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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 March 2026 has been entered.
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 26, 29, 35, 39, and 40 are rejected under 35 U.S.C. 103 as unpatentable over WO 2020/214431 A1 (“Bhatia”) in view of U.S. 2022/0388281 A1 (“Yavari”).
Considering claims 26, 29, 35, and 39, Bhatia discloses a curved laminated glazing having a first region 102 exhibiting infrared transmission exceeding 90% or more in a wavelength band of 850 nm to 2,000 nm, wherein the laminated glazing is specifically disclosed as being suitable for usage with LIDAR systems. (Bhatia abs. ¶¶ 0020-0024, and Fig. 2, reproduced infra). Bhatia 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).
PNG
media_image1.png
438
490
media_image1.png
Greyscale
Bhatia discloses that both glass panes within the laminated glazing preferably contain low content of ferric oxide and specifically notes they should be substantially free of iron, iron oxides, or mixtures thereof; in particular, Bhatia discloses usage of a soda lime silicate glass that is substantially free of iron, iron oxides, or mixtures thereof, noting that the low iron content increases transmission of infrared radiation. (Id. ¶ 0026 and 0027). Bhatia defines substantially as 99.999% or more and possibly 100%. (Id. ¶ 0019). It follows that substantially free means 0.001% or less (1000 ppm or less). With the express contemplation of both panes being substantially free of iron, iron oxides, or mixtures thereof and disclosure of no iron content, the claimed range of 100 ppm or less is considered to be at least obvious due to overlapping ranges. 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). Furthermore or alternatively, the recited range is obvious as a workable range in view of Bhatia disclosing that selection of glass panes having low iron content is made to ensure high infrared transmission for usage of LIDAR, which is an aim substantially similar to that of the Instant Application. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. (MPEP 2144.05 II.A).
Bhatia discloses usage of PVB-based interlayer. (Bhatia ¶ 0034). Bhatia discloses that the interior pane 108 has coated on its interior facing surface (viz. surface distal to interlayer 110) a coating 124 that serves as to reduce Fresnel loss (viz. loss caused by reflection). (Id. ¶ 0025 and Fig. 2). As such, this coating 124 is an anti-reflection film.
Although Bhatia does not disclose particulars for this anti-reflection coating applied only to regions with intended high infrared transmission, 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 Bhatia expressly discloses usage of a coating used for antireflection purposes in a LIDAR system, and as Yavari teaches single-layered films of silica that possesses the requisite optical characteristics compatible with the requirements in Bhatia, 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 Bhatia. It is noted that thickness of 70 to 500 nm overlaps the claimed range.
Bhatia in view of Yavari renders obvious claims 26, 29, 35, and 39.
Considering claim 40, limitations of this claim is obvious in view of ¶¶ 0020-0024 of Bhatia as discussed above.
Claim 30 is rejected under are rejected under 35 U.S.C. 103 as being unpatentable over Bhatia and Yavari, as applied to claim 26 above, and further in view of U.S. 2020/0047464 A1 (“Klein”).
Considering claim 30, Bhatia 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 Bhatia, 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 Bhatia 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”).
Considering claims 31-33, Bhatia discloses that an infrared blocking film 126 may be provided to the laminated glazing only in regions intended to have low IR transmission, but not in region 102 having high IR transmission. (Bhatia ¶ 0025). Such coatings are known to as low-emissivity coatings. Bhatia 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 Bhatia, as doing so ensures reduced IR transmission over vast majority of the glazing while still ensuring proper operations of LIDAR.
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 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, soon to issue as U.S. 12,697,802) in view of Yavari. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 32-34 and 40-45 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.
Response to Arguments
In view of amendments to claim 26, the previously instated prior art rejections and double patenting rejection have been withdrawn. New lines of rejections have been instated above.
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 M-F 10:30 - 7:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights