Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Claims 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 26th, 2025.
Applicant's election with traverse of Group I (claims 2-16) in the reply filed on November 26th, 2025, is acknowledged. The traversal is on the ground(s) that examination of all of the claims is not believed to create an undue burden (as different classification is not considered adequate grounds for restriction), and the claimed groups are not independent and distinct. This is not found persuasive because, per MPEP 808.02, section “(A) Separate classification thereof:…,” the existence of separate classifications between the two inventive groupings constitutes a sufficient showing of undue burden. In addition, the inventions need not be both independent and distinct, but rather, only one of independent and distinct. In the present case, Groups I-II are distinct as Group I could be produced by a process including a step of providing a first substrate which is pre-secured to a counter-substrate, which is mutually exclusive (and therefore, materially different) from Group II.
The requirement is still deemed proper and is therefore made FINAL.
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 2-16 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.
Claims 2, 15, and 16 each use the phrase “the substrate,” which lacks antecedent basis. It is unclear if “the substrate” is attempting to refer to the “first substrate” or the “second substrate.” In the interest of compact prosecution, the phrase “the substrate” will be interpreted as referring to “a substrate.”
Claims 3-15 are rejected due to dependence on indefinite claim 2.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2-7 and 11-16 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Agrawal et al (US2005/0025980A1).
With regards to claim 2, Agrawal discloses an electrochromic glazing (i.e., a glazing unit) comprising a substrate S1 (i.e., a first substrate) and a substrate S2 (i.e., a second substrate), and a multilayer laminate including an electrochromic layer, electrolyte film, and ion storage layer located therebetween (i.e., an electrochemical system disposed between the first and second substrates) (Agrawal: Figs. 3a-3c; para. [0001]-[0006] and [0015]). Agrawal further depicts the inclusion of a transparent conductive layer (i.e., counter-substrate) disposed opposite the multilayer laminate (i.e., electrochemical system) across the first substrate (Agrawal: Figs. 3a-3c). In addition, Agrawal depicts the first substrate set back relative to the transparent conductive layer over an entire circumference of the first substrate, and the second substrate is set back relative to the transparent conductive layer over an entire circumference of the second substrate (Agrawal: Figs. 3a-3c).
With regards to claim 3, Agrawal depicts the second substrate is set back relative to the counter-substrate over an entire circumference of the second substrate (Agrawal: Figs. 3a-3c).
With regards to claim 4, Agrawal notes that the substrate S1 (i.e., first substrate) may comprise glass (Agrawal: para. [0017]).
With regards to claim 5, the glass material of Agrawal (i.e., including the first substrate) may be a soda lime glass (i.e., a soda-lime-silica glass) (Agrawal: para. [0017]).
With regards to claim 6, the counter-substrate (i.e., transparent conductive layer) is considered to constitute a flexible layer (i.e., it is noted that the term “flexible” is rather broad, and the present specification does not limit which materials are considered “flexible”).
With regards to claim 7, the electrochromic glazing of Agrawal (i.e., the glazing unit according to present claim 2) may be further incorporated into a window with additional layers of glass (i.e., implies the existence of a glazing sheet disposed opposite the electrochemical system across the substrate (Agrawal: para. [0008]).
With regards to claim 11, since the first substrate is located within the window of present claim 7, the first substrate is considered set back relative to the glazing sheet over the entire circumference of the first substrate (see above discussion).
With regards to claim 12, since the second substrate is located within the window of present claim 7, the second substrate is considered set back relative to the glazing sheet over the entire circumference of the second substrate (see above discussion).
With regards to claim 13, the electrochemical system comprises an electrochromic system (i.e., an optical-related property that is electrically controllable) (see above discussion).
With regards to claim 14, the electrochemical system comprises an electrolyte film (see above discussion).
With regards to claim 15, since multiple additional glass layers are used, at least one of such layers may be considered an “interlayer” (see above discussion).
With regards to claim 16, Agrawal discloses an electrochromic glazing (i.e., a glazing unit) comprising a substrate S1 (i.e., a first substrate) and a substrate S2 (i.e., a second substrate), and a multilayer laminate including an electrochromic layer, electrolyte film, and ion storage layer located therebetween (i.e., an electrochemical system disposed between the first and second substrates) (see above discussion). Agrawal further depicts the inclusion of a transparent conductive layer (i.e., counter-substrate) disposed opposite the multilayer laminate (i.e., electrochemical system) across the first substrate (see above discussion). In addition, Agrawal depicts the first substrate set back relative to the transparent conductive layer over an entire circumference of the first substrate, and the second substrate as set back relative to the transparent conductive layer over an entire circumference of the second substrate (see above discussion).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 8-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Agrawal as applied to claim 7 above, and in further view of Poll et al (US2002/0075552A1).
With regards to claim 8, Agrawal discloses a glazing unit as applied to claim 1 above (see above discussion). Agrawal does not clearly describe its glazing sheet as spaced from its second substrate.
Poll is directed to an electrochromic window depicted as comprising a second transparent element 30 (i.e., a second substrate) spaced apart from a second transparent substrate 14 made of tempered glass (i.e., a glazing sheet) (Poll: Fig. 1A: para. [0040]-[0041]). In the second chamber 26 (i.e., the spacing between the second substrate and glazing), additional gas may be present in order to provide a reduced thermal conductivity, thereby allowing thermal insulation to an adjacent building (Poll: para. [0042]). Agrawal and Poll are analogous art in that they are related to the same field of endeavor of electrochromic windows. A person of ordinary skill in the art would have found it obvious to have spaced the glazing sheet of Agrawal from the second substrate of Agrawal, in order to enable backfilling of an additional gas, thereby providing insulation to an adjacent building (Poll: Fig. 1A; para. [0040]-[0041]).
With regards to claim 9, the space between the glazing sheet and substrate comprises a gas (see above discussion).
With regards to claim 10, a person of ordinary skill in the art would have found it obvious to have selected a chemically strengthened (i.e., toughened) glass for the glazing sheet, in order to improve the strength of the formed window (Poll: para. [0040]).
Conclusion
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783