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 .
Response to Amendment
The amendment filed 15 December 2025 has been entered.
Claims 1-4, 8-17, and 19-23 remain pending in the application, wherein claims 1, 4, 8, 12, and 19 are amended, claims 5-7 and 18 are canceled, claim 19 is withdrawn, and claims 20-23 are new.
Support for the amendments to claim 1, 12, and 19 is found in paragraphs 0032-0035 of the instant specification. New claims 20-23 are supported by the claims upon which they depend as they narrow the scope of the limitations of the base claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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 1-4, 8-13, 16-17, 20, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kreling et al. (US 2014/0233120, previously cited).
Claim 1: Kreling teaches a mirror having a reflective layer (paragraph 0001). The mirror has a glass substrate, a metallic or substantially metallic reflective layer (i.e. a metal functional layer) provided on the glass substrate (i.e. over at least a portion of the substrate), and the reflective layer (i.e. metal functional layer) comprises silicon aluminum (i.e. a metal alloy of silicon aluminum alloy) (paragraph 0006). The SiAl reflective layer is provided between at least first and second dielectric layers 101 and 104 (paragraph 0012) wherein the transparent dielectric layer 104 (i.e. the layer over the SiAl layer as depicted by Kreling in Fig. 1) may be of or include silicon nitride, silicon oxide, silicon oxynitride, aluminum oxide (i.e. alumina), etc. (paragraph 0016) and the silicon-inclusive dielectric materials may or may not be doped with aluminum (i.e. silicon nitride, oxide, or oxynitride doped with aluminum would be silicon aluminum oxide, nitride, or oxynitride) (paragraph 0013). Kreling further teaches that the SiAl mirror can be possibly without the need for additional protective overcoat(s) wherein a transparent dielectric protective layer 105 is optionally applied (paragraph 0012). That is, the transparent dielectric layer 104 also provides the function of protecting the SiAl layer. This function is also considered to be present because the transparent dielectric layer 104 is made of substantially identical materials as the instantly claimed protective layer and substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Claim 2: Kreling teaches that the SiAl layer (i.e. the metal functional layer) is preferably from about 120-300 Å (i.e. 12-30 nm) thick because reflective properties deteriorate if the SiAl layer is thicker than 300 Å or is thinner than 120 Å (paragraph 0015), and this range lies within the instantly claimed range. See MPEP § 2131.03.
Claim 3: Kreling teaches that the SiAl layer (i.e. the metal functional layer) may contain, on a weight % basis, even more preferably from 75-99% Si or most preferably 85-98% Si, because too much Al harms the stability of the Si in the layer but adding Al increases reflectance of the layer (paragraph 0014). These ranges lie within the instantly claimed range. See MPEP § 2131.03.
Claim 4: Kreling teaches a metallic or substantially metallic reflective layer (i.e. a functional layer) provided on the glass substrate (i.e. over at least a portion of the substrate), and the reflective layer (i.e. metal functional layer) comprises silicon aluminum (i.e. a metal alloy of silicon aluminum alloy) (paragraph 0006).
Claim 8: Kreling teaches in Fig. 1 that the mirror has a glass substrate with a mirror coating that includes dielectric layer 101, reflective layer 102 of SiAl, dielectric layer 104, and transparent dielectric protective layer 105 (paragraphs 0012-0013). The first dielectric layer 101 is considered to correspond to the instantly claimed base layer and is shown in Fig. 1 to be over the substrate and under the reflective layer 102 (i.e. under the metal functional layer).
Claim 9: Kreling teaches that the reflective layer (i.e. the metal functional layer as outlined above) may be provided between at least first and second dielectric layers (i.e. further comprising at least one dielectric layer) (paragraph 0012).
Claim 10: Kreling teaches that dielectric layer 101 and 104 each may be of or include any of silicon nitride, silicon oxide (i.e. silica), aluminum nitride, aluminum oxide, and/or titanium nitride, etc., and the silicon-inclusive dielectric materials may also include aluminum (i.e. silicon aluminum oxides and nitrides) (paragraph 0013).
Claim 11: Kreling teaches that the mirror has a glass substrate (paragraph 0006).
Claim 12: Kreling teaches in Fig. 1 that the mirror (i.e. a coated article) has a glass substrate with a mirror coating (i.e. shown in Fig. 1 to be over at least a portion of the substrate) that includes dielectric layer 101, reflective layer (i.e. a metal functional layer) 102 of SiAl (i.e. a metal alloy of silicon aluminum alloy), dielectric layer 104, and transparent dielectric protective layer 105 (paragraphs 0012-0013). The transparent dielectric layer 104 (i.e. the layer over the SiAl layer as depicted by Kreling in Fig. 1) may be of or include silicon nitride, silicon oxide, silicon oxynitride, aluminum oxide (i.e. alumina), etc. (paragraph 0016) and the silicon-inclusive dielectric materials may or may not be doped with aluminum (i.e. silicon nitride, oxide, or oxynitride doped with aluminum would be silicon aluminum oxide, nitride, or oxynitride) (paragraph 0013). Kreling further teaches that the SiAl mirror can be possibly without the need for additional protective overcoat(s) wherein a transparent dielectric protective layer 105 is optionally applied (paragraph 0012). That is, the transparent dielectric layer 104 also provides the function of protecting the SiAl layer (i.e. transparent dielectric layer 104 corresponds to the instantly claimed protective layer). This function is also considered to be present because the transparent dielectric layer 104 is made of substantially identical materials as the instantly claimed protective layer and substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Claim 13: Kreling teaches the SiAl reflective layer (i.e. the metal functional layer) to be between at least first and second dielectric layers 101 and 104 (i.e. the metal functional layer resides over the dielectric layer 101) (paragraph 0012).
Claim 16: Kreling teaches in Fig. 1 that the mirror (i.e. a coated article) has a glass substrate with a mirror coating (i.e. shown in Fig. 1 to be over at least a portion of the substrate) that includes dielectric layer 101, reflective layer (i.e. a metal functional layer) 102 of SiAl (i.e. a metal alloy of silicon aluminum alloy), dielectric layer 104, and transparent dielectric protective layer 105 (paragraphs 0012-0013). As outlined above regarding instant claim 12, dielectric layer 104 corresponds to the instantly claimed protective layer. The transparent dielectric protective layer of Kreling, when included, is a dielectric layer that resides over the protective layer.
Claim 17: Kreling teaches that dielectric layer 101 and 104 each may be of or include any of silicon nitride, aluminum nitride, etc., and the silicon-inclusive dielectric materials may also include aluminum (i.e. silicon aluminum nitrides) (paragraph 0013).
Claims 20 and 22: Kreling teaches the transparent dielectric layer 104 (i.e. the protective layer, as outlined above regarding instant claims 1 and 12) may be of or include silicon oxide (i.e. silica), aluminum oxide (i.e. alumina), etc. (paragraph 0016) and the silicon-inclusive dielectric materials may or may not be doped with aluminum (i.e. silicon oxide doped with aluminum would be silicon aluminum oxide, or silica aluminum oxide) (paragraph 0013).
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.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kreling et al. (US 2014/0233120, previously cited) as applied to claims 12 and 13 above.
Claims 14-15: The teachings of Kreling regarding claims 12 and 13 are outlined above. Kreling does not explicitly teach the instantly claimed base layer. However, Kreling teaches that, while a layer etc. may be said to be “on” a substrate, layer, etc., other layer(s) may be provided therebetween (paragraph 0029). This is considered to render as obvious to one of ordinary skill that another layer (i.e. a second dielectric layer as recited in instant claim 14 or a base layer as recited in instant claim 15) may be present between any of the recited layers (e.g. between the metal functional layer and the protective layer or over the first dielectric layer and under the SiAl reflective layer). Furthermore, Kreling teaches the SiAl reflective layer (i.e. the metal functional layer) to be between at least first and second dielectric layers 101 and 104 (paragraph 0012). The teaching of “at least” renders as obvious to one of ordinary skill that additional dielectric layer(s) may be present, such as having two dielectric sublayers forming the first dielectric layer or two dielectric sublayers forming the second dielectric layer (i.e. with the upper sublayer corresponding to the instantly claimed protective layer).
While not specifically teaching a singular example of the instantly claimed coated article with additional layers (i.e. such as a second dielectric layer between the metal functional layer and the protective layer or a base layer between the first dielectric layer and the metal functional layer), it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the mirror or Kreling to include other layer(s) as Kreling teaches that other layers may be present and teaches the metal functional layer to be between at least first and second dielectric layers, and therefore this is considered to be an obvious variant, and one would have had a reasonable expectation of success.
Double Patenting
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 8-17, and 20-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9, and in view of claims 3, 6-7, 10-16, and 18-19 of copending Application No. 18/244,988 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Both instant claim 1 and claim 9 of the ‘988 application recite a coated article comprising a substrate and a metal functional layer over at least a portion of the substrate; wherein the metal functional layer comprises a metal alloy selected from the group consisting of a silicon aluminum alloy and a silicon cobalt alloy; and a protective layer over the metal functional layer, wherein the protective layer comprises (i.e. is selected from the group consisting of) silica, alumina, silicon oxide, silica aluminum oxide, silicon aluminum oxide, silicon aluminum oxynitride, etc.
The following claims differ in claim dependency but are considered obvious variants of the claims of the ‘988 application due to the substantial overlap of claim limitations (in different combinations due to claim dependency):
Both instant claim 2 and claim 3 of the ‘988 application recite wherein the metal functional layer has a thickness in the range of 20 nm to 40 nm.
Both instant claim 3 and claim 6 of the ‘988 application recite wherein the metal functional layer comprises from 60 wt. % to 99 wt. % silicon.
Both instant claim 4 and claim 7 of the ‘988 application recite wherein the metal functional layer comprises the silicon aluminum alloy (also recited in instant claim 1 and claim 1 of the ‘988 application).
Both instant claim 8 and claim 10 of the ‘988 application recite further comprising a base layer over the substrate and under the metal functional layer.
Both instant claim 9 and claim 11 of the ‘988 application recite further comprising at least one dielectric layer.
Both instant claim 10 and claim 12 of the ‘988 application recite wherein the dielectric layer comprises one or more films selected from zinc tin oxides, zinc oxide, silica, silicon aluminum oxides, silicon nitride, aluminum nitride, silicon aluminum nitrides, titanium oxides, and titanium nitrides.
Both instant claim 11 and claim 13 of the ‘988 application recite a coated article comprising a glass substrate (i.e. wherein the substrate is a glass substrate).
Both instant claim 12 and claim 13 of the ‘988 application recite a coated article comprising a glass substrate and a coating over at least a portion of the substrate, the coating comprising a dielectric layer over the substrate, a metal functional layer, and a protective layer over the metal functional layer; wherein the metal functional layer comprises a metal alloy selected from the group consisting of a silicon aluminum alloy and a silicon cobalt alloy. The materials of the protective layer is noted as being recited in claim 9 of the ‘988 application.
Both instant claim 13 and claim 14 of the ‘988 application recite wherein the metal functional layer resides over the dielectric layer.
Both instant claim 14 and claim 15 of the ‘988 application recite further comprising a second dielectric layer over the metal functional layer wherein the protective layer resides over the second dielectric layer.
Both instant claim 15 and claim 16 of the ‘988 application recite further comprising a base layer over the dielectric layer wherein the metal functional layer resides over the base layer.
Both instant claim 16 and claim 18 of the ‘988 application recite wherein the dielectric layer resides over the protective layer.
Both instant claim 17 and claim 19 of the ‘988 application recite wherein the dielectric layer comprises silicon nitride or silicon aluminum nitride.
Instant claims 20 and 22 and claim 9 of the ‘988 application each recite wherein the protective layer comprises (is) silica aluminum oxide.
Instant claims 21 and 23 and claims 1 and 13 of the ‘988 application each recite wherein the metal functional layer comprises silicon cobalt alloy.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The amendment to claim 4 has overcome the improper claim dependency previously set forth in the Office Action mailed 17 September 2025. The rejection under 35 U.S.C. 112(d) has been withdrawn.
Applicant’s arguments, filed 15 December 2025, regarding the prior art have been fully considered but are not persuasive for the following reasons:
Applicant argues, see p. 8, that the first and second dielectric layers are identified separately from the transparent dielectric protective layer which is zirconium-based instead of one of the recited materials. However, as outlined above, Kreling teaches the SiAl reflective layer is provided between at least first and second dielectric layers 101 and 104 (paragraph 0012) wherein the transparent dielectric layer 104 may be of or include silicon nitride, silicon oxide, silicon oxynitride, aluminum oxide (i.e. alumina), etc. (paragraph 0016). Kreling further teaches that the SiAl mirror can be possibly without the need for additional protective overcoat(s) and the transparent dielectric protective layer 105 is optionally applied (paragraph 0012). That is, the transparent dielectric layer 104 also provides the function of protecting the SiAl layer. This function is also considered to be present because the transparent dielectric layer 104 is made of substantially identical materials as the instantly claimed protective layer and substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Regarding dependent claim 14 (i.e. a second dielectric layer and the protective layer over the second dielectric layer), as outlined above, Kreling teaches other layer(s) may be provided therebetween (paragraph 0029). This is considered to render as obvious to one of ordinary skill that another layer (i.e. a second dielectric layer as recited in instant claim 14 or a base layer as recited in instant claim 15) may be present between any of the recited layers (e.g. between the metal functional layer and the protective layer or over the first dielectric layer and under the SiAl reflective layer). Furthermore, Kreling teaches the SiAl reflective layer (i.e. the metal functional layer) to be between at least first and second dielectric layers 101 and 104 (paragraph 0012). The teaching of “at least” renders as obvious to one of ordinary skill that additional dielectric layer(s) may be present, such as having two dielectric sublayers forming the first dielectric layer or two dielectric sublayers forming the second dielectric layer (i.e. with the upper sublayer corresponding to the instantly claimed protective layer).
Applicant’s arguments, filed 15 December 2025, regarding the nonstatutory double patenting rejection, defers response until a later time. As outlined above, the rejection on the grounds of nonstatutory double patenting is maintained, after adjusting for claim amendments.
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 KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784