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 .
The amendment filed 11/3/2025 has been entered. Claims 1-22 and 28 have been canceled. Claims 23-27 and 29-42 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Terminal Disclaimer
The terminal disclaimer filed on 11/3/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/250233 has been reviewed and is accepted. The terminal disclaimer has been recorded. Hence, the obviousness-type double patenting rejections over Appl. No. 18/250233 as recited in the prior office action have been obviated.
Claim Rejections - 35 USC § 112
Claim 27 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 27 recites, “The coated glazing according to claim 23, wherein the third layer has a thickness of at least 100 nm, but at most 300 nm” (emphasis added), however, claim 23 from which claim 27 depends has been amended to recite, “the third layer having a thickness of at least 120 nm but at most 200 nm” on line 10, e.g., a narrower thickness range than claim 27, such that claim 27 extends the thickness of the third layer beyond the thickness required by claim 23. Hence, claim 27 not only fails to further limit claim 23 but also contradicts the “at least…but at most” thickness limitation of claim 23. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 23-27 and 29-42 are rejected under 35 U.S.C. 103 as being unpatentable over Durandeau (US2013/0129945A1), for generally the reasons discussed in detail in the prior office action, particularly with respect to the claimed invention as recited in instant claim 42 (see paragraph 27 of the prior office action), and further discussed below with respect to amended claims 23-27 and 29-41.
As discussed in the prior office action, Durandeau teaches “a glazing unit comprising a glass substrate (1) equipped on one of its faces, intended to form face 1 of said glazing unit in the use position, with a thin-film multilayer comprising, from the substrate (1), a film (2) of a transparent electrically conductive oxide, an intermediate film (3) having a refractive index lying in the range from 1.40 to 1.55 and having an optical thickness Y, and a photocatalytic film (4) the optical thickness X of which is at most 50 nm” (Abstract), wherein the intermediate film (3) is advantageously based on silica or even made of silica (Paragraph 0026, reading upon the claimed “fourth layer based on an oxide of silicon” as in instant claim 23 or “fourth layer based on silicon dioxide” as in instant claim 42), and the photocatalytic film (4) is preferably based on titanium oxide, particularly titanium dioxide that is at least partially in anatase form from the standpoint of most active phase of photocatalysis (Paragraph 0027, reading upon the claimed “fifth layer based on titanium dioxide, wherein the fifth layer is photocatalytic” as in instant claims 23 and 42). Durandeau teaches that the glass substrate (1) is preferably transparent and colorless (Paragraph 0013), reading upon the claimed “a transparent glass substrate” as in instant claim 23, and more particularly, the “clear transparent glass substrate” as in instant claim 42. Durandeau teaches that the film of a transparent electrically conductive oxide (2) or TCO is preferably a film of fluorine-doped tin oxide (SnO2:F) or a film of mixed indium tin oxide (ITO) (Paragraph 0016), and that “[o]ther films are possible, among which thin films based on mixed indium zinc oxides (called IZO), based on zinc oxide gallium-doped or -aluminum-doped, based on niobium-doped titanium oxide, based on zinc or cadmium stannate or based on antimony-doped tin oxide” (emphasis added, Paragraph 0016), reading upon and/or rendering obvious the claimed “third layer based on tin dioxide doped with antimony” as in instant claims 23 and 32 as well as the claimed “antimony doped tin dioxide” as in instant claim 42.
Durandeau also teaches that a neutralizing film, or a neutralizing multilayer of films may be placed between the substrate (1) and the film of transparent electrically conductive oxide (2), wherein in the case of a single film, its refractive index preferably lies between the refractive index of the substrate (1) and the refractive index of the film of transparent electrically conductive oxide (2) (Paragraph 0031), with the refractive index of the TCO film (2) preferably lying in the range from 1.7 to 2.5 (Paragraph 0024). Durandeau teaches that “[b]y way of nonlimiting example, it is possible to use a [single] film of mixed silicon and tin oxide (SiSnOx), of silicon oxycarbide or oxynitride, of aluminum oxide or of mixed titanium and silicon oxide”; or a “film multilayer comprising two films of high and low index, for example a TiO2/SiO2, Si3N4/SiO2 or TCO/SiO2 multilayer may also be used” wherein “in the latter case, the TCO may be the same as the one used before in the multilayer, or another TCO” (Paragraph 0031); and given that as noted above, Durandeau teaches that the TCO film may be antimony-doped tin (di)oxide, Durandeau provides a clear teaching and/or suggestion of placing a single film of silicon-tin oxide (SiSnOx) as a neutralizing film (6) reading upon and/or suggesting the claimed “first layer having a refractive index of more than 1.6…based on tin dioxide, tin oxide” as in instant claim 23, or a multilayer high/low film of TiO2/SiO2 or of antimony-doped tin (di)oxide/SiO2 as a neutralizing multilayer film (6) between the substrate (1) and the TCO film (2) such that the TiO2 “high” index film or the antimony-doped tin (di)oxide (ATO) “high” index film of the high/low index neutralizing multilayer film (6) reads upon the claimed “first layer having a refractive index of more than 1.6, wherein the first layer is based on tin dioxide, tin oxide…titanium dioxide or tantalum oxide” as in instant claim 23 and more particularly the ATO film reads upon the first layer based on tin dioxide as in instant claims 30 and 42, and the SiO2 “low” index film of the high/low neutralizing multilayer (6) reads upon the claimed “optional second layer having a refractive index that is less than the refractive index of the first layer” as in instant claim 23 and “based on an oxide of a metalloid” as in instant claim 31, as well as the claimed “second layer having a refractive index that is less than the refractive index of the first layer, wherein the second layer is based on silicon dioxide” as in instant claim 42.
Hence, based upon the above, Durandeau clearly teaches and/or suggests a layer structure of: clear transparent glass substrate (1)/silicon-tin oxide (SiSnOx) neutralizing film (6)/antimony doped tin (di)oxide TCO (2)/silica intermediate film (3)/titanium dioxide photocatalytic film (4) reading upon the four-layer coating structure and layer materials of instant claim 23 without the optional second layer; as well as a layer structure of: clear transparent glass substrate (1)/antimony-doped tin (di)oxide/SiO2 high/low neutralizing multilayer film (6)/antimony-doped tin (di)oxide TCO (2)/silica intermediate film (3)/titanium dioxide photocatalytic film (4) reading upon the claimed five-layer coating structure and layer materials of instant claims 23-24 and 42. With respect to the (geometrical) thickness limitations as recited in instant claim 23 for the third and fourth layers, e.g., the antimony-doped tin (di)oxide TCO film (2) and the intermediate film (3), respectively, Durandeau teaches that the thickness of the TCO film is adjusted depending on the nature of the film so as to obtain the desired emissivity, with example geometrical thicknesses for the preferred ITO and fluorine-doped tin oxide TCO films ranging from at least 40 nm to 200 nm for ITO and at least 120 nm to 500 nm for fluorine-doped tin oxide films (Paragraphs 0020-0022), and although Durandeau does not specify a thickness when utilizing antimony-doped tin (di)oxide as the TCO, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize similar thicknesses for the antimony-doped tin (di)oxide TCO film (2) based upon the desired emissivity as taught by Durandeau, thereby reading upon and/or suggesting the claimed third layer thickness of at least 120 nm but at most 200 nm as in instant claim 23, and the at least 100 nm but at most 300 nm as in instant claim 27 (as well as claim 42). With respect to the silica intermediate film (3) as the claimed fourth layer, Durandeau expresses the thickness of the intermediate film (3) as an optical thickness Y related to the optical thickness X of the photocatalytic film (4), expressed in nm, as 110e-0.025X ≤Y≤135e-0.018X (Abstract), wherein the optical thickness X is at most 50 nm, preferably 5 nm to 40 nm; and given that Durandeau specifically teaches working examples wherein the silica intermediate film (3) has a geometrical thickness of 40 nm (Table 3), Durandeau teaches and/or suggests a thickness reading upon the claimed at least 5 nm but at most 40 nm for the claimed fourth layer of an oxide of silicon as in instant claim 23 as well as the claimed fourth layer based on silicon dioxide as in instant claim 43. Therefore, the claimed invention as recited in instant claims 23-24, 27, 30-32, and 40 would have been obvious over the teachings of Durandeau given that Durandeau clearly teaches and/or suggests a layer structure, layer materials, and layer thicknesses as instantly claimed and given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further with respect to the layer thicknesses of the first, second, and fifth layers as recited in instant claims 25, 26, and 29, respectively, and in claim 42, Durandeau teaches that the photocatalytic film (4) as the claimed fifth layer has a geometrical thickness of advantageously at most 20 nm and preferably greater than or equal to 5 nm (Paragraph 0029), reading upon the claimed at least 5 nm but at most 35 nm as recited in instant claims 29 and 42; while the geometrical thickness of the neutralizing film or films (6) preferably lies in the range from 15 to 70 nm (Paragraph 0031), and given that Durandeau utilizes a multilayer neutralizing film comprising high/low layers of 16.5 nm/11 nm in the examples (Table 3), Durandeau provides a clear teaching and/or suggestion of first and second layer thicknesses as in instant claims 25 and 26, respectively, as well as in instant claim 42. Hence, the claimed invention as recited in instant claims 25, 26, 29, and 42 would have been obvious over the teachings of Durandeau given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claims 33-39, Durandeau teaches solar transmission properties and color coordinate values for some of the working examples with Sample 3 specifically having a* and b* values in reflection falling with the claimed ranges of instant claim 36 (Examples), and although Durandeau does not specifically teach the properties as recited in instant claims 33-35 and 37-39, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the coated glass substrate taught by Durandeau comprising the same layer structure, layer materials, and layer thicknesses as the instantly claimed invention and produced by essentially the same process would exhibit the same properties. Hence, absent any evidence to the contrary and/or any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 33-39 would have been obvious over the teachings of Durandeau.
With respect to instant claim 41, Durandeau teaches that the coated glazing may further comprise a second coating located on an opposing major surface of the glass substrate as instantly claimed, and hence, the claimed invention as recited in instant claim 41 would have been obvious over the teachings of Durandeau (Paragraph 0010-0011; Examples, see particularly Paragraphs 0067 and 0082; Claim 14).
Response to Arguments
Applicant's arguments filed 11/3/2025 have been fully considered but they are not persuasive with respect to the teachings of Durandeau as applied above to the amended claims as well as applied to previously presented claim 42. The Applicant first argues that the layer structure of example 1 of glass/SiOC/SnO2:F/SiO2/TiO2 and the layer structure example 2 of glass/Si3N4/SiO2/ITO/SiO2/TiO2, of Durandeau that were referenced in the prior office action, do not include a first layer based on tin dioxide, tin oxide, niobium oxide, titanium dioxide or tantalum oxide as required by amended claim 23, nor a third layer based on tin dioxide doped with antimony, niobium and/or neodymium as also required by amended claim 23 (see page 11, first full paragraph with respect to the prior anticipation rejection over Durandeau). However, as discussed in the prior office action and restated above, Durandeau clearly teaches that although the TCO film (2) (as the claimed third layer) is preferably SnO2:F and ITO, e.g., as utilized in examples 1 and 2, other possible TCO films include films based on antimony-doped tin (di)oxide (ATO) (Paragraph 0016) as discussed in Paragraphs 16 and 25 of the prior office action reading upon the amended third layer of tin dioxide doped with antimony of instant claim 23 (as well as the third layer based on antimony doped tin dioxide as previously discussed in the prior office action). Durandeau also teaches that with respect to the neutralizing film (6), a single film of silicon oxycarbide (SiOC) as utilized in example 1 may be used but also a film of mixed silicon-tin oxide (SiSnOx) – a “tin oxide” based film may be utilized; while with respect to the film multilayer comprising two films of high and low index as the neutralizing multilayer film, examples thereof including Si3N4/SiO2 as utilized in example 2 but also TiO2/SiO2 as well as TCO/SiO2, and given again that the TCO may be ATO, the Examiner notes that contrary to Applicant’s arguments, Durandeau clearly teaches and/or suggests a first layer “based on tin dioxide, tin oxide, niobium oxide, titanium dioxide or tantalum oxide” as required by amended claim 23, and more particularly, based on tin dioxide as in instant claims 30 and 42.
The Applicant also argues that Durandeau allegedly fails to teach or suggest a coated glazing with the third layer having a thickness of at least 120 nm but at most 200 nm as required by amended claim 23, arguing that the thicknesses of the relevant third layer in the examples 1 and 2 are 100 nm and 300 nm, respectively, both “far removed from the range required by amended claim 23” (see page 11, second full paragraph). However, the Examiner respectfully disagrees and first notes that the examples of Durandeau are non-limiting examples as clearly recited by Durandeau in Paragraph 0056. The Examiner also notes, as discussed in detail above, that Durandeau teaches that the thickness of the TCO film is adjusted depending on the nature of the film so as to obtain the desired emissivity, with example geometrical thicknesses for the preferred ITO and fluorine-doped tin oxide TCO films ranging from at least 40 nm to 200 nm for ITO and at least 120 nm to 500 nm for fluorine-doped tin oxide films (Paragraphs 0020-0022), and although Durandeau does not specify a thickness when utilizing antimony-doped tin (di)oxide as the TCO, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize similar thicknesses for the antimony-doped tin (di)oxide TCO film (2) based upon the desired emissivity as taught by Durandeau, thereby reading upon and/or suggesting the claimed third layer thickness of at least 120 nm but at most 200 nm as in instant claim 23.
The Applicant further argues on pages 12-13, that “[a]lthough Durandeau mentions antimony-doped tin oxide in a list of several electrically conductive oxides, fluorine-doped tin oxide and mixed indium tin oxide are clearly preferred” and that “[n]one of the examples include an antimony doped tin oxide layer and there is [allegedly] no suggestion anywhere in Durandeau for a coating comprising the five layers, in sequence, required by claim 42, including the third layer based on antimony doped tin oxide” (see first full paragraph of page 13). However, the Examiner respectfully disagrees and again notes that although Durandeau teaches that fluorine-doped tin oxide (SnO2:F) and mixed indium tin oxide (ITO) are preferred for the TCO film, Durandeau clearly teaches that other possible films include films based on antimony-doped tin oxide, specifically stating: “Other films are possible, among which thin films based on mixed indium zinc oxides (called IZO), based on zinc oxide gallium-doped or -aluminum-doped, based on niobium-doped titanium oxide, based on zinc or cadmium stannate or based on antimony-doped tin oxide” in Paragraph 0016, such that antimony-doped tin oxide (ATO) is clearly one of a limited number of electrically conductive oxides or “finite number of identified, predictable solutions” and given that a “nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960), Applicant’s arguments with respect to the third layer as well as the five layer structure as recited in instant claim 42 are not persuasive.
Lastly, the Applicant argues that “Durandeau is [allegedly] devoid of any suggestion as to thickness of a layer based on antimony doped tin oxide and [allegedly] certainly does not teach or suggest a third layer based on antimony doped tin oxide having a thickness of at least 100 nm but at most 300 nm” as in instant claim 42, however, the Examiner respectfully disagrees and again notes that as discussed in Paragraph 27 of the prior office action (and discussed further above with respect to amended claim 23), Durandeau clearly teaches that the TCO film has a geometrical thickness that can be adjusted depending on the nature of the film so as to obtain the desired emissivity, with suitable thicknesses as recited in Paragraphs 0020-0022 reading upon and/or rendering obvious the claimed thickness range of at least 100 nm but at most 300 nm, wherein the Examiner further notes that given that Durandeau specifically teaches working examples utilizing a 300 nm SnO2:F film and a 100 nm ITO film as the TCO film, the Examiner maintains her position that the claimed third layer thickness range would have been obvious over the teachings of Durandeau such that absent any clear showing of criticality and/or unexpected results with respect to the claimed thickness range of the third layer of antimony doped tin oxide, the Examiner maintains her position that the claimed invention as recited in instant claim 42 would have been obvious over the teachings of Durandeau.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 11/3/2025.
THIS ACTION IS MADE FINAL. 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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787