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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/2026 has been entered.
The amendment filed 5/5/2026 has been entered. Claims 1-22 and 27-28 been canceled. Claims 23-26 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.
Claim Objections
Claim 23 is objected to because of the following informalities: “than” or similar term should be inserted after “greater” on line 15. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: the extraneous/residual underlining of the third comma on line 2 should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 33 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 33 recites, “The coated glazing according to claim 23, wherein the coated glazing exhibits a maximum visible light transmittance of 70%” (emphasis added), however, given that claim 23, from which claim 33 depends, has been amended to recite that “the coated glazing exhibits a maximum visible light transmittance of 55%” on lines 16-17, claim 33 does not further limit claim 23 and actually extends the “maximum” transmittance beyond that required by 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 38 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 38 recites, “The coated glazing according to claim 23, wherein the coating has a specific photocatalytic activity in accordance with ISO/DIS 10678:2010 of greater than 0.4 nmol/cm2h” (emphasis added), however, given that claim 23, from which claim 38 depends, has been amended to recite that “the coating has a specific photocatalytic activity in accordance with ISO/DIS 10678:2010 of greater 0.8 nmol/cm2h” on lines 14-15, claim 38 does not further limit claim 23 and actually extends the range beyond that required by 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 23-26 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 and further discussed below with respect to the amended claims, particularly the added specific photocatalytic activity and maximum visible light transmittance limitations.
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; although Durandeau also teaches that in other non-preferred embodiments, the glass may be tinted, for example, blue, green, gray or bronze (Paragraph 0013). 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, which depends on the anti-condensation performance sought but is preferably lower than or equal to 0.4 (Paragraph 0020), 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 range when utilizing antimony-doped tin (di)oxide as the TCO, given known emissivity properties of antimony-doped tin oxide thin films including the known dependence thereof on the antimony doping concentration, 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 in instant claim 42, and/or to determine the optimum thickness of an ATO film of a given antimony doping concentration to provide the desired emissivity properties for a particular end use as taught by Durandeau, wherein thicknesses within the claimed range are typical in the art (as evidenced by the attached Google Search results for “emissivity of antimony-doped tin oxide as function of thickness”), and hence absent any clear showing of criticality and/or unexpected results, the claimed third layer thickness ranges would have been obvious to one having ordinary skill in the art based upon the teachings of Durandeau.
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, and given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, the only differences between the teachings and/or suggestions of Durandeau and the claimed invention as recited in amended claims 23-24, 27, 30-32, and 40, as well as claims 33 and 38 (which do not further limit claim 23 as noted above) are that Durandeau does not specifically teach that the “coating has a specific photocatalytic activity in accordance with ISO/DIS 10678:2020 of greater [than] 0.8 nmol/cm2h” and that “the coated glazing exhibits a maximum visible light transmittance of 55%” as instantly claimed.
However, with respect to the photocatalytic activity, Durandeau clearly teaches that the photocatalytic film (4) is especially a film of titanium (di)oxide wherein the titanium (di)oxide “is preferably at least partially crystallized in the anatase form, which is the most active phase from the point of view of photocatalysis” (emphasis added, Paragraph 0027), and that the “optical thickness X of the photocatalytic film, especially a titanium-oxide-based film, is preferably at most 40 nm, especially 30 nm” (Paragraph 0029) with its geometrical thickness advantageously being at most 20 nm, and preferably greater than or equal to 5 nm (Paragraph 0020) falling clearly within the claimed thickness range of at least 5 nm and at most 35 nm for the claimed fifth catalytic layer of titanium dioxide. Durandeau also clearly teaches that in the case of titanium dioxide films, an increase in crystallization leads to an increase in photocatalytic activity, and thus a heat treatment is incorporated when utilizing a magnetron sputtering process to increase the crystallization of the titanium oxide photocatalytic film as well as the TCO film, particularly an ITO film, thereby increasing their respective photocatalytic activity and emissivity properties (Paragraphs 0044-0047). Further, Durandeau clearly teaches that the intermediate film is advantageously made of silica, and that according to one embodiment, no film is placed between the intermediate film and the photocatalytic film, with all of the preferred example structures and the working examples taught by Durandeau comprising an intermediate silica film and a photocatalytic film made of titanium dioxide provided thereon in a thickness of at most 15 nm (Paragraphs 0033-0039); and given that it is well established in the art that the photocatalytic activity of a titanium dioxide photocatalytic film is dependent not only on the crystalline properties of the titanium dioxide as taught by Durandeau, which are directly affected by the deposition process as taught by Durandeau, but also on the thickness of the titanium dioxide photocatalytic film, wherein the thickness taught by Durandeau is the same as the claimed invention, as well as on the layer upon which the titanium dioxide photocatalytic layer is applied (as evidenced by Glaeser, WO2007/115796A2 as referenced by Durandeau in Paragraph 0003, also printed as US2009/0117371A1, see particularly Paragraphs 0002-0005, 0009, 0014-0025, and 0047 of the US publication; or Lee, Influence of SiO2 interlayer on the hydrophilicity of TiO2/SiO2/glass produced by RF-magnetron sputtering, Entire document) which as noted above is the same as in the instantly claimed invention, 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 coating taught by Durandeau, comprising a titanium dioxide photocatalytic film having a thickness as instantly claimed and provided on a silica intermediate film as in the instantly claimed invention, to similarly have “a specific photocatalytic activity in accordance with ISO/DIS 10678:2020 of greater [than] 0.8 nmol/cm2h” as instantly claimed, and/or obvious to one having ordinary skill in the art to maximize the photocatalytic activity thereof based upon the teachings of Durandeau with respect to increasing the photocatalytic activity such that absent any clear showing of criticality and/or unexpected results, the claimed open-ended specific photocatalytic activity range would have been obvious to one having ordinary skill in the art.
With respect to the maximum visible light transmittance of 55% as instantly claimed, given that the light transmittance of a coated glazing is a function of the layer structure, layer materials, and thicknesses thereof, wherein Durandeau provides a clear teaching and/or suggestion of a coated glazing having the same layer structure, layer materials, and thicknesses thereof as in the claimed invention, with several non-limiting examples exhibiting a direct solar-energy transmission factor of less than 50% (i.e., transmittance over the entire solar spectrum of 300 to 2500 nm), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed maximum visible light transmittance and hence the claimed invention as recited in instant claims 23-24, 27, 30-32, and 40, as well as instant claims 33 and 38 which do not further limit claim 23 as noted above, 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 34-37 and 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 34-35, 37 and 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 to similarly exhibit the same optical properties as instantly claimed and/or one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any of the layer materials and layer thicknesses as taught by Durandeau to provide the desired optical properties for a particular end use such that 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 34-37 and 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 5/5/2026 have been fully considered but are not persuasive and/or moot in view of the above additional discussion and remarks (e.g., “new grounds of rejection”) with respect to the teachings of Durandeau as applied to the amended claims and previously presented claim 42. More specifically, the Applicant argues that the claimed invention as defined in amended claim 23 defines a glass substrate having a specific coating that achieves a specific combination of functional outcomes, namely: photocatalytic activity exceeding 0.8 nmol/cm2h and wherein the coated glazing exhibits a maximum visible light transmittance of 55%, and that while Durandeau discloses multilayer coatings comprising a TCO, silica layer, and titanium-oxide layer, Durandeau allegedly “does not teach coatings that achieve the specific photocatalytic activity and visible light transmittance requirements recited in amended claim 23, nor [allegedly] does it provide motivation or a reasonable expectation of success for modifying its coatings to achieve the claimed combination of properties” (see page 8 of the response). The Applicant argues that “[a]lthough Durandeau states that titanium dioxide may be photocatalytic, it [allegedly] does not include any measurement or threshold of photocatalytic activity and does not mention photocatalytic activity values according to ISO/DIS 10678:2010 or any comparable standard” and allegedly “does not recognize photocatalytic activity as a parameter to be optimized, nor [allegedly] does it suggest that coatings configured for reduced visible transmittance would maintain or enhance photocatalytic effectiveness,” arguing that “[i]nstead, Durandeau's optimization is directed to emissivity, condensation resistance, and energy transmission” and that “[i]n the absence of any teaching of Durandeau regarding optimization of photocatalytic activity, the claimed performance combination [allegedly] would not have been predictable to one of ordinary skill in the art” (see page 9, first two paragraphs). However, the Examiner respectfully disagrees, particularly given the discussion above in Paragraph 13 with respect to the photocatalytic activity of the titanium dioxide of Durandeau, which is incorporated herein by reference, and given again that the Applicant provides no showing of criticality of the claimed activity range nor any clear showing of unexpected results over the teachings of Durandeau, wherein the Examiner takes the position that the results demonstrated by Applicant’s examples as recited on page 10 of the response are not unexpected results and are actually expected results given that deposition of the titanium dioxide photocatalytic film directly on the TCO film as in Comparative Example 2 would result in lower photocatalytic activity than when a silica intermediate layer, as in the teachings of Durandeau, is provided between the TCO and TiO2 films as is well established in the art (as evidenced by Glaeser or Lee or more generally, the attached Google Search results for “affect of sio2 underlayer on the photocatalytic activity of tio2”), Applicant’s arguments with respect to the claimed photocatalytic activity range are not persuasive.
Similarly, Applicant’s arguments with respect to the claimed visible light transmittance are not persuasive in view of the additional remarks above and particularly given that Durandeau actually teaches that in some embodiments, although non-preferred, the glass may be tinted, and hence, Applicant’s arguments on page 10 that “[o]ne of ordinary skill in the art following Durandeau would therefore [allegedly] be motivated to maintain relatively high visible light transmittance, rather than to deliberately limit visible transmittance” and that “[i]n contrast, amended claim 23 requires a coated glazing having reduced visible light transmittance (≤55%), reflecting a solar-control and aesthetic design choice that is [allegedly] inconsistent with Durandeau’s stated objectives” are not persuasive, particularly given that as discussed in detail above, Durandeau clearly teaches and/or suggests a layer structure, layer materials, and layer thicknesses as in the claimed invention such that one having ordinary skill in the art before the effective filing date of the claimed invention would have reasonably expected similar optical properties, and/or would have been motivated to determine the optimum layer structure, layer materials, and layer thicknesses as taught by Durandeau, which read upon the claimed invention, to provide the desired optical properties for a particular end use.
Lastly, with respect to the thickness of the third layer based on antimony doped tin oxide, the Applicant argues “that the significant difference in the thickness ranges for ITO versus fluorine-doped tin oxide is [allegedly] itself evidence that a workable range for the thickness of a third layer of antimony doped tin oxide is [allegedly] not obvious from the teachings of Durandeau” and that “[m]oreover, antimony doped tin oxide [ATO] films, unlike ITO and fluorine-doped tin oxide [FTO] films, are absorbing and [allegedly] would work counter to the stated objective of Durandeau of maintaining G-value of the glazing” and thus “[o]ne of ordinary skill in the art would [allegedly] have no basis for selecting a thickness for a third layer of antimony doped tin oxide with a reasonable expectation of success in obtaining a coated glazing with the emissivity and g-value required by Durandeau” (see the paragraph bridging pages 11-12 of the response). However, the Examiner respectfully disagrees and first notes that if antimony doped tin oxide could not be utilized in the invention taught by Durandeau to provide the desired emissivity while also providing the desired G-value, Durandeau would not have clearly recited antimony-doped tin oxide as a possible TCO film for the invention. Further, given known emissivity properties of ITO, FTO, and ATO thin films, which are known to be dependent not only on the thickness but all the doping concentration, the allegedly “significant” difference in thickness ranges as taught by Durandeau for ITO versus FTO is not an indication that a workable range for the thickness of the third layer when formed of ATO would not obvious over the teachings of Durandeau, especially given that Durandeau specifically teaches that the thickness of the TCO film is adjusted depending on the nature of the film so as to obtain the desired emissivity, which depends on the anti-condensation performance sought but is preferably lower than or equal to 0.4 (Paragraph 0020), and given that an ATO thin film falling within the claimed thickness range may provide an emissivity as preferred by Durandeau, although not required, of lower than or equal to 0.4 (as evidenced by the attached Google Search results for “emissivity of antimony-doped tin oxide as function of thickness”), Applicant’s arguments are not persuasive.
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 5/5/2026.
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
Prosecution Insights