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 .
Election/Restrictions
In response to Applicant’s argument that the instant application is not a national stage application, the following restriction is outlined in accordance with 35 U.S.C. § 121:
Inventions I (i.e. claims 1-19; classified in C03C17/366) and II (i.e. claim 20, classified in C23C14/35) are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by a materially different process, such as sol-gel coating.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification,
the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant's election with traverse of Group I, claims 1-19, in the reply filed on 04 November 2025, is acknowledged. The traversal is on the ground(s) that there would not be a search burden because examination of Group I would also encounter the subject matter of Group II. This is not found persuasive because, as outlined above, another materially different method can be used to form the coated article of Group I, and searching for the specific claimed method would necessarily require different search terms and utilize different resources (e.g. peer-reviewed journals), even when searching for prior art that contains common features of the end-product. Furthermore, the inventions have recognized divergent subject matter as evidenced by the separate classification outlined above. Since one or more of the reasons provided by MPEP § 808.02 for establishing a serious burden has been presented, this requirement has been met.
The requirement is still deemed proper and is therefore made FINAL.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04 November 2025.
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 13 both recite a metal functional layer that comprises a metal alloy, a metal oxide, a metal nitride, a metal oxynitride, or molybdenum. However, metal oxides, metal nitrides, and metal oxynitrides are conventionally considered to be a compound that does not necessarily share properties of a metal. Therefore, it is not clear that the functional layer is necessarily a metal. In the interest of advancing prosecution, the disputed limitation will be considered to refer to a functional layer that comprises a metal, whether as a compound or being metallic (i.e. in contrast to most polymeric materials that do not have a metal element).
Claims 2-12 and 14-19 are rejected as they depend on a rejected 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 1-3, 6-15, and 18-19 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) (i.e. a coated article). The mirror has a glass substrate, a metallic or substantially metallic reflective layer (i.e. a functional layer since the layer is reflective, which is consistent with the function provided by a metal functional layer as outlined in paragraph 0032 of the instant specification) 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 a silicon aluminum alloy) (paragraph 0006).
Claim 2: Kreling teaches that the SiAl layer may contain, on a weight basis, from 70-99.98% Si, even more preferably from 70-99% Si or most preferably 85-98% Si (paragraph 0014). Since Si is not a magnetic material (i.e. paragraph 0037 of the instant specification lists metals that are considered to be magnetic), this is considered where the metal functional layer comprises less than 30 wt. % magnetic metals (i.e. the balance after subtracting the minimum 70% Si from a total of 100%).
Claim 3: Kreling teaches that the SiAl layer (i.e. the metal functional layer) is preferably from about 120-300 Å thick (i.e. about 12-30 nm) because reflective properties deteriorate if the SiAl layer is thicker or thinner (paragraph 0015), and this range lies within the instantly claimed range. See MPEP § 2131.03.
Claim 6: Kreling teaches that the SiAl layer may contain, on a weight basis, even more preferably from 70-99% 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 7: Kreling teaches the reflective layer (i.e. metal functional layer) comprises silicon aluminum (i.e. a silicon aluminum alloy) (paragraph 0006).
Claims 8-9: Kreling teaches a transparent protective dielectric layer (i.e. a protective layer) (paragraph 0017) applied on the substrate over the reflective layer (i.e. over the metal functional layer (paragraph 0012). The transparent protective dielectric layer (i.e. the protective layer) may be a zirconium oxide (i.e. a metal oxide layer; i.e. zirconia) (paragraph 0017).
Claim 10: 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). Being a reflective layer of SiAl, the metal functional layer is considered to comprise silicon.
Claim 11: Kreling teaches that the reflective layer (i.e. the metal functional layer) may be provided between at least first and second dielectric layers (i.e. further comprising at least one dielectric layer) (paragraph 0012).
Claim 12: 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 13: Kreling teaches in Fig. 1 that the mirror (i.e. coated article) has a glass substrate with a mirror coating (i.e. a coating over at least a portion of the substrate as shown in Fig. 1) that includes dielectric layer 101, reflective layer 102 of SiAl (i.e. a metal functional layer as outlined above; i.e. a metal alloy of silicon aluminum alloy), dielectric layer 104, and transparent dielectric protective layer 105 (i.e. a protective layer; shown in Fig. 1 to be over the reflective layer) (paragraphs 0012-0013).
Claim 14: Kreling teaches in Fig. 1 that the reflective layer (i.e. metal functional layer) is over the first dielectric layer (Fig. 1). Being a reflective layer of SiAl, the metal functional layer is considered to comprise silicon.
Claim 15: Kreling teaches in Fig. 1 that the mirror (i.e. coated article) has a glass substrate with a mirror coating (i.e. a coating over at least a portion of the substrate as shown in Fig. 1) that includes dielectric layer 101, reflective layer 102 of SiAl (i.e. a metal functional layer as outlined above; i.e. a metal alloy of silicon aluminum alloy), dielectric layer 104, and transparent dielectric protective layer 105 (i.e. a protective layer; shown in Fig. 1 to be over the reflective layer) (paragraphs 0012-0013). Dielectric layer 104 corresponds to the instantly claimed second dielectric layer and is shown in Fig. 1 as being over the reflective layer (i.e. metal functional layer) and with the transparent dielectric protective layer (i.e. protective layer) being over the second dielectric layer.
Claim 18: Kreling teaches in Fig. 1 that the mirror (i.e. coated article) has a glass substrate with a mirror coating (i.e. a coating over at least a portion of the substrate as shown in Fig. 1) that includes dielectric layer 101, reflective layer 102 of SiAl (i.e. a metal functional layer as outlined above; i.e. comprises silicon), dielectric layer 104, and transparent dielectric protective layer 105 (paragraphs 0012-0013). As an alternative interpretation of these layers, the dielectric layer 104 is considered to be a protective layer (i.e. by virtue of being a material laminated on the SiAl layer) and the transparent dielectric protective layer is a dielectric layer that is over the dielectric layer 104 (i.e. over the protective layer).
Claim 19: 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).
Claims 1-2, 4-5, 8, 11-13, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roquiny (US 2009/0274901, previously cited).
Claim 1: Roquiny teaches a sheet of vitreous material bearing a multilayer solar control lamination (paragraph 0002). The multilayer solar control lamination includes at least one absorbent layer formed by at least one oxide or oxynitride of an alloy based on at least 20 atom% cobalt and/or copper (paragraph 0013), wherein the absorbent layer absorbs a portion of the visible radiation (paragraph 0014). Since the absorbent layer absorbs a portion of visible radiation, the absorbent layer is considered to be a functional layer (i.e. consistent with the functions of a functional layer outlined in paragraph 0032 of the instant specification). Since the absorbent layer is formed by an oxide or oxynitride of an alloy (i.e. metal), the absorbent layer is considered to be a metal functional layer. See above regarding indefiniteness.
Claim 2: Roquiny teaches that the cobalt and/or copper alloy (i.e. of the metal functional layer as outlined above) contains cobalt or copper at a level of at least 20 atom%, preferably at least 40 atom%, advantageously at least 50 atom% (paragraphs 0021-0022), but that the ferromagnetic state of pure cobalt makes it difficult to use in a magnetron device so different cobalt-based alloys with a non-ferromagnetic metal can be used, such as having 66 atom% of Co (paragraph 0020). This range (i.e. about 66% Co with the balance being non-ferromagnetic metal) lies within the instantly claimed range of less than 90 wt% magnetic metals. See MPEP § 2131.03.
Claim 4: Roquiny teaches that the ferromagnetic state of pure cobalt makes it difficult to use in a magnetron device so different cobalt-based alloys with a non-ferromagnetic metal can be used, such as having 66 atom% of Co (paragraph 0020). This amount of cobalt lies within the instantly claimed range. See MPEP § 2131.03.
Claim 5: Roquiny teaches that the absorbent layer (i.e. the metal functional layer as outlined above) is preferably formed by at least one oxide or oxynitride of cobalt-chromium (i.e. cobalt-chromium oxide), etc. (paragraph 0023).
Claim 8: Roquiny teaches a final protective layer of TiN (i.e. a metal nitride) or TiZrOx (i.e. a metal oxide) (paragraph 0049) (i.e. over the metal functional layer based on the sequence of layers taught in paragraphs 0043-0049).
Claims 11-12: Roquiny teaches that a lower dielectric coating and an outer dielectric coating, each containing a zinc-tin mixed oxide containing at least 20% tin (paragraph 0035).
Claim 13: Roquiny teaches the multilayer solar control lamination deposited on a glass sheet (i.e. a glass substrate with a coating over at least a portion of the substrate) (paragraph 0043). The coating includes, in sequence, a lower dielectric coating, a layer of silver, a double sacrificial metal layer of NiCr followed by Ti, an absorbent layer (i.e. a metal functional layer as outlined above regarding claim 1), an outer dielectric layer, and a final protective layer (paragraphs 0043-0049). The absorbent layer formed by at least one oxide or oxynitride of an alloy based on at least 20 atom% cobalt and/or copper (paragraph 0013), wherein the absorbent layer absorbs a portion of the visible radiation (paragraph 0014). The absorbent layer is preferably formed by at least one oxide or oxynitride of cobalt-chromium (i.e. cobalt-chromium oxide or cobalt-chromium oxynitride), cobalt-copper (i.e. cobalt-copper oxide or cobalt-copper oxynitride), etc. (paragraph 0023).
Claim 15: Roquiny teaches in sequence, a lower dielectric coating, a layer of silver, a double sacrificial metal layer of NiCr followed by Ti, an absorbent layer (i.e. a metal functional layer as outlined above regarding claim 1), an outer dielectric layer, and a final protective layer (paragraphs 0043-0049).
Claim 16: Roquiny teaches, in sequence, a lower dielectric coating, a layer of silver, a double sacrificial metal layer of NiCr followed by Ti, an absorbent layer (i.e. a metal functional layer as outlined above regarding claim 1), an outer dielectric layer, and a final protective layer (paragraphs 0043-0049). The layer of silver and/or the double sacrificial metal layer is considered to be a base layer over the lower dielectric coating and the absorbent layer is over the base layer.
Claim 17: Roquiny teaches, in sequence, a lower dielectric coating, a layer of silver, a double sacrificial metal layer of NiCr followed by Ti, an absorbent layer (i.e. a metal functional layer as outlined above regarding claim 1), an outer dielectric layer, and a final protective layer (paragraphs 0043-0049). In this sequence, the outer dielectric layer is over the metal functional layer and the protective layer is over the outer dielectric layer. The absorbent layer is preferably formed by at least one oxide or oxynitride of cobalt-chromium (i.e. cobalt-chromium oxide or cobalt-chromium oxynitride), cobalt-copper (i.e. cobalt-copper oxide or cobalt-copper oxynitride), etc. (paragraph 0023) (i.e. the metal functional layer comprises cobalt).
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, 6-16, and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-10, and 12-17 of copending Application No. 18/244,958 (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:
Instant claim 1 and claim 1 of the ‘958 application both 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 silicon aluminum alloy, a silicon cobalt alloy, etc.
Although instant claim 1 is broader in scope due to reciting other materials that may be used for the metal functional layer, it would have been obvious to one of ordinary skill in the art before the effective filing date to select at least the materials common to both applications, and one would have had a reasonable expectation of success.
Instant claim 3 and claim 2 of the ‘958 application both recite wherein the metal functional layer has a thickness in the range of 20 nm to 40 nm.
Instant claim 6 and claim 3 of the ‘958 application both recite wherein the metal functional layer comprises from 60 wt. % to 99 wt. % silicon.
Instant claim 7 and claims 1 and 4 of the ‘958 application both recites the metal functional layer comprises a silicon aluminum alloy or a silicon cobalt alloy.
Instant claim 8 and claim 6 of the ‘958 application both recite further comprising a protective layer over the metal functional layer, wherein the protective layer comprises a metal oxide layer, a metal nitride layer, or mixtures thereof.
Instant claim 9 and claim 7 of the ‘958 application both recite wherein the protective layer comprises titania, silica, alumina, silicon oxide, silica aluminum oxide, silicon nitride, silicon aluminum nitride, silicon aluminum oxynitride, zirconia, or mixtures thereof.
Instant claim 10 and claim 8 of the ‘958 application both recite further comprising a base layer over the substrate and under the metal functional layer. The limitation of wherein the metal functional layer comprises silicon is included in claim 1 of the ‘958 application because the recited materials of the metal functional layer each include silicon (i.e. silicon aluminum alloy and a silicon cobalt alloy).
Instant claim 11 and claim 9 of the ‘958 application both recite further comprising at least one dielectric layer.
Instant claim 12 and claim 10 of the ‘958 application both 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.
Instant claim 13 and claim 12 of the ‘958 application both 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, a silicon cobalt alloy, etc.
Instant claim 14 and claim 13 of the ‘958 application both recite wherein the metal functional layer resides over the dielectric layer. The limitation of wherein the metal functional layer comprises silicon is included in claim 12 of the ‘958 application because the recited materials of the metal functional layer each include silicon (i.e. silicon aluminum alloy and a silicon cobalt alloy).
Instant claim 15 and claim 14 of the ‘958 application both recite further comprising a second dielectric layer over the metal functional layer, wherein the protective layer resides over the second dielectric layer.
Instant claim 16 and claim 15 of the ‘958 application both recite further comprising a base layer over the dielectric layer, wherein the metal functional layer resides over the base layer.
Instant claim 18 and claim 16 of the ‘958 application both recite wherein the dielectric layer resides over the protective layer. The limitation of wherein the metal functional layer comprises silicon is included in claim 12 of the ‘958 application because the recited materials of the metal functional layer each include silicon (i.e. silicon aluminum alloy and a silicon cobalt alloy).
Instant claim 19 and claim 17 of the ‘958 application both recite wherein the dielectric layer comprises silicon nitride or silicon aluminum nitride.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Moens et al. (US 2013/0120842) teaches a glass substrate with a semi-transparent functional coating that is a metal selected from titanium, tungsten, niobium, etc., and alloys or mixtures of at least two of these metals.
O’Shaughnessy et al. (US 2006/0046089) teaches a coated substrate having at least one metal based layer selected from tungsten, chromium, tantalum, molybdenum, aluminum, niobium and mixtures and alloys thereof, and alloys of cobalt and chromium.
Ongarello et al. (US 2021/0347685) teaches a transparent substrate with a functional coating having an absorbent layer of a metal or metalloid chosen from niobium, tungsten, titanium, molybdenum, etc. or alloys of these.
Polcyn et al. (US 2014/0272453; US 2017/0341977; 2018/0118614) each teach a solar control coating having a primer layer of silicon-aluminum alloy, etc. and an absorbing layer of cobalt chrome, etc.
Schwendeman et al. (US 2010/0103496) teaches an electrochromic device with a first conductive member formed over at least a portion of a first substrate. The first conductive member comprises at least one metal oxide selected from oxides of one or more of Fe, Al, Co, Cr, Si, etc. or combinations, mixtures, or alloys thereof.
Vong (EP 0021786, attached) teaches a coated glass substrate where the coating comprises chromium oxide, cobalt oxide, and iron oxide (i.e. a cobalt iron chromium oxide).
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