvious to one of ordinary skill in the art to adjust distance and line width of the features in order to achieve the desired transmission.
Regarding claim 3, the reference discloses that the electrically conductive coating can be arranged on a carrier film, which is preferably laminated inside the first and second pane via other intermediate layers [0013]. Note that the electrically conductive coating corresponds to the claimed shield layer, and the carrier film corresponds to the claimed base layer. Additionally, the reference discloses the face of the glass as exposed in the gaps between the regions (islands), see Fig. 3A and [0100].
Regarding claim 4, the reference discloses that the electrically conductive coating can be arranged on a carrier film, which is preferably laminated inside the first and second pane via other intermediate layers [0013]. Note that the electrically conductive coating corresponds to the claimed shield layer, and the carrier film corresponds to the claimed base layer. Additionally, the reference discloses the intermediate layer as exposed in the gaps between the regions (islands), see Fig. 4 and [0114].
Regarding claims 5 and 6, Rousselet discloses a plurality of non-continuous islands separated by a plurality of gaps, see above discussion and Fig. 3A. While the reference does not specifically disclose the claimed island dimension and gap width, the reference does disclose optimizing those values based on the formation of resonances and frequency shifts [0112]. Wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality. MPEP 2144.05 II. As such, it would have been obvious to one of ordinary skill in the art to adjust the maximum dimension and gap width in order to adapt to the formation of resonances and frequency shifts.
Regarding claim 7, the reference discloses a second film region formed on the surface which the first film region is formed and with the second film region including a second low-E film and not having radio wave transmittance, see Fig. 1 and [0097].
Regarding claim 8, the reference discloses that the second film region surrounds the first film region, see Fig. 1.
Regarding claim 9, the reference discloses the second low-E film as the same material as the first low-E and as not having any gaps, see Fig. 1 and [0097].
Regarding claim 10, the reference discloses an intermediate layer between a first pane and a second pane, which is considered to disclose a gap layer between the two panes, see Fig. 3B and [0104]. Additionally, the reference discloses the panes as comprising glass [0099].
Regarding claim 15, the reference discloses the first film region is formed larger than a rectangle with a side that is 33 mm [0111].
Regarding claim 16, the reference discloses a glass pane with an outer face and an inner face and at least one transparent electrically conductive coating, which is arranged on the outer face and/or the inner face, which corresponds to a first film region on the second surface of the first glass pane, see abstract and [0037].
Regarding claim 17, the reference discloses the transparent, electrically conductive coating can also be arranged between the intermediate layer and the second glass pane [0013]. While the reference does not specifically disclose that the conductive coating is substantially identical to the first conductive coating, it would have been obvious to one of ordinary skill in the art for the second conductive coating to be identical in order to have the same transmission.
Regarding claim 20, the reference discloses that the electrically conductive coating can include a plurality of individual layers, which include a layer of silver [0044-0046].
Regarding claim 21, the reference discloses the thickness of the transparent electrically conductive coating is from 10 nm to 5 microns, which overlaps the claimed range [0047]; see MPEP 2144.05 I regarding overlapping ranges.
Regarding claim 22, the reference discloses that the transparent electrically conductive coating can include a plurality of individual layers, in particular at least one metal layer [0044]. Given the reference also discloses the metal layer as silver, the reference is considered to render obvious two silver layers.
Note that claim 22 defines the product by how the product was made, the two layers are laminated. Thus claim 22 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure with two layers. The reference suggests such a product.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Rousselet et al. (US 2015/0343884) as applied to claim 10 above, and further in view of Holtstiege et al. (US 2021/0256230).
Rousselet discloses the glass body of claim 10 comprising a spacer between a first and a second glass plate. The reference, however, fails to disclose an antenna region on the second surface of the second glass plate.
Holtstiege discloses a vehicle window that includes a first glass pane, a transponder having an antenna, and an outer glass pane, see abstract and [0074]. Additionally, the reference discloses that the antenna is mounted on a surface of the first glass pane, a surface of the second glass pane or between the first and second glass pane [0048]. Additionally, the reference discloses that the transponder can be arranged in the lower, lateral region of the vehicle window or other locations of the vehicle window, for example, in the upper, central region of the vehicle window [0067]. Further, it is important to find a suitable position with a good connection to the reader [0067].
It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a transponder with an antenna on the surface of the second glass pane of Rousselet in order to provide identification to an external reader [0004]. While the reference does not specifically disclose the size of the transponder (i.e. antenna region), changes in size are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed size is significant. MPEP 2144.04 IV. As such, it would have been obvious to one of ordinary skill in the art to use different sizes to ensure communication with an external reader, including the claimed size. Additionally, while the reference does not specifically disclose the claimed location of the transponder, it would have been obvious to one of ordinary skill in the art to position the transponder where there is a good connection with the external reader.
Response to Arguments
Applicant's arguments filed September 26, 2025 have been fully considered but they are not persuasive.
Applicant argues that the islands in Rousselet do not have substantially the same size and shape as claimed. Examiner notes, however, that Rousselet Figure 3A is similar to the Applicant’s Fig. 3, which provides Applicant support for the claimed amendment. As such, it is unclear how Rousselet lacks the claimed feature when the figures are similar regarding shape and size.
Applicant further argues that the present invention achieves uniform and stable transmission because of the islands being substantially the same shape and size. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., uniform and stable transmission) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, it is unclear how a coating with islands having uniform shape and size as disclosed by Rousselet would lack the uniform and stable transmission while Applicant’s coating would have the uniform transmission.
Lastly, Applicant argues that Rousselet fails to disclose the claimed gap. Examiner notes that any space between the first and second glass panes is considered a gap whether filled or unfilled.
As such, the rejections under 35 U.S.C. 103 over Rousselet and Rousselet in view of Holtstiege are respectfully maintained.
Conclusion
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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/Primary Examiner, Art Unit 1783