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 23 February 2026 has been entered.
Claims 24, 26-32, and 34-43 remain pending in the application, wherein claims 24, 28, 30-32, 34-35, 37, and 41-43 have been amended, claim 43 is withdrawn, and claims 25 and 33 are newly canceled. The amendments to claim 24 incorporate limitations from claims 25 and 33 and amendments to other claims delete limitations that cause indefiniteness. Accordingly, no new matter has been introduced as a result of these amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 26, 30-32, 34, and 38-40 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 26, 30-32, 34, and 38-40 are each dependent upon claim 25, which has been canceled, and therefore fails to contain a reference to a claim previously set forth.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 24, 26-32, and 34-42 are rejected under 35 U.S.C. 103 as being unpatentable over Durandeau et al. (US 2013/0129945, previously cited).
Claim 24: Durandeau teaches a glazing unit comprising a glass substrate with a thin-film multilayer (i.e. a coating) on at least one of its faces (paragraph 0001) (i.e. a coated glazing). The glass substrate is preferably transparent (paragraph 0013). Fig. 1 schematically shows a cross section of the glazing unit, with a substrate 1, an adhesive layer 7, a neutralizing film or multilayer 6, a film of a transparent electrically conductive oxide 2, a protective film 5, an intermediate film 3, and a photocatalytic film 4, in this sequence (description in paragraph 0055). The neutralizing film or neutralizing multilayer of films makes it possible to influence the reflective appearance of the glazing unit and may comprise two films of high and low index, such as TiO2/SiO2, Si3N4/SiO2, or TCO/SiO2 (paragraph 0031), wherein titanium oxide (i.e. TiO2) has a refractive index of 2.0-2.5 (paragraph 0027) and the refractive index of the transparent electrically conductive oxide (i.e. TCO; as defined in paragraph 0003) lies in the range of 1.7-2.5 (paragraph 0024). The film of high index of the neutralizing film corresponds to the instantly claimed first layer, and the refractive indices of the listed materials lie within (i.e. overlap) the instantly claimed range. See MPEP § 2144.05. The film of low index of the neutralizing film corresponds to the instantly claimed optional second layer, and would have a refractive index that is less than the refractive index of the first layer due to the description of being a film of low index and being coupled with (i.e. compared to) a film of high index. The film of a transparent electrically conductive oxide 2 (i.e. corresponding to the instantly claimed third layer) is preferably a film of fluorine-doped tin oxide, SnO2:F (i.e. tin dioxide doped with fluorine), or a film of mixed indium tin oxide (paragraph 0016). The photocatalytic film 4 (i.e. a fourth layer) is preferably based on titanium oxide at least partially crystallized in anatase form, which is the most active phase from the point of view of photocatalysis (paragraph 0027). Durandeau teaches an intermediate film 3, shown in Fig. 1 to be between the film of a transparent electrically conductive oxide 2 (i.e. the third layer) and the photocatalytic film 4 (i.e. the fourth layer), that is advantageously made of silica (paragraph 0026) (i.e. the intermediate film corresponds to the instantly claimed intervening layer and is based on an oxide of silicon; i.e. silica is silicon dioxide). Durandeau does not explicitly teach a range for the intermediate layer, but the thickness of the SiO2 layer that corresponds to the intermediate layer (i.e. the layer between the films of ITO and TiO2) is about 40 nm (Examples 3 and 4 in Table 3), and this overlaps the instantly claimed range. See MPEP § 2144.05.
While not teaching a singular example of the instantly claimed coated glazing, it would have been obvious to one of ordinary skill in the art before the effective filing date because the ranges overlap, which is considered to be prima facie obvious, and one would have had a reasonable expectation of success.
Claim 26: Durandeau teaches an intermediate film 3, that is advantageously made of silica (paragraph 0026) (i.e. silica is silicon dioxide).
Claims 27-28: Durandeau teaches an adhesive layer 7 (i.e. a lower layer), shown in Fig. 1 as being between the substrate and the neutralizing film or multilayer (i.e. between the glass substrate and the first layer), which advantageously has a refractive index near that of the glass substrate and preferably made of silica (i.e. silicon dioxide, which is an oxide of silicon; i.e. based on an oxide of a metalloid) (paragraph 0032). Silicon dioxide, SiO2, is indicated as a film of low refractive index (paragraph 0031) and therefore has a refractive index that is less than the refractive index of the film of high index (i.e. the first layer).
Claim 29: Durandeau teaches the adhesive layer (i.e. the lower layer as outlined above) as having a geometric thickness of 20-200 nm (paragraph 0032), which overlaps the instantly claimed range. The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are very close to ranges disclosed in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Claims 30-31: Durandeau teaches that the neutralizing multilayer (i.e. the high index layer of this multilayer corresponds to the instantly claimed first layer and the low index layer corresponds to the instantly claimed second layer, as outlined above) have a geometrical thickness of 15-70 nm. This range (i.e. for the combined first and second layer, which also then pertains to individual first and second layers since a single layer would be less than the total thickness) overlaps the instantly claimed range. See MPEP § 2144.05. The intermediate film (i.e. the intervening layer, as outlined above) is considered to be present because it is not taught to be optional.
Claim 32: Durandeau teaches the fluorine-doped tin oxide (i.e. the third layer, as outlined above) has a geometrical thickness of at least 120 nm (paragraph 0020), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 34: Durandeau teaches the photocatalytic layer (i.e. the fourth layer) is preferably at most 40 nm (paragraph 0029), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claims 35-36: Durandeau teaches the neutralizing film or neutralizing multilayer of films makes it possible to influence the reflective appearance of the glazing unit and may comprise two films of high and low index (i.e. the film of high index corresponds to the first layer, as outlined above), such as TiO2/SiO2, Si3N4/SiO2, or TCO/SiO2 (paragraph 0031). That is, the first layer being one of TiO2 or TCO (i.e. a transparent electrically conductive oxide as defined in paragraph 0003, which may be a doped or mixed tin oxide, zinc oxide, or titanium oxide as disclosed in paragraph 0016) are specifically named materials for the film of high index (i.e. the first layer), and these are each an oxide of a metal.
Claim 37: Durandeau teaches the neutralizing film or neutralizing multilayer of films makes it possible to influence the reflective appearance of the glazing unit and may comprise two films of high and low index (i.e. the film of low index corresponds to the second layer, as outlined above), such as TiO2/SiO2, Si3N4/SiO2, or TCO/SiO2 (paragraph 0031). That is, the second layer being SiO2 is a specifically named material for the film of low index (i.e. the second layer), and SiO2 is an oxide of a metalloid that is specifically a silicon oxide.
Claim 38: The limitations of instant claim 38 combine limitations from claims 24, 26, 30-32, 34, and 36-37. Each of these limitations are taught by or obvious over Durandeau, as outlined above.
Claim 39: The limitations of instant claim 39 combine limitations from claims 24, 26, 28, and 36-37. Each of these limitations are taught by Durandeau, as outlined above.
Claim 40: The limitations of instant claim 40 combine limitations regarding a lower layer from claims 28-29 with instant claim 38. Each of these limitations are taught by or obvious over Durandeau, as outlined above.
Claim 41: Durandeau teaches that photocatalytic titanium oxide has good self-cleaning, antifouling, and antimisting properties, and has the particularity when it is irradiated with solar light of having water contact angles smaller than 5° and even 1° (paragraph 0029). Although Durandeau does not specifically teach the instantly claimed property after irradiation with a UV lamp as recited in the instant claim, the static water contact angle is considered to be present because Durandeau teaches a substantially identical material (i.e. photocatalytic titanium dioxide as outlined above), and substantially identical materials are considered to have substantially identical properties. See MPEP § 2112.01.
Claim 42: Durandeau teaches that photocatalytic titanium oxide has good self-cleaning, antifouling, and antimisting properties (paragraph 0029). Durandeau does not specifically teach the survival of bacteria and/or viruses as recited. However, this property is considered to be present because Durandeau teaches a substantially identical material (i.e. photocatalytic titanium dioxide as outlined above), and substantially identical materials are considered to have substantially identical properties. See MPEP § 2112.01.
Terminal Disclaimer
The terminal disclaimer filed on 23 February 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application No. 17/910,026 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
The amendments have overcome each and every indefiniteness previously set forth in the Office Action mailed 23 September 2025. The rejection of claims 28, 31, 35, 37, and 41-43 under U.S.C. 112(b) has been withdrawn.
The amendments to independent claim 24, incorporating limitations from claim 33, have overcome the nonstatutory double patenting rejection over US Patent No. 12,145,877 because claim 33 was not included in the rejection previously set forth in the Office Action mailed 23 September 2025. The filing of a terminal disclaimer over copending Application No. 17/910,026 has overcome the nonstatutory double patenting rejection previously set forth in the Office Action mailed 23 September 2025. These double patenting rejections have been withdrawn.
The amendments to independent claim 24, incorporating limitations from claim 33 which was not rejected under 35 U.S.C. 102(a)(1) as being anticipated by Durandeau, has overcome this rejection. Therefore, the rejection under 35 U.S.C. 102(a)(1) has been withdrawn. However, upon further consideration, the claims are rejected under 35 U.S.C. 103 as being obvious over Durandeau, as outlined above. It is noted that claim 43 is no longer outlined for a prior art rejection, which is due to being withdrawn as being drawn to a non-elected invention and is not meant to indicate relevance of any prior art previously applied.
Applicant's arguments filed 23 February 2026 have been fully considered but they are not persuasive for the following reasons:
Applicant argues, see p. 12, that there is no mention in the description of Durandeau of a thickness range for the intermediate film 3 (i.e. corresponding to the instantly claimed intervening layer). However, although Durandeau does not teach a range of thickness for the intermediate film, Examples 3 and 4 of Durandeau include a layer of SiO2 (i.e. corresponding to the intermediate film) having a thickness of 40 nm (Durandeau, Table 3), which Durandeau further teaches as being in contrast to comparative examples having an intermediate film where the thickness was not optimized (paragraph 0079). The courts have held that a specific example in the prior art (i.e. in this case, an example thickness of the intermediate film) which is within a claimed range anticipates (i.e. also renders obvious) the range. See MPEP § 2131.03. Applicant further argues, see p. 12, that Durandeau teaches a 50 nm thick silica intermediate film in contrast to comparative examples having thicknesses of 20 nm and 80 nm as a teaching away from the instantly claimed range. However, the courts have held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). In this sense, Durandeau discusses the comparative examples having a non-optimized thickness of the intermediate film, but does not indicate that the non-optimized thicknesses cause the coating to not work for its intended purpose. Applicant further argues a teaching away pertaining to a single or double neutralizing film for use with fluorine-doped tin oxide and with ITO; however, Durandeau only teaches these as preferable arrangements but does not suggest that a different combination of the disclosed films would not work for the intended purpose, and the courts have held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II).
Applicant argues, see p. 11-13, that Durandeau does not teach a singular embodiment of the instantly claimed coated glazing and points out where individual embodiments lack one or more of the instantly claimed features. However, the courts have held that the prior art are relevant for all they contain and what it would have reasonably suggested to one having ordinary skill in the art. See MPEP § 2123(I). In this respect, Durandeau teaches a general disclosure of a glazing unit in Fig. 1, and details from the disclosure regarding each layer of the glazing unit are outlined above.
In response to applicant’s argument that Durandeau fails to show certain features of the invention (i.e. thickness range of the intervening layer improving photocatalytic activity argued on p. 12 and haze reduction argued on p. 13), it is noted that the features upon which applicant relies (i.e. improved photocatalytic activity and haze reduction) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP § 2145(VI). It is additionally noted that Applicant has not demonstrated a criticality to the instantly claimed ranges.
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