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 .
Status of Claims
Claims 2-13 and 16-21 are pending in the current application.
Claims 2-13 and 16-20 are amended in the current application.
Claims 1, 14, and 15 are canceled in the current application.
Claim 21 is newly added in the current application.
Response to Arguments
Applicant's remarks and amendments filed December 4, 2025 have been fully considered.
Applicant requests reconsideration of claims 2-13 and 19-20, since the present amendments make the aforementioned claims dependent upon independent claims 16 or 18.
Examiner acknowledges. While the Restriction Requirement dated May 19, 2025 remains, the present amendments bring claims 2-13 and 19-20 within the scope of elected Group II of the Restriction Requirement. Therefore, pending claims 2-13 and 19-20 are considered part of the elected invention of Group II, are no longer considered withdrawn, and are examined on their merits herein.
Applicant requests withdrawal of the claim objections set forth in the previous office action.
The claim objections set forth in the previous office action are withdrawn due to the present claim amendments.
Applicant argues that the present invention exhibits unexpected improvements that distinguish it over the applied prior art of record.
This is not persuasive for the following reasons. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). In the present application, the claims are not sufficiently commensurate in scope with the inventive examples of the specification as originally filed. For example, Table 3 of the specification as originally filed discloses Inventive Examples 1-4 all specifically consisting of a first dielectric coating of a TiOx layer, a SnZnO layer, and a ZnO layer; a first blocking layer of NiCr; a functional metal layer consisting of silver; a second blocking layer of NiCr; a second dielectric coating of a ZnO layer, a SnZnO layer, and a SiO2 layer; and a glass substrate; where the SiO2 layer has a thickness ranging from 12-14.8 nm. Whereas present claim 16 much more broadly recites a device comprising a transparent substrate and a stack comprising a dielectric coating, at least one functional metal layer based on silver, another dielectric coating, a layer based on silicon oxide having thickness of greater than or equal to 12 nm. Present claim 16 does not restrict the number of layers in the device, does not specify specific composition or structure of any dielectric coating sub-components, does not require or mention the inclusion of any blocking layers, does not specify the functional metal layer consists of silver, does not specify the layer based on silicon oxide layer consists of SiO2, does not specify the transparent substrate is formed of glass, and does not establish the criticality of the thickness of the layer based on silicon oxide being fully commensurate with the inventive data range of 12-14.8 nm. Therefore, the present claims are not sufficiently commensurate in scope with the inventive examples, and one of ordinary skill in the art would not be able to reasonably conclude that all embodiments that fall within the scope of claim 16 would necessarily achieve the unexpected improvements asserted by Applicant.
Moreover, the nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. However, in the present application, based on the limited variety and scope of inventive examples 1-4, one of ordinary skill in the art would not be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicant argues that the prior art of record would require a nitride layer to combat haze.
This is not persuasive for the following reasons. The present claims utilize the transitional phrases “comprising” and “comprises.” 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, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03. Therefore, the present claims are inclusive and do not exclude additional, unrecited elements or method steps. Therefore, even assuming the prior art required nitride layers to achieve operable embodiments, the present claims as recited do not exclude such nitride layers.
Applicant argues that the applied prior art is a combination driven by hindsight.
This is not persuasive for the following reasons. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present grounds of rejection, only knowledge which was within the level of ordinary skill before the effective filing date of the claimed invention was utilized, and no knowledge was gleaned from applicant's disclosure to arrive at the combination of prior art teachings. Therefore, the grounds of rejection under 35 USC 103 set forth below are deemed proper.
Applicant argues that the applied prior art references are non-analogous and have different design objectives.
This is not persuasive for the following reasons. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Lorenzzi, Krisko, Nunez-Regueiro, and the specification as originally filed all pertain to optical stacks for glazings comprising silver-based functional metal layers and dielectric coatings. Based on the foregoing, one of ordinary skill in the art would readily understand that all of the applied prior art of record is analogous to one another and directly relevant to the field of the inventor’s endeavor.
Claim Objections
Claims 9 and 11 are objected to because of the following informalities:
Claim 9 recites “the first silver-based functional layer.” For uniformity and consistency within claim 9 and with other claims, claim 9 should be amended to instead recite “the first metal layer.”
Claim 11 recites:
“a dielectric coating located below the functional metal layer and comprising the silicon oxide-based layer, a zinc-tin oxide-based layer, a zinc-oxide-based layer
optionally a blocking layer,
the functional metal layer,
optionally a blocking layer,
a dielectric coating located above the functional metal layer and comprising a zinc oxide-based layer, a zinc-tin oxide-based layer and optionally a protective layer.”
For uniformity and consistency with other claims, claim 11 should be amended to instead recite:
“a dielectric coating located below a first functional metal layer of the at least one functional metal layer and comprising the silicon oxide-based layer, a zinc-tin oxide-based layer, a zinc-oxide-based layer;
optionally a blocking layer;
the first functional metal layer;
optionally a blocking layer; and
a dielectric coating located above the first functional metal layer and comprising a zinc oxide-based layer, a zinc-tin oxide-based layer, and optionally a protective layer.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8, 9, 12, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "a sum of the thicknesses of all the oxide-based layers." There is insufficient antecedent basis for “the oxide-based layers” limitation in the claim. Claim 8 depends from claim 16, where neither claim makes any clear preceding reference to oxide-based layers present in either of the at least two dielectric coatings. It is unclear if “all the oxide-based layers” refers to the “layer based on silicon,” and therefore, also requires this layer to be part of either of the at least two dielectric coatings; or if “all the oxide-based layers” refers to previously unrecited layers. For the purposes of examination, the limitation is interpreted as referring to previously unrecited oxide-based layers that form either of the at least two dielectric coatings, where claim 8 is interpreted as instead reciting “a sum of
Claim 9 recites the limitation "consists solely of oxide layer." With the usage of the closed transitional phrase “consists,” it is unclear if the recitation “of oxide layer” is referring to a singular oxide layer or is referring to a plurality of oxide layers. For the purposes of examination, the limitation is interpreted as requiring one or more oxide layers, where claim 9 is interpreted as instead reciting “consists solely of at least one oxide layer.”
Claim 12 recites the limitation “the stack comprises a single functional layer.” Claim 12 depends from claim 16, where claim 16 recites “at least one functional metal layer.” It is unclear if the limitation is requiring “the stack consisting of one functional metal layer,” or if the limitation is requiring “the stack comprising at least one functional metal monolayer,” or if the limitation is requiring a new previously unrecited functional layer. For the purposes of examination, claim 12 is interpreted as instead reciting “the stack comprising at least one metal monolayer.”
Claim 20 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since this claim depends from claim 8 rejected above and does not remedy the aforementioned deficiency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16, 2-13, and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lorenzzi et al. (US 2018/0194675 A1), in view of Krisko et al. (US 2004/0071985 A1), in view of Nunez-Regueiro et al. (US 2012/0090246 A1).
Independent claim 16 is addressed and rejected first herein for the purposes of clarity and continuity.
Regarding Claims 16 and 17, Lorenzzi teaches a glazed unit that can be utilized as a low-e glazing comprising a material comprising a transparent substrate 10 coated with a stack comprising several functional metal layers based on silver 40, 80, 120 that are each positioned between two dielectric coatings 20, 60, 100, 140 (Lorenzzi, Abstract, [0001]-[0003], [0034]-[0040], [0143]-[0179], [0191]-[0199], Fig 1). Lorenzzi teaches the glazed unit can be a multiple glazing structure comprising second and third substrates (Lorenzzi, [0174]-[0179]). Lorenzzi teaches the stack can also include layers of silicon oxides such as SiO2 (silicon dioxide) (Lorenzzi, [0107]-[0116]).
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Lorenzzi – Figure 1
Lorenzzi remains silent regarding the stack specifically comprising a layer based on silicon oxide having a thickness of greater than or equal to 12 nm located directly in contact with the substrate.
Krisko, however, teaches a glass substrate unit for use as a glazing comprising a low-emissivity coating stack (Krisko, Abstract, [0001], [0007], [0014], Fig 4). Krisko teaches a transparent glass substrate 10, a transparent base 20 of silicon dioxide deposited directly over the substrate 10 having a thickness of 200 angstroms or less (20 nm or less), an inner coat 30 of a dielectric coating material, a first infrared-reflective layer 50 of a silver-based material, a first high absorption blocker layer 80, a middle coat layer 190 of a dielectric coating material, a second infrared-reflective layer 150 of a silver-based material, a second high absorption blocker layer 180, and an outer coat layer 130 of a dielectric coating material (Krisko, [0017], [0040]-[0051], Fig 2). Krisko’s transparent base 20 of silicon dioxide thickness range of 20 nm or less overlaps the claimed range of 12 nm or more, and therefore, renders obvious the claimed range (MPEP 2144.05).
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Krisko – Figure 2
Since Lorenzzi and Krisko both disclose glazed units having similar layer structures and Lorenzzi suggest including SiO2 layers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Krisko’s transparent base of silicon dioxide directly onto Lorenzzi’s substrate to yield a glazed unit exhibiting low emissivity, desirable coating properties, and excellent durability to tempering as taught by Krisko (Krisko, [0007]-[0010], [0049]).
Modified Lorenzzi teaches the glazed unit can be a double or triple glazing having a structure having one or more walls (Lorenzzi, [0174]-[0179]). Modified Lorenzzi remains silent regarding a heating or cooling device comprising a heater or cooler, an enclosure delimited by one or more walls, and at least one glazed unit.
Nunez-Regueiro, however, teaches a freezer (cooling device) comprising a freezer door formed with two insulating glass units (i.e., glazed units) having a silver-based low emissivity coating structure (Nunez-Regueiro, Abstract, [0001], [0015], [0024]-[0025]). Nunez-Regueiro teaches the freezer is a refrigerated area that includes the freezer door to reduce the amount of heat entering the refrigerated area, this structure yields a refrigerated area delimited by one or more walls and the freezer door to insulate the refrigerated environment (Nunez-Regueiro, [0001]-[0007], [0038]-[0045], Fig 3).
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Nunez-Regueiro - Figure 3
Since modified Lorenzzi and Nunez-Regueiro both disclose glazed units having similar layer structures having low emissivity properties, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized modified Lorenzzi’s glazed units to form Nunez-Regueiro’s freezer door to yield a structure exhibiting high energy efficiency with high light transmission as taught by Nunez-Regueiro (Nunez-Regueiro, Abstract, [0015]), and exhibiting the ability to reduce energy dissipating from an interior region to an exterior region and to enhance thermal insulation as taught by Lorenzzi (Lorenzzi, [0001]-[0002]).
Regarding Claim 2, modified Lorenzzi teaches the transparent base 20 of silicon dioxide deposited directly over the substrate has a thickness of 200 angstroms or less (20 nm or less) (Krisko, [0049]-[0051], Fig 2). Modified Lorenzzi’s transparent base 20 of silicon dioxide thickness range of 20 nm or less overlaps the claimed range of 14 nm or more, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 3, modified Lorenzzi teaches the transparent base 20 of silicon dioxide deposited directly over the substrate has a thickness of 200 angstroms or less (20 nm or less) (Krisko, [0049]-[0051], Fig 2). Modified Lorenzzi’s transparent base 20 of silicon dioxide thickness range of 20 nm or less overlaps the claimed range of 12 nm or more and 60 nm or less, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, modified Lorenzzi teaches an embodiment comprising a first dielectric coating (M1) located above the substrate and below a first functional metal layer (AG1) consisting solely of a ZnO layer and a TiOx layer (Lorenzzi, [0220]-[0226], Table 3 Inv 3). Modified Lorenzzi’s ZnO layer is formed of an equimolar ratio of zinc and oxygen, where this yields a zinc content of 100 mass% relative to all elements other than oxygen. Modified Lorenzzi’s zinc content falls within the claimed range of at least 80% by mass, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 5, modified Lorenzzi teaches an embodiment comprising a second dielectric coating (M2) located above a first functional metal layer (AG1) comprising a SnZnO layer (Lorenzzi, [0220]-[0226], Tables 2-3 Inv 1). Modified Lorenzzi’s SnZnO layer is formed of an equimolar ratio of tin (atomic mass of 118.71 gmol), zinc (atomic mass of 65.38 gmol), and oxygen, where this yields a tin mass% of (118.71/[118.71+65.38])*100 = 64.48 mass% relative to all elements other than oxygen. Modified Lorenzzi’s tin content falls within the claimed range of at least 20% by mass, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 6, modified Lorenzzi teaches the stack comprises a first dielectric coating comprising dielectric layers having a refractive index function, a stabilizing function, and/or a smoothing function that can each include a zinc oxide layer doped with tin oxide and/or a zinc oxide layer (Lorenzzi, [0111]-[0128], [0211]-[0226], Tables 1-4). It would have been obvious to one of ordinary skill in the art to have selected and to have tried dielectric coating embodiments having zinc oxide layers and zinc oxide layers doped with tin oxide from the finite options disclosed by Lorenzzi to achieve desirable refractive index, stabilizing, and smoothing functions with a predictable and reasonable expectation of success (MPEP 2143; Lorenzzi, [0118]-[0129], [0143]-[0148]).
Regarding Claim 7, modified Lorenzzi teaches the stack comprises a first dielectric coating comprising dielectric layers having a refractive index function and a stabilizing function that can each include a zinc oxide layer doped with tin oxide and/or a zinc oxide layer; and a second dielectric coating comprising dielectric layers having a refractive index function and a stabilizing function that can each include a zinc oxide layer doped with tin oxide and/or a zinc oxide layer (Lorenzzi, [0111]-[0128], [0211]-[0226], Tables 1-4). It would have been obvious to one of ordinary skill in the art to have selected and to have tried dielectric coating embodiments having zinc oxide layers and zinc oxide layers doped with tin oxide from the finite options disclosed by Lorenzzi to achieve desirable refractive index, stabilizing, and smoothing functions with a predictable and reasonable expectation of success (MPEP 2143; Lorenzzi, [0118]-[0129], [0143]-[0148]).
Regarding Claim 8, modified Lorenzzi teaches a sum thickness of all oxide layers in a first dielectric coating (M1: thickness of 39.3 nm with ZnO layer=8.0 nm and TiOx layer=31.3 nm) located above the substrate is 100% of a total thickness of the first dielectric coating (M1) (Lorenzzi, [0220]-[0226], Table 3 Inv 3). Modified Lorenzzi’s Inv 3 M1 thickness value falls within the claimed range of greater than 50%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 9, modified Lorenzzi teaches an embodiment comprising a first dielectric coating (M1) located above the substrate and below a first functional metal layer (AG1) consisting solely of a ZnO layer and a TiOx layer (Lorenzzi, [0220]-[0226], Table 3 Inv 3).
Regarding Claim 10, modified Lorenzzi teaches the stack is deposited by magnetic-field-assisted cathode sputtering (Lorenzzi, [0035]-[0036]).
Regarding Claim 11, modified Lorenzzi teaches the stack comprises the transparent base of silicon dioxide deposited directly over the substrate, a first dielectric coating on the transparent base of silicon dioxide comprising dielectric layers having a stabilizing function that include a zinc oxide layer doped with tin oxide and/or a zinc oxide layer; optionally a blocking layer; a first functional metal layer; optionally a blocking layer; and a second dielectric coating comprising dielectric layers having a stabilizing function that include a zinc oxide layer and a smoothing function that include a mixed oxide of at least two metals of preferably Zn (zinc) and Sn (tin) (Krisko, [0049]-[0051], Fig 2; Lorenzzi, [0118]-[0129], [0143]-[0148]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried first and second dielectric coating embodiments having zinc oxide layers and zinc oxide layers doped with tin oxide from the finite options disclosed by Lorenzzi to achieve desirable stabilizing and smoothing functions with a predictable and reasonable expectation of success (MPEP 2143; Lorenzzi, [0118]-[0129], [0143]-[0148]).
Regarding Claim 12, modified Lorenzzi teaches embodiments comprising a first functional metal layer (AG1) that is a monolayer (Lorenzzi, [0220]-[0226], Table 3).
Regarding Claim 13, modified Lorenzzi teaches the substrate can be bent or tempered (Lorenzzi, [0172]).
Regarding Claim 18, modified Lorenzzi teaches a method of making a freezer door (i.e., a cooling device) comprising providing a glazed unit as discussed above for claims 16 and 17 as a constituent unit (Nunez-Regueiro, Abstract, [0001]-[0007], [0015], [0024]-[0025], [0038]-[0045], Claims 13-20, Fig 3).
Regarding Claim 19, modified Lorenzzi teaches the stack is deposited by magnetic-field-assisted cathode sputtering (Lorenzzi, [0035]-[0036]).
Regarding Claim 20, modified Lorenzzi teaches a sum thickness of all oxide layers in a first dielectric coating (M1: thickness of 39.3 nm with ZnO layer=8.0 nm and TiOx layer=31.3 nm) located above the substrate is 100% of a total thickness of the first dielectric coating (M1) (Lorenzzi, [0220]-[0226], Table 3 Inv 3). Modified Lorenzzi’s Inv 3 M1 thickness value falls within the claimed range of greater than 90%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 21, modified Lorenzzi teaches the stack comprises the transparent base of silicon dioxide deposited directly over the substrate, a first dielectric coating on the transparent base of silicon dioxide comprising dielectric layers having a stabilizing function that include a zinc oxide layer doped with tin oxide and/or a zinc oxide layer (i.e., oxide layers formed with zinc and tin); optionally a blocking layer; and a first functional metal layer (Krisko, [0049]-[0051], Fig 2; Lorenzzi, [0118]-[0129], [0143]-[0148]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried first and second dielectric coating embodiments having zinc oxide layers and zinc oxide layers doped with tin oxide from the finite options disclosed by Lorenzzi to achieve desirable refractive index, stabilizing, and smoothing functions with a predictable and reasonable expectation of success (MPEP 2143; Lorenzzi, [0118]-[0129], [0143]-[0148]).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782