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 .
Examiner’s Note
The Examiner acknowledges the amendment of claim 1. Claims 4 – 7 have been cancelled. Claims 1 – 3 & 8 – 20 are examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1 – 3 & 8 – 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.
With regard to claim 1, the claim amendment recites “An article comprising a transparent substrate consitituting a high-temperature heating device with a multilayer thin film coating…” It is unclear whether Applicant is reciting the article or the transparent substrate as the “high-temperature heating device.” Applicant’s specification suggests the heating device is the article, such as an oven, and the substrate is a window inside the oven door. Clarification by amendment is requested.
With regard to claim 1, the term “high-temperature” in claim 1 is a relative term which renders the claim indefinite. The term “high-temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2 – 3 & 8 – 20 are dependent on claim 1 and therefore also rejected.
The following is a quotation of 35 U.S.C. 112(d):
(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.
Claim 2 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.
Applicant’s amendment of claim 1 incorporates the subject matter of previously considered claim 2, without cancelling claim 2. Therefore, claim 2, which is dependent on claim 1, fails to further limit the subject matter of claim 1.
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
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(s) 1 – 3, 8 – 10, 13 – 16, & 18 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over You et al. (US 2019/0203529 A1), in view of Tixhon et al. (US 2014/0087101 A1).
With regard to claim 1, You et al. teach a window (“an article”) for a building (paragraphs [0001] – [0004]). A building is a heating device in the depths of winter and the windows therein are built for maintaining said heat (i.e., “heating device”) at higher temperatures than outside of said building. Furthermore, the windows of a building are manufactured to endure high temperature heat waves (+100°F) (i.e., “high temperature”) during the depths of summer. Therefore, a building comprising the window taught by You et al. would reasonably be considered to be “a high-temperature heating device.”
Furthermore, when reading the preamble in the context of the entire claim, the recitation “high-temperature heating device” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The window comprises a transparent glass substrate and low emissivity coating (i.e., “a multilayer thin film coating”) formed on one surface of said glass substrate. The low emissivity coating comprises a lowermost barrier layer (i.e., “a barrier layer” of “a lower dielectric layer”), a first dielectric barrier, a second dielectric layer (“at least one impurity collection layer” of “a lower dielectric layer”), a first low emissivity protective layer (i.e., “a lower protective layer”), a low emissivity layer (i.e., “a metal functional layer”) containing a metal with reflectance in an IR region, paragraph [0002]), a second low emissivity protective barrier (i.e., “upper protective layer”), a third dielectric barrier (i.e., “an upper dielectric layer”) sequentially laminated from the transparent glass (abstract & paragraph [0024]).
The dielectric layers (i.e., “impurity layers”) taught by You et al. are also composed of a metal oxynitride doped with silicon (MSiOxNy) (paragraph [0051]) or zinc tin oxide (SnZnOx) (paragraph [0052]). Applicant’s specification defines an impurity collection layer as a layer for blocking impurities, such as sodium ions, moving from the transparent substrate to the metal functional layer in a high temperature state (originally filed specification, paragraphs [0051] – [0052]). Applicant’s specification teaches the barrier layers serve the same function (originally filed specification, paragraph [0057]). Applicant’s impurity collection layer is composed of at least one of tin-zinc oxide (SnZnOx), silicon oxide (SiO2), and silicon oxynitride (SiOxNy).
Therefore, the dielectric layers taught by You et al. would be expected to inherently have the same impurity collection property as Applicant’s recited impurity collection layer(s).
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
A thickness of the low emissivity layer (“metal functional layer”) is in the range of about 5 nm to about 25 nm (paragraphs [0040]), which overlaps with Applicant’s claimed range of 12 nm or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
You et al. teach sequential stacking of lowest barrier layer, a first dielectric layer (“impurity layer”), a lower barrier layer, a second dielectric layer (“impurity layer’) in a direction away from the transparent substrate (Abstract). As such, You et al. do not explicitly teach the second impurity layer / the first barrier layer / the first impurity collection layer / the second barrier layer are laminated sequentially in a direction away from the transparent substrate.
However, the courts have held that rearrangement of parts are unpatentable in the case when shifting of components would not have modified the operation of the device. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04.VI.(C). In the current application, one of ordinary skill in the skill in the art would not expect the dielectric or barrier properties of the coating taught by You et al. to be modified as a result of rearranging the order of the alternating dielectric and barrier layers of the coating.
Furthermore, You et al. teach a thickness of each of the dielectric layers (i.e., “first impurity collection layer and the second impurity collection layer”) in a range of about 5 nm to about 60 nm (paragraph [0054]), which overlaps with Applicant’s claimed range of between 3 nm and 10 nm.
You et al. teach dielectric layers (“impurity collection layers”) may include a metal oxynitride doped with silicon (paragraph [0051]). However, You et al. do not teach the oxygen to nitrogen ratio (MSiOxNy, wherein x > y) in the silicon doped metal oxynitride.
Tixhon et al. teach a transparent glass substrate having a coating with a low-emissivity and comprising a mono-layer for neutralization of the colour in reflection of the coated glass (i.e. prevent interferential colours in reflection) composed of silicon oxynitrides (SiOxNy), wherein the x is less than 2 (and y is 1). The values of x and y are chosen to adjust the refractive index value (paragraph [0028]).
Therefore, based on the teachings of Tixhon et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the silicon doped metal oxynitride layer taught by You et al. wherein the ratio of oxygen to nitrogen is less than 2:1 for achieving the desired refractive index value and neutralization of the reflected colors in the coated glass.
With regard to claim 2, You et al. teach the dielectric layers are composed of a metal oxynitride doped with silicon (“SiOxNy”) (paragraph [0051]) or zinc tin oxide (“SnZnOx”) (paragraph [0052]).
With regard to claim 3, You et al. teach the lowest barrier layer may include silicon oxynitride, silicon aluminum oxynitride, zirconium silicon oxynitride (P0063). The lower barrier layer may include zirconium silicon nitride (i.e. silicon nitride doped with zirconium) (paragraph [0066]).
With regard to claim 8, You et al. teach the thickness of the protective layers may be in a range from about 0.5 nm to about 5 nm (paragraph [0046]), which overlaps with Applicant’s claimed range of 2 nm or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 9, You et al. do not explicitly teach the lower protective layer is thicker than the upper protective layer.
However, You et al. teach the thickness of the protective layers may be in the range of about 0.5 nm to about 5 nm, and may vary to suit the purpose of the window. The thickness of the protective layers may adjust the transmittance and reflectance as desired (paragraph [0046]).
Therefore, absent a showing of criticality with respect to the relative thickness of the protective layers (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the relative thicknesses of the protective layers through routine experimentation in order to achieve predetermined transmittance and reflectance values. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 10, You et al. teach the thickness of the protective layers may be in a range from about 0.5 nm to about 5 nm (paragraph [0046]), which is within Applicant’s claimed range of 0.3 nm to 0.7 nm.
With regard to claim 13, You et al. teach a third dielectric layer (170c) and upper barrier coating (150) (together form Applicant’s “upper dielectric coating”). A fourth dielectric layer (170d) (Applicant’s “overcoat on the upper dielectric layer dielectric layer”) overcoats the upper barrier coating (150). Dielectric layers may include titanium oxide (abstract & paragraph [0052]).
With regard to claims 14 – 15, You et al. teach each of the protective layers may be made of a metal having excellent light absorption performance (paragraph [0041]), such as nickel, chromium, and combinations thereof (paragraph [0044]).
With regard to claim 16, You et al. teach the low-emissivity layer (metal functional layer) has an emissivity of about 0.01 to about 0.3, more specifically about 0.01 to about 0.08 (P0037), which overlaps with Applicant’s claimed range of 0.035 or less. The low-emissivity layer provides the coating with low-emissivity. As such, the emissivity of the low-emissivity layer is the emissivity of the window (i.e. article).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 18, You et al. do not explicitly teach a visible light transmittance is 65% to 85%.
With regard to claim 19, You et al. do not explicitly teach a visible light reflectance of the coating surface is 3% to 20%.
However, You et al. teach the thickness of the protective layers of the coating may be in the range of about 0.5 nm to about 5 nm, and may vary to suit the purpose of the window. The thickness of the protective layers may adjust the transmittance and reflectance as desired (paragraph [0046]). Furthermore, the visible light transmittance and reflectance may be controlled by adjusting the material and physical properties, such as thickness) of the dielectric layers (paragraphs [0047] – [0048]).
Therefore, absent a showing of criticality with respect to the thickness of each of the protective layers, thickness of dielectric layers, materials of the dielectric layers (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the relative thicknesses of the protective layers, dielectric layers, and composition of the protective layers through routine experimentation in order to achieve predetermined transmittance and reflectance values. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over You et al., as applied to claim 1 above, and further in view of Köckert (DE 102018102169 B4) (2020).
With regard to claim 11, You et al. teach each dielectric layer (impurity layer) may be a multilayer. You et al. do not teach the uppermost layer of the lower dielectric layer in direct contact with the protective layer is planarized (i.e. smooth).
Köckert teach an optical infrared-reflecting laminate with low emission properties (pg. 2) comprising, in sequential order, a transparent substrate (111), a dielectric barrier layer (102b), a dielectric base layer (102a) that serves as a planarization layer for improving deposition conditions (pgs. 10 – 11), a functional layer (104) containing NiCr (Applicant’s “protective layer”), a metallic functional layer for reflecting IR radiation, and a cover layer arrangement (106), composed of dielectric layers (abstract, & Figs. 1 & 3).
Therefore, based on the teachings of Köckert, it would have been obvious to one of ordinary skill in the art to form the uppermost layer of the lower dielectric layer as a planarization layer (i.e. a layer with a smooth surface) for improving the deposition conditions of layers deposited on top of said planarization layer, such as functional layers (e.g. NiCr protective layer and metallic functional layer).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over You et al. & Köckert, as applied to claim 11 above, and further in view of Wolfe et al. (U.S. Patent No. 5,377,045 A).
With regard to claim 12, You et al. teach the uppermost layer of the lower dielectric layer in direct contact with the protective layer (i.e. planarized (i.e. smooth) layer discussed above for claim 11) may be composed of a metal nitride, such as silicon nitride (paragraph [0051]). You et al. do not teach a dielectric layer composed of silicon nitride is also doped with zirconium.
Wolfe et al. teach an interference filter for reflecting solar radiation comprising a low-emissivity solar control thin film coating including a first dielectric layer (8) is between a glass substrate and a metal reflective layer of the coating. A particularly suitable dielectric material for the first dielectric layer contains zirconium nitride and silicon nitride (collectively referred to as “SiZrN”). Zirconium nitride is electrically conductive which has very good optical reflectance in the IR spectrum, but cannot be used in device requiring high transparency. Silicon nitride is transparent in the UV through near IR spectrum. It was discovered that mixing ZrN and SiN creates a composite film that has a high index of refraction and excellent transparency in the visible spectrum, as well as good chemical and mechanical durability (Col. 2, Lines 2 – 12).
Therefore, based on the teachings of Wolfe et al., it would have been obvious to one of ordinary skill in the art to dope silicon nitride of the dielectric layer with zirconium (SiZrN) to achieve a high index of refraction dielectric layer with excellent transparency, as well as good chemical and mechanical durability.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over You et al., as applied to claim 1 above, and further in view of Inuduka et al. (US 2018/0275327 A1).
With regard to claim 17, You et al. do not teach the shielding coefficient of the window article.
Inuduka et al. teach a light-transmitting laminate comprising a metal thin film, a high refractive index thin film layer, layer and a light-transmitting substrate. The metal thin film layer is made of a metal that is likely to reflect far infrared rays and can function as a sunlight blocking layer, such as silver (paragraph [0021]). The thickness of the metal thin film layer is preferably 3 nm or more and 30 nm or less in order to achieve the desired sunlight shielding property (paragraph [0022]), measured as the shielding coefficient (paragraph [0104]). A low vertical emissivity and a shielding coefficient of 0.69 or less was evaluated as having a good heat blocking property (paragraph [0104]).
Therefore, based on the teachings of Inuduka et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the thickness of the metal layer (low emissivity layer) taught by You et al. through routine experimentation in order to achieve the desired low emissivity and low shielding coefficient. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over You et al., as applied to claim 1 above, and further in view of Thomsen et al. (US 2010/0206290 A1).
With regard to claim 20, You et al. do not teach the window comprising a glass substrate and multilayer film coating with low emissivity properties is for an oven door.
Thomsen et al. teach a transparent conductive coating (TCC) deposited on a window substrate for an oven that is capable of surviving the harsh environments of oven, such as an oven door (paragraph [0002]). A window with low emissivity characteristics improves the window pack performance and ultimately reduced OEM costs, e.g., by reducing the number of lites required for the design of an oven (paragraph [0043]).
Therefore, based on the teachings of Thomsen et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use the window with low emissive properties taught by You et al. in an oven door because windows with low emissivity improve the window pack performance and ultimately reduce oven manufacturing costs.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 3 & 8 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4, 6 – 9, 11, & 14 – 17 of copending Application No. 18/002,218 (reference application), in view of You et al. (US 2019/0203529 A1) and Tixhon et al. (US 2014/0087101 A1).
With regard to claim 1, ‘218 claims a transparent substrate constituting a high-temperature heating device with a multilayer thin film coating, wherein
The multilayer thin film coating includes a lower dielectric layer, a lower protective layer, a metal functional layer having an infrared reflection function, an upper protective layer, and an upper dielectric layer, which are sequentially laminated on the transparent substrate,
The thickness of the metal function is 12 nm or more (‘218 claim 1).
The dielectric layer includes a lower barrier layer (‘218 claim 2).
‘218 does not claim the dielectric includes at least one impurity collection layer.
You et al. teach a window (“an article”) comprising a transparent glass substrate and low emissivity coating (“a multilayer thin film coating”) formed on one surface of said glass substrate. The low emissivity coating comprises a lowermost barrier layer (“a barrier layer” of “a lower dielectric layer”), a first dielectric barrier, a second dielectric layer (“at least one impurity collection layer” of “a lower dielectric layer”), a first low emissivity protective layer (“a lower protective layer”), a low emissivity layer (“a metal functional layer”) containing a metal with reflectance in an IR region, paragraph [0002]), a second low emissivity protective barrier (“upper protective layer”), a third dielectric barrier (“an upper dielectric layer”) sequentially laminated from the transparent glass (abstract & paragraph [0024]). The dielectric layers are composed of a metal oxynitride doped with silicon (paragraph [0051]) or zinc tin oxide (paragraph [0052]).
The barrier layers disallow oxygen and moisture diffusion, as well as improve heat resistance and abrasion resistance without deteriorating the optical performance (paragraph [0056]). The dielectric layers (Applicant’s “impurity collection layer”) protect the low-emissivity layer (paragraph [0052]) and controls the optical performance, such as transmittance, reflectance, and color index, of the coating (paragraphs [0053] – [0054]).
Applicant’s specification defines an impurity collection layer as a layer for blocking impurities, such as sodium ions, moving from the transparent substrate to the metal functional layer in a high temperature state (originally filed specification, paragraphs [0051] – [0052]). Applicant’s specification teaches the barrier layers serve the same function (originally filed specification, paragraph [0057]). Applicant’s impurity collection layer is composed of at least one of tin-zinc oxide (SnZnOx), silicon oxide (SiO2), and silicon oxynitride (SiOxNy). The dielectric layers taught by You et al. are also composed of a metal oxynitride doped with silicon (paragraph [0051]) or zinc tin oxide (paragraph [0052]). As such, the dielectric layers taught by You et al. would be expected to inherently have the same impurity collection property as Applicant’s recited impurity collection layer(s).
Therefore, based on the teachings of You et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate barrier layers and impurity collection layers into the dielectric layers for disallow oxygen and moisture diffusion, improve heat resistance and abrasion resistance without deteriorating the optical performance, and control optical performance.
The courts have held that rearrangement of parts are unpatentable because shifting the position of the components would not have modified the operation of the device.
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). See MPEP 2144.04.VI.(C).
Furthermore, You et al. teach a thickness of each of the dielectric layers (i.e., “first impurity collection layer and the second impurity collection layer”) in a range of about 5 nm to about 60 nm (paragraph [0054]), which overlaps with Applicant’s claimed range of between 3 nm and 10 nm. The thickness of the dielectric layers may be adjusted to achieved the desired levels of optical performance, such as transmittance, reflectivity, transmitted color, reflective color, based on the value of the refraction index (paragraphs [0053 – [0054]).
Therefore, based on the teachings of You et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the dielectric layers (i.e., “first impurity collection layer and the second impurity collection layer”) to achieve the desired optical performance.
You et al. teach dielectric layers (“impurity collection layers”) may include a metal oxynitride doped with silicon (paragraph [0051]). However, You et al. do not teach the oxygen to nitrogen ratio (x > y) in the silicon doped metal oxynitride.
Tixhon et al. teach a transparent glass substrate having a coating with a low-emissivity and comprising a mono-layer for neutralization of the colour in reflection of the coated glass (i.e. prevent interferential colours in reflection) composed of silicon oxynitrides (SiOxNy), wherein the x is less than 2 (and y is 1). The values of x and y are chosen to adjust the refractive index value (paragraph [0028]).
Therefore, based on the teachings of Tixhon et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the silicon doped metal oxynitride layer wherein the ratio of oxygen to nitrogen is less than 2:1 for achieving the desired refractive index value and neutralization of the reflected colors in the coated glass.
With regard to claim 2, You et al. teach the dielectric layers are composed of a metal oxynitride doped with silicon (paragraph [0051]) or zinc tin oxide (paragraph [0052]).
With regard to claim 3, You et al. teach the lowest barrier layer may include silicon oxynitride, silicon aluminum oxynitride, zirconium silicon oxynitride (P0063). The lower barrier layer may include zirconium silicon nitride (i.e. silicon nitride doped with zirconium) (paragraph [0066]).
With regard to claim 8, ‘218 claims the lower protective layer is 2 nm or more (‘218 claims 1 & 4).
With regard to claim 9, ‘218 claims the thickness of the lower protective layer is larger than that of the upper protective layer (‘218 claim 1).
With regard to claim 10, ‘218 claims the thickness of the upper protective layer is 0.3 nm to 0.7 nm (‘218 claim 3).
With regard to claim 11, ‘218 claims the lower dielectric layer includes a planarization layer, and the planarization layer is formed in contact directly under the lower protective layer (‘218 claim 6).
With regard to claim 12, ‘218 claims the planarization layer is formed by doping silicon nitride with zirconium (‘218 claim 11).
With regard to claim 13, ‘218 claims an overcoat on the upper dielectric layer, wherein the overcoat includes titanium oxide (‘218 claim 7).
With regard to claim 14, ‘218 claims each of the upper protective layer and the lower protective layer includes one or more of titanium, nickel, chromium and niobium, or an alloy thereof (‘218 claim 8).
With regard to claim 15, ‘218 claims the lower protective layer each includes a nickel-chromium alloy (‘218 claim 9).
With regard to claim 16, ‘218 claims a vertical emissivity (normal emissivity) is 0.035 or less (‘218 claim 13).
With regard to claim 17, ‘218 claims a shading (shielding) coefficient of 0.55 or less (‘218 claim 14). According to U.S. Patent No. 5,513,040 A, the terms shading coefficient (SC) and shielding coefficient (SC) are synonyms.
With regard to claim 18, ‘218 claims a visible light transmittance is 65% to 85% (‘218 claim 15).
With regard to claim 19, ‘218 claims a visible light reflectance of the coating surface is 3% to 20% (‘218 claim 16).
With regard to claim 20, ‘218 claims an oven door comprising the transparent substrate of claim 1 (‘218 claim 17).
This is a provisional nonstatutory double patenting rejection.
Claims 1 – 3, 8 – 10, 13 – 15, & 17 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 7, 11 – 12, & 14 – 15 of copending Application No. 17/784,476, in view of You et al. (US 2019/0203529 A1) & Tixhon et al. (US 2014/0087101 A1).
With regard to claim 1, ‘476 claims a transparent substrate with a thin film multilayer coating comprising:
A transparent substrate; and
A thin film multilayer coating, wherein the thin film coating comprises a lower dielectric layer, a lower metal protective layer, a metal functional layer having an infrared reflecting function, an upper metal protective layer, and an upper dielectric layer, which are sequentially laminated on the transparent substrate (‘476 claim 10).
The thickness of the metal functional layer is from 7 nm to 12 nm (‘476 claim 5), which overlaps with Applicant’s claimed range of 12 nm or more.
‘476 does not claim the barrier layer and impurity collection layer.
You et al. teach a window (“an article”) comprising a transparent glass substrate and low emissivity coating (“a multilayer thin film coating”) formed on one surface of said glass substrate. The low emissivity coating comprises a lowermost barrier layer (“a barrier layer” of “a lower dielectric layer”), a first dielectric barrier, a second dielectric layer (“at least one impurity collection layer” of “a lower dielectric layer”), a first low emissivity protective layer (“a lower protective layer”), a low emissivity layer (“a metal functional layer”) containing a metal with reflectance in an IR region, paragraph [0002]), a second low emissivity protective barrier (“upper protective layer”), a third dielectric barrier (“an upper dielectric layer”) sequentially laminated from the transparent glass (abstract & paragraph [0024]). You et al. teach the dielectric layers are composed of a metal oxynitride doped with silicon (paragraph [0051]) or zinc tin oxide (paragraph [0052]).
The barrier layers disallow oxygen and moisture diffusion, as well as improve heat resistance and abrasion resistance without deteriorating the optical performance (paragraph [0056]). The dielectric layers (Applicant’s “impurity collection layer”) protect the low-emissivity layer (paragraph [0052]) and controls the optical performance, such as transmittance, reflectance, and color index, of the coating (paragraphs [0053] – [0054]).
Applicant’s specification defines an impurity collection layer as a layer for blocking impurities, such as sodium ions, moving from the transparent substrate to the metal functional layer in a high temperature state (originally filed specification, paragraphs [0051] – [0052]). Applicant’s specification teaches the barrier layers serve the same function (originally filed specification, paragraph [0057]). Applicant’s impurity collection layer is composed of at least one of tin-zinc oxide (SnZnOx), silicon oxide (SiO2), and silicon oxynitride (SiOxNy). The dielectric layers taught by You et al. are also composed of a metal oxynitride doped with silicon (SiOxNy) (paragraph [0051]) or zinc tin oxide (SnZnOx) (paragraph [0052]). As such, the dielectric layers taught by You et al. would be expected to inherently have the same impurity collection property as Applicant’s recited impurity collection layer(s).
Therefore, based on the teachings of You et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate barrier layers and impurity collection layers into the dielectric layers for disallow oxygen and moisture diffusion, improve heat resistance and abrasion resistance without deteriorating the optical performance, and control optical performance.
The courts have held that rearrangement of parts are unpatentable because shifting the position of the components would not have modified the operation of the device.
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). See MPEP 2144.04.VI.(C).
Furthermore, You et al. teach a thickness of each of the dielectric layers (i.e., “first impurity collection layer and the second impurity collection layer”) in a range of about 5 nm to about 60 nm (paragraph [0054]), which overlaps with Applicant’s claimed range of between 3 nm and 10 nm. The thickness of the dielectric layers may be adjusted to achieved the desired levels of optical performance, such as transmittance, reflectivity, transmitted color, reflective color, based on the value of the refraction index (paragraphs [0053 – [0054]).
Therefore, based on the teachings of You et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the dielectric layers (i.e., “first impurity collection layer and the second impurity collection layer”) to achieve the desired optical performance.
You et al. teach dielectric layers (“impurity collection layers”) may include a metal oxynitride doped with silicon (paragraph [0051]). However, You et al. do not teach the oxygen to nitrogen ratio (x > y) in the silicon doped metal oxynitride.
Tixhon et al. teach a transparent glass substrate having a coating with a low-emissivity and comprising a mono-layer for neutralization of the colour in reflection of the coated glass (i.e. prevent interferential colours in reflection) composed of silicon oxynitrides (SiOxNy), wherein the x is less than 2 (and y is 1). The values of x and y are chosen to adjust the refractive index value (paragraph [0028]).
Therefore, based on the teachings of Tixhon et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the silicon doped metal oxynitride layer wherein the ratio of oxygen to nitrogen is less than 2:1 for achieving the desired refractive index value and neutralization of the reflected colors in the coated glass.
Claim 1 of ‘476 do not explicitly claim the transparent substrate constitutes a high-temperature heating device.
However, when reading the preamble in the context of the entire claim, the recitation “high-temperature heating device” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
With regard to claim 2, You et al. teach the dielectric layers are composed of a metal oxynitride doped with silicon (paragraph [0051]) or zinc tin oxide (paragraph [0052]).
With regard to claim 3, You et al. teach the lowest barrier layer may include silicon oxynitride, silicon aluminum oxynitride, zirconium silicon oxynitride (P0063). The lower barrier layer may include zirconium silicon nitride (i.e. silicon nitride doped with zirconium) (paragraph [0066]).
With regard to claim 8, ‘476 claims the lower protective layer is 1.5 nm to 2 nm (‘476 claim 3), which overlaps with Applicant’s claimed range of 2 nm or more.
With regard to claim 9, ‘476 claims the thickness of the lower protective layer is larger than that of the upper protective layer (‘476 claim 1).
With regard to claim 10, ‘476 claims the thickness of the upper protective layer is 0.3 nm to 0.7 nm (‘476 claims 1 & 4).
With regard to claim 13, ‘476 claims an overcoat on the upper dielectric layer, wherein the overcoat comprises titanium oxide (‘476 claim 2).
With regard to claim 14, ‘476 claims each of the upper protective layer and the lower protective layer includes one or more of titanium, nickel, chromium and niobium, or an alloy thereof (‘476 claim 6).
With regard to claim 15, ‘476 claims the lower protective layer each includes a nickel-chromium alloy (‘476 claim 7).
With regard to claim 17, ‘476 claims a solar heat gain coefficient that is less than 0.7 (‘476 claim 14), which is equivalent of a shading (shielding) coefficient of 0.80 or less, and includes Applicant’s claimed range of 0.55 or less. According to U.S. Patent No. 5,513,040 A, the terms shading coefficient (SC) and shielding coefficient (SC) are synonyms.
With regard to claim 18, ‘476 claims a visible light transmittance is 75% to 85% (‘476 claim 11), which is within Applicant’s recited range of 65% to 85%.
With regard to claim 19, ‘476 claims a visible light reflectance of the coating surface is 3% to 10%, which is within Applicant’s claimed range of 3% to 20% (‘476 claim 12).
With regard to claim 20, ‘476 claims an oven door comprising the transparent substrate of claim 1 (‘476 claim 15).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant argues, “…please replace paragraph [0061] of the U.S. Published Patent Application with the amended paragraph. No new matter has been added. Accordingly, Applicant respectfully requests consideration of the amended specification” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant’s amendment has not been entered for the following reasons:
First, Applicant has requested entering an amendment of the U.S. Published Patent Application (i.e., “PGPub”) for the current application. However, the USPTO does not amend publications of an application. It is assumed Applicant intended to amend the originally filed specification, not the PGPub of the current application.
Second, paragraph [0061] of the originally filed specification lacks similarity to paragraph [0061] of the PGPub of the current application. In order for the specification to be amended, Applicant must request an amendment of paragraph [0062] of the original specification.
Applicant argues, “Applicant acknowledges these [double patenting] rejections. At the present time, no response is required because these are provisional rejections” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: In light of the amendments of claim 1 and the cancellation of claims 6 – 7, the obviousness type double patenting rejections have been maintained and modified.
Applicant argues, “As shown in FIG. 1, the present application describes that a second impurity collection layer, which performs primary trapping, is disposed on the substrate side, while a first impurity collection layer, which performs secondary trapping, is disposed on top, and that each is composed of a different material. However, such a configuration above for capturing impurities in two stages using different materials is not disclosed in or taught by You and Tixhon, nor in the additional cited reference” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As previously discussed, You et al. teach a window comprising similar layers of similar function and composition. You et al. do not teach the same arrangement of said layers.
However, the courts have held that rearrangement of parts are unpatentable because shifting the position of the components would not have modified the operation of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). See MPEP 2144.04.VI.(C).
The Examiner notes Applicant’s specification teaches an embodiment (previously examined) of the article (window) in which the barrier layers and impurity collection layers are arranged in the same order as the window as taught by You et al. (see non-final rejection mailed Sept. 23, 2024). As such, Applicant has failed to demonstrate that the arrangement of layers taught by You et al. would have modified the operation of the device.
Applicant argues, “Furthermore, the reason for including impurity collection layers in the present application is to prevent the diffusion of impurities during high-temperature processing when the glass is used as part of a high-temperature heating device – such as an oven door. Unlike the present application, You and Tixhon both pertain to glass for building interiors. Therefore, You and Tixhon do not disclose or teach a transparent substrate constituting a high-temperature heating device with a multilayer thin film coating. Further, the other cited references do not disclose or teach the amended features of claim 1 recited in the present application” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, the term “high-temperature heating device” is a relative term. 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).
Second, Applicant’s “high-temperature heating device” is a vague term and does not preclude a window for a building because windows for buildings are constructed to endure cold winters and hot summers.
Third, when reading the preamble in the context of the entire claim, the recitation “high-temperature heating device” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Fourth, as discussed for claim 20 above, one of ordinary skill in the art would be motivated to use the window taught by You et al. for use as a window inside an oven structure based on the teachings of Thomsen et al. (US 2010/0206290 A1).
Fifth, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
You et al. teach the same composition for the dielectric layers as Applicant’s recited impurity collection layers. The dielectric layers taught by You et al. are coated onto the glass, and therefore also function to prevent diffusion of impurities during high-temperature process.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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