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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9 March 2026 has been entered.
Allowable Subject Matter
Amending claim 1 to recite the first layer having a thickness of 35 to 70 nm would define claim 1 over the art. Further, this indication of allowability holds even if each of the overlayer and the second layer is broadened to recite just silicon oxide (from silicon aluminum oxide as currently pending).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 2, 8-13, and 15-21 are rejected under 35 U.S.C. 103 as unpatentable over U.S. 2017/0167188 A1 (“Burrows”) in view of 2019/0043640 A1 (“Ganjoo ‘640”).
Considering claims 1, 2, 8-10, 12, 15, 17, 19, and 20, Burrows discloses a coated glass pane that forms one pane used in an IGU of a building, the coated glass pane comprising, from a surface of the base glass pane, the following immediate sequence of layers:
-a multilayered base layer 15 deposited immediately on the base glass pane and disclosed to be a single layer or a multilayered structure, the base layer 15 comprising a layer of silica that optionally contains aluminum;
-a transparent conductive oxide layer 20 comprising indium doped tin oxide (ITO), the transparent conductive oxide layer 20 located immediately on the base layer 15 and having a thickness of 105 to 145 nm;
-an overcoat layer 100 (mapping onto the claimed second layer) located immediately on transparent conductive oxide layer 20;
-an oxynitride layer, in particular one comprising silicon oxynitride (mapping onto the metal oxynitride layer in claim 1); and
-a layer 70 of titanium oxide (mapping onto the uppermost metal oxide layer of claim 1) located over the entirety of aforementioned layers and being the outermost layer of the sequence of layers, wherein layer 70 is located immediately on the oxynitride layer. (Burrows abs.; ¶¶ 0026, 0029, and 0046-0054; and Figs. 3-6, with Figs. 5 and 6 reproduced infra).
Burrows is analogous art, for it is directed to the same field of endeavor as that of the instant application (IGUs having ITO-based low-e coatings).
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Burrows differs from the claimed invention, as Burrows fails to disclose the usage of zinc-tin oxide or zinc stannate for the lowermost sublayer of its multilayered base layer 15. However, in the art of low-emissivity coating utilizing an ITO-based low-emissivity layer, it is known to utilize a bilayered undercoating between the glass substrate and the ITO layer in order to ensure a pleasant color in light reflected by the low-emissivity coating. This is taught in Ganjoo ‘640. (Ganjoo ‘640 ¶¶ 0062-0066 and 0156-0159). In particular, the bilayered undercoating includes a high index sublayer made of zinc tin oxide (and in particular zinc stannate) immediately adjacent the substrate and a low index sublayer directly on the high index sublayer, the low index sublayer comprising, inter alia, silica and silica doped with small amount of alumina. (Id.) It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have utilized the bilayered undercoating as taught by Ganjoo ‘640 for the base layer 15 of Burrows, as doing so results in an ITO-based low-emissivity coating having desirable reflection properties (e.g. neutral color). (Id. ¶¶ 0156-0159).
Burrows discloses that its overcoat layer 100 comprises silicon nitride, silicon oxynitride, or silicon dioxide. (Burrows ¶ 0047). Given that silicon dioxide is one of only three exemplary materials named, its selection for overcoat layer 100 is considered to be disclosed with sufficient specificity. If this were to be challenged (which is not conceded), then the selection of silicon dioxide is obvious in view of the express disclosures of the reference. Burrows discloses that its titanium oxide layer has a thickness of 1-7.5 nm, including example of 5 nm. (Id. ¶ 0054).
It is noted that Burrows expressly states that any of its silicon dioxide, silicon nitride, or silicon oxynitride film can contain minor amount of aluminum. (Id. ¶ 0058). This readily applies to at least the silicon oxide layers located below and above the TCO layer 20 of ITO; further, this comports with the teachings in Ganjoo re: the layers located underneath its ITO-based TCO layer. The resulting sequence of layers resulting from the combination of Burrows and Ganjoo ‘640, from the substrate outward, is thus multilayered base layer 15 having a lower sublayer of ZnSnO and upper sublayer of SiAlO/ TCO layer 20 of ITO/ overcoat 100 of SiAlO2/ SiOxNy/ layer 70 of TiOx.
Burrows as modified by Ganjoo ‘640 reads on claims 1, 2, 8-10, 12, 15, 17, 19, and 20.
Considering claim 11, Burrows discloses that its ITO has a thickness of less than 300 nm, with numerous examples utilizing ITO layer having thickness of 140 nm or less. (Id. ¶¶ 0045 and 0050-0054; and clm. 12). The range of claim 11 is thus considered to be disclosed with sufficient specificity or alternatively obvious.
Considering claims 13 and 18, the outermost titanium oxide layer 70 (mapping onto the metal oxide layer of the claimed protective layer) is disclosed to have a thickness less than 20 nm, and the metal oxynitride layer (mapping onto the metal oxynitride layer of the claimed protective layer) is disclosed to have a thickness of 40 to 90 nm. (Burrows ¶¶ 0052 and 0054). The sum of the two thicknesses is thus less than 60 nm to less than 110 nm, which overlaps the ranges recited in claims 13 and 18. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379).
Considering claim 16, there is no presence of silver in the coating of Burrows as discussed above. (Burrows ¶ 0054-0056 and Figs. 5 and 6).
Considering claim 21, as an alternative, Burrows discloses that each of its silicon dioxide, silicon nitride, and silicon oxynitride materials may additionally be doped with small amount of aluminum. (Burrows ¶ 0058). Thus, the overcoat layer 100 may be silicon aluminum oxide. This reads on the sequence recited in claim 21.
Response to Arguments and Declaration under Rule 1.132
In view of amendments to the claims, the previously instated rejection under 35 U.S.C. 103 over Sternchuss has been withdrawn.
In view of amendments to the claims, the previously instated rejection under 35 U.S.C. 103 over Burrows and Ganjoo ‘640 has been withdrawn. New rejections over Burrows and Ganjoo ‘640 has been instated above.
As Applicant’s arguments and the new Declaration under Rule 1.132 (“March 2026 1.132 Dec.”) applies to the new line of rejection, these are addressed below.
At the outset, it is noted that Applicant’s general intent appears to be couched in the argument that although Burrows discloses silicon (aluminum) nitride, silicon (aluminum) oxynitride, and silicon (aluminum) dioxide for its overcoat layer 100 (with the overcoat layer 100 mapping onto the lowermost layer in the tri-layer stack over the ITO layer), the three types of materials are not truly fully substitutable for one another, and that a particular selection (namely usage of silicon oxide of the lowest of the tri-layer when paired with a metal oxynitride middle layer and an uppermost metal oxide layer) exhibits alleged superior properties. (See e.g. March 2026 1.132 Dec. item 18). In the March 2026 1.132 Dec., Applicant did not actually allege criticality.
It is noted that Applicant previously couched the argument in terms of criticality of silicon oxide/ metal oxynitride/ metal oxide tri-layer. (See items 5-7 of the Declaration under Rule 1.132 filed on 26 September 2025, “September 2025 1.132 Dec.”).
At least procedurally, because Applicant at most alleged superior results and because Applicant never contended criticality of usage of silicon aluminum oxide in a tri-layer of silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer, the March 2026 1.132 Dec. is insufficient to establish criticality.
However, solely for purpose of compact prosecution, it is presumed that Applicant is presently contending that usage of silicon aluminum oxide (over silicon aluminum nitride and silicon aluminum oxynitride) in the lowest layer of silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer is critical, and that Applicant contends that this criticality is established by the evidence provided.
Reiterating points previously conveyed to Applicant, it is noted that Applicant never provided any evidence pertaining to the claimed silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer. Instead, what Applicant has submitted in the March 2026 1.132 Dec. are various disjointed analyses drawn from discussions on a material contained in a single layer from the allegedly critical silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer, wherein said discussions are not related to the allegedly critical tri-layer but rather pertain to similar materials used singly in other endeavors. (See March 2026 1.132 Dec. items 6-11).
Two discussions (NPL to Youmas and WIPO publication by Collazo) of the three provided are related to aluminum nitride, which is not relevant to either the prior art or the claimed invention. One other reference (NPL to Gan) is directed to respective single layer of silicon nitride and silicon oxynitride deposited on Si substrate, with no other layers located above or below the respective silicon nitride and silicon oxynitride layer. The references discussing aluminum nitride have no relevance to a tri-layer of silicon oxide/ metal oxynitride/ metal oxide, and the NPL to Gan at best is relevant for only one of the three layers in the allegedly critical tri-layer but is otherwise not germane for being silent on the other claimed layers in the allegedly critical tri-layer of silicon oxide/ metal oxynitride/ metal oxide.
Applicant is reminded that proper comparison does not take the form of mentioning alleged superior results of individual elements, such results derived from other (but not identical) situations in the prior art that is out of context in view of totality of what is contended to be critical (viz. tri-layer of silicon aluminum oxide/ metal oxynitride/ metal oxide). Rather, proper establishment of criticality requires comparison of what is allegedly critical against what is disclosed in the closest prior art. (See MPEP 716.02(e)). In the instant case, this should be a comparison of how the allegedly critical tri-layer of silicon aluminum oxide/ metal oxynitride/ metal oxide provides superior properties when deposited over a multilayered base layer and TCO layer, as compared to respective comparative situations in Burrows (the closest prior art), wherein the lowermost of the tri-layer is silicon aluminum nitride or silicon aluminum oxynitride (the two other alternatives disclosed in Burrows).
As Applicant has not submitted evidence allowing the correct comparison to be made, the 1.132 Declarations fail to meet the minimum threshold needed for establishing sufficient nexus to the claimed subject matter. (See MPEP 716.01(b)). As a threshold matter, even though not germane to establishing criticality of a silicon oxide/ metal oxynitride/ metal oxide tri-layer in which the lowermost layer is silicon oxide, showing that inclusion of aluminum weakens silicon (oxy)nitride requires evidence that inclusion of aluminum to silicon (oxy)nitride results in inferior properties as compared to silicon (oxy)nitride per se. Applicant’s attempt to use references on AlN to demonstrate weakness of silicon aluminum (oxy)nitride does not suffice.
Furthermore, even were nexus established (not conceded), there is nothing quantitative in the Declarations comparing durability and/or chemical resistance of the allegedly critical silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer to the corresponding disclosure from Burrows. There is no attempt to quantitatively ascertain, for instance, how many abrasion cycles the allegedly critical silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer can tolerate versus how many abrasion cycles the disclosure from Burrows can tolerate (as indication of superior durability); nor is there any quantitative evidence showing the allegedly critical silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer in preventing degradation when subject to a strong chemical.
For the reasons mentioned in ¶¶ 18-26 above, the 1.132 Declarations fail to establish criticality of the silicon aluminum oxide/ metal oxynitride/ metal oxide tri-layer. The obviousness rejection over Burrows and Ganjoo ‘640 therefore stands despite submission of the 1.132 Declarations.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached on M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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