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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Response to Amendment
Applicant’s arguments with respect to claim 1 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, 7-14, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The specific limitation “four types of light-reflecting portions are provided as viewed in a direction perpendicular to the first face, namely, a first reflective portion in which only the reflective area is present, a second reflective portion in which the reflective area and the column coincide with each other, a third reflective portion in which the transmissive area and the column coincide with each other, and a fourth reflective portion in which only the transmissive area is present” as presented in claim 1 appears to be unclear. The examiner is not sure how only transmissive area is present at the reflective portion. Appropriate correction is required.
Being dependent on claim 1, claims 2-3, 5, 7-14, and 17 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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.
Claims 1, 5, 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Auday et al. (KR 2008-0035634).
Regarding claim 1, Auday et al. (figure 1) discloses a multi-glazed panel (1), comprising:
a first glass sheet (3) having a first face placeable to face outdoors and a second face opposite to the first face;
a second glass sheet (2) having a third face facing the second face and a fourth face opposite to the third face; and
a plurality of columns (9) in contact with the second face and the third face,
wherein at least one of the first face, the second face, the third face, or the fourth face has (i) a reflective area provided with at least one reflective film serving to reflect ultraviolet light (A plurality of electrodes 41 and 51 are connected in pairs. These are copper bands in the form of bands deposited directly on the outer face 21, for example, either strip-printed with silver ink or otherwise bonded with an adhesive; see at least page 8, 3rd paragraph; and the electrode material that is relatively opaque to the UV radiation can be, for example, fluorine-doped tin oxide (SnO .sub.2 : F), mixed indium tin oxide (ITO), silver, copper or aluminum; see at least page 4, the last fourth paragraphs) and (ii) a transmissive area serving to transmit ultraviolet light (71), and
the plurality of columns include at least one column (glass spacer 9) having an area that coincides with the at least one reflective film as viewed in a direction perpendicular to the first face. (figure 1), and
four types of light-reflecting portions are provided as viewed in a direction perpendicular to the first face, namely, a first reflective portion in which only the reflective area is present (41 or 51), a second reflective portion in which the reflective area and the column coincide with each other (41 and 9), a third reflective portion in which the transmissive area and the column coincide with each other (portions of 41 and portions of 9), and a fourth reflective portion in which only the transmissive area is present (portions of 9).
Regarding claim 5, Auday et al. (figure 1) discloses wherein the at least one reflective film is in a stripe shape (41 or 51).
Regarding claim 17, Uriu et al. (figures 1A-1B and 4D) discloses the multi-glazed panel is configured to prevent collision by a bird.
The limitations “the multi-glazed panel is configured to prevent collision by a bird” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim Rejections - 35 USC § 103
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 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.
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, 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 2-3, 7-11, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Auday et al. (KR 2008-0035634) in view of Uriu et al. (US 2019/0055776).
Regarding claim 2, Auday et al. discloses the limitations as shown in the rejection of claim 1 above. However, Auday et al. is silent regarding wherein the reflective area includes a plurality of reflective films apart from each other at a predetermined interval, and the transmissive area has a maximum width of not less than 3 cm and not more than 20 cm. Uriu et al. (figures 1A-1B and 4D) discloses wherein the reflective area includes a plurality of reflective films apart from each other at a predetermined interval, and the transmissive area has a maximum width of not less than 3 cm and not more than 20 cm (10 to 100 mm; see at least paragraph 0040). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pitch of the spacer / the width of the transmissive area as taught by Uriu et al. in order to provide a vacuum glass panel allowing for reducing the degradation of the spacers to keep a vacuum space stably and also provide a method for manufacturing such a vacuum glass panel.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 3, Auday et al. discloses the limitations as shown in the rejection of claim 1 above. However, Auday et al. is silent regarding wherein the plurality of columns are evenly spaced from each other, and mutually adjacent columns among the plurality of columns have respective centers apart from each other by a distance of not less than 3 cm and not more than 20 cm. Uriu et al. (figures 1A-1B and 4D) discloses wherein the plurality of columns are evenly spaced from each other, and mutually adjacent columns among the plurality of columns have respective centers apart from each other by a distance of not less than 3 cm and not more than 20 cm (10 to 100 mm; see at least paragraph 0040). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pitch of the spacer / the width of the transmissive area as taught by Uriu et al. in order to provide a vacuum glass panel allowing for reducing the degradation of the spacers to keep a vacuum space stably and also provide a method for manufacturing such a vacuum glass panel.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 7, Uriu et al. (figures 1A-1B and 4D) discloses wherein the at least one reflective film includes titanium oxide (42; see at least paragraph 0052).
Regarding claim 8, Auday et al. discloses the limitations as shown in the rejection of claim 7 above. However, Auday et al. is silent regarding wherein the at least one reflective film has a thickness of not less than 10 nm and not more than 50 nm. Uriu et al. (figures 1A-1B and 4D) discloses wherein the at least one reflective film has a thickness of not less than 10 nm and not more than 50 nm (0.01 to 10 μm; see at least paragraph 0048). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pitch of the thickness as taught by Uriu et al. in order to provide a vacuum glass panel allowing for reducing the degradation of the spacers to keep a vacuum space stably and also provide a method for manufacturing such a vacuum glass panel.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 9, Auday et al. discloses the limitations as shown in the rejection of claim 7 above. However, Auday et al. is silent regarding wherein the at least one reflective film has a thickness of not less than 60 nm and not more than 100 nm. Uriu et al. (figures 1A-1B and 4D) discloses wherein the at least one reflective film has a thickness of not less than 60 nm and not more than 100 nm (0.01 to 10 μm; see at least paragraph 0048). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pitch of the thickness as taught by Uriu et al. in order to provide a vacuum glass panel allowing for reducing the degradation of the spacers to keep a vacuum space stably and also provide a method for manufacturing such a vacuum glass panel.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 10, Auday et al. discloses the limitations as shown in the rejection of claim 7 above. However, Uriu et al. is silent regarding wherein the at least one reflective film has a thickness of not less than 140 nm and not more than 200 nm. Uriu et al. (figures 1A-1B and 4D) discloses wherein the at least one reflective film has a thickness of not less than 140 nm and not more than 200 nm (0.01 to 10 μm; see at least paragraph 0048). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pitch of the thickness as taught by Uriu et al. in order to provide a vacuum glass panel allowing for reducing the degradation of the spacers to keep a vacuum space stably and also provide a method for manufacturing such a vacuum glass panel.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 11, Uriu et al. (figures 1A-1B and 4D) discloses a sealing section (8) extending along an entire edge of each of the first glass sheet and the second glass sheet and enclosing a gap between the first glass sheet and the second glass sheet under reduced pressure (300; see at least paragraph 0061).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Regarding claim 12, Uriu et al. (figures 1A-1B and 4D) discloses wherein the plurality of columns, which are in contact with the second face and the third face, include at least one column that coincides with the at least one reflective area as viewed in the direction perpendicular to the first face over a contact area which accounts for not less than 20% of a total of respective contact areas of the plurality of columns (41-42).
Regarding claim 13, Uriu et al. (figures 1A-1B and 4D) discloses wherein the plurality of columns, which are in contact with the second face and the third face, include at least one column that coincides with the at least one reflective area as viewed in the direction perpendicular to the first face over a contact area which accounts for not less than 50% of a total of respective contact areas of the plurality of columns (41-42).
Regarding claim 14, Uriu et al. (figures 1A-1B and 4D) discloses a heat insulator film disposed on the third face and serving to reflect far-infrared light, wherein the first face has the reflective area and the transmissive area (11, figure 4D; see at least paragraph 0035).
The limitation, “serving to reflect far-infrared light” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Uriu et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-97911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871