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 .
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 26, 29, and 35-40 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and alternatively as evidenced by U.S. 2022/0388281 A1 (“Yavari”).
Considering claims 26, 35, and 36, Yamamoto discloses a laminated glazing having a region exhibiting infrared transmission exceeding 78% or more in a wavelength band of 700 nm to 1,800 nm, wherein for specific wavelengths within the band, the transmittance exceeds 86.5% (and preferably 90% or more). (Yamamoto abs., ¶¶ 0045-0046, and Figs. 1A-1C). Yamamoto discloses that the region exhibiting high IR transparent is utilized for a LIDAR sensor, wherein the presence of an interference film 2 is located on the interior side of the inner pane of the laminated glazing. (Id. ¶¶ 0046 and Fig. 1C). Yamamoto expressly discloses that compared to when the glazing is uncoated, the presence of interference film 2 upon the glazing reduces reflectance in the operating wavelength λs of the LIDAR (viz. wavelength in the range of 700 to 1,800 nm). (Id. ¶ 0089 and Table 3). As such, this interference film is an anti-reflection film. Yamamoto is analogous art, for it is directed to the same field of endeavor as that of the instant application (laminated glazings, in particular one conducive to the operation of LIDAR).
Yamamoto discloses that minimum transmittance in the wavelength band from 800 nm to 1,600 nm is preferably 89% or more. (Id. ¶¶ 0052-0054). It is hereby noted that this disclosure is more stringent than (and is thus within) the requirement that transmission at 905 nm is 90% or more and transmittance at 1,550 nm is 80% or more, as what is claimed concerns only transmittance at distinct wavelengths and with minimal acceptable transmittance being 80% for one of the wavelengths. In particular, the reference discloses that an entire wavelength band spanned by the two aforementioned wavelengths has minimal transmittance of 90.5% or more. This is within the recited range. Furthermore, in specific examples, respective bare glasses have high transmittance per se (e.g. each of Glassed GA, GB, and GC having a minimum transmittance of 90.2% in the wavelength band of 800 to 1,600 nm) and maintain high transmittance in the wavelength band after coated with an antireflection coating if not showing increase in transmission. (See Yamamoto Table 3).
Alternatively, 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. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05). As such, the interference coating is considered capable of either anticipating or alternatively rendering obvious the optical transmission performances recited, with the latter being a direct result of Yamamoto being directed to the same field of endeavor as that of the Instant Application and attempting to solve the same problem that the Instant Application seeks to solve and using a same method (viz. antireflection coatings) that the Instant Application uses.
Yamamoto discloses that both glass plates within the laminated glazing preferably contain low content of ferric oxide, with broad range of 80 to 180 ppm and specific examples having 10, 120, and 125 ppm (deemed to be about 100 ppm). (Id. ¶¶ 0059 and 0086, and Table I, in particular glass GB). A particular note is made re: glass GB, as coated glasses using this particular glass substrate composition is indicated to be a working example by the reference. (Id. ¶ 0127). This means that the permissible amount of ferric oxide is actually as low as 10 ppm, with a specific example at that end point. With the express contemplation of both panes being low in ferric oxide and specific examples having Fe2O3 as low as 10 ppm, making both panes of the laminated glazing made from such a glass in considered to be disclosed with sufficient specificity. Were this to be contested (which is not conceded), then such a configuration is obvious in view of the disclosures of Yamamoto.
Yamamoto discloses that its interference film may be single layered or multilayered. (Id. ¶ 0094). With single layer being one of two major categories, its usage is considered to be disclosed with sufficient specificity if not obvious. Applicant is reminded that a reference, in particular used as anticipatory rejection, is pertinent for all it teaches, including less preferred embodiments. Furthermore, it is noted that the foregoing discussion utilizes a narrow reading of claim 26. Specifically, the claim requires only one single layer adjacent a glass pane but does not preclude the presence of intervening layers. In the art of antireflection coatings (and especially used to facilitate IR transmission for LIDAR usage), a relatively nonporous layer of silicon oxynitride located between a glass pane and a single layer of silica having antireflection characteristics is deemed to be an underlayer. (See ¶¶ 0077-0084 of Yavari). As such, the dual-layered interference film IJ of Yamamoto, having a lower layer of SiOxNy and upper layer of SiO2 and shown to improve transmission ~1,000 nm, is considered to have a protective underlayer and a single layer of SiO2. (Yamamoto Table 2).
It is apparent from the foregoing that Yamamoto anticipates or alternatively renders obvious the limitations of claims 26, 35, and 36.
Considering claim 29, usage of PVB as laminating material is disclosed. (Id. ¶ 0086).
Considering claims 37-39, Yamamoto discloses that the interference film 2 contains a layer of silica, with various specific embodiments having silica having thickness of 130-220 nm (viz. upper range of about 200 nm). (Id. ¶¶ 0101 and 105, and Table 2). In particular, aforementioned coating IJ, which increases transmission at 940 nm from 92.3% to 96.0%, has a 161 nm thick layer of SiO2; this reads on claims 37-39 with sufficient specificity as to anticipate the claims. Alternatively, the broader disclosures of the reference renders obvious claims 37-39.
Considering claim 40, from both the broader disclosure and the specific examples in Table 3, the provisioning of the interference film 3 onto a glass substrate results in increased transmission at both ~940 nm and 1,550 nm. Furthermore, as shown in the various figures, high transmission (exceeding 90%) is also demonstrated at ~900 nm. It is apparent from the foregoing that the laminated glazing of Yamamoto either has or can be easily modified to have the claimed transmission properties.
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.
Claim 30 is rejected under are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and optionally as evidenced by Yavari, as applied to claim 26 above, and further in view of U.S. 2020/0047464 A1 (“Klein”).
Considering claim 30, Yamamoto differs from the claimed invention, as it is silent regarding the claimed tri-layered interlayer. However, the usage of a PVB/PET/PVB interlayer is known in the art of laminated glazing, as taught in Klein. (Klein ¶ 0069 and Fig. 1). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the multilayered interlayer of Klein to form the interlayer in Yamamoto, as this type of interlayer exhibits improved surface quality. (Id. ¶ 0009).
Claims 31-33 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and optionally as evidenced by Yavari, as applied to claim 26 above, and further in view of WO 2020/025360 A1 (referenced below using its English-language counterpart publication U.S. 2021/0308990 A1, “Li ‘990”).
Considering claims 31-33, Yamamoto discloses that a low emissivity coating may be provided to the laminated glazing. (Yamamoto ¶ 0117). Such coatings are known to reflect IR radiation. Yamamoto differs from the claimed invention, as it is silent regarding the constituent of its low-emissivity coating and the provision of a void in the coating.
However, in the art of laminated glazings, in particular ones used to accommodate the operation of LIDAR, it is known to provide a metal-based low emissivity coating to the vast majority of a surface of the laminated glazing to reduce transmission of infrared radiation, while selectively leaving area of high IR transmission uncoated as to facilitate operation of LIDAR. (Li ‘990 ¶¶ 0072-0074 and 0089). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have adopted the teachings in Li ‘990 to the laminated glazing of Yamamoto, as doing so ensures reduced IR transmission over vast majority of the glazing while still ensuring proper operations of LIDAR.
Claims 26, 29, and 35-40 are rejected under 35 U.S.C. 103 as unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and Yavari.
Claim 30 is rejected under are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and Yavari, as applied to claim 26 above, and further in view of U.S. 2020/0047464 A1 (“Klein”).
Claims 31-33 are rejected under are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/017495 A1 (referenced below using its U.S. counterpart publication U.S. 2021/0132273 A1 “Yamamoto”) and Yavari, as applied to claim 26 above, and further in view of WO 2020/025360 A1 (referenced below using its English-language counterpart publication U.S. 2021/0308990 A1, “Li ‘990”).
Below is an alternate rejection of the pending claims. Respective sections of the cited references are as discussed in ¶¶ 3-12, 16, and 18-19 above.
Should somehow either the express teaching of a single layer or alternatively mapping of a stack of a lower layer of SiOxNy and upper layer of SiO2 to respectively an underlayer and the claimed single antireflection layer be persuasively rebutted (which based on the prosecution history thus far Applicant has yet to do), it is noted that usage of a single layer of porous silica film having thickness of 70 to 500 nm on a glass as an antireflective film that serves to be antireflective in the working wavelength range of LIDAR (at 850 nm to 1,600 nm) is known in the art. (Yavari ¶¶ 0007-0011 and 0072-0081). Given that Yamamoto expressly discloses usage of a single layer used for antireflection purposes, and as Yavari teaches single-layered films of silica that possesses the requisite optical characteristics, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used a porous layer of silica for the single layered interference film of Yamamoto. The pending claims are thus rendered obvious.
In view of amendments to claim 26 and cancellation of claim 28, the previously instated rejections have been withdrawn, and new rejections have been instated above. As Applicant’s arguments pertain to the new rejections, they are briefly addressed below.
First, Applicant has adopted an overly narrow interpretation of the claim, and there is nothing in the claims precluding the presence of a layer that can be deemed to be an underlayer. This is particularly the case when it comes to the number of layers in the antireflection film. Furthermore, even were the claims to be interpreted narrowly as according to Applicant (which is not conceded), Applicant is reminded that prior art is relevant for all they contain, including nonpreferred and/or alternative embodiments. (See MPEP §2123). Applicant’s contentions are all focused on how certain preferred embodiments allegedly cannot read, with no substantive arguments addressing the broader teachings.
Finally, a new line of rejection addresses Applicant’s arguments, even were the claims to be interpreted narrowly and the broad teachings of Yamamoto were to be ignored (neither conceded).
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 26, 29, 30, 39, and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32-34 and 41-45 of copending Application No. 18/264,081 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 32-34 and 41-45 of the ‘081 Application recite all limitations of claims 26, 29, 30, 39, and 40, with the claims of the ‘081 Application also rendering obvious the high transmission at 1,550 nm given general design parameters of LIDAR operation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 9:30-7.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781