Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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]).
Response to Arguments
Applicant’s arguments with respect to the grounds of rejection under 35 U.S.C. 112(b) have been fully considered and they are found persuasive. Applicant has amended the present claims to provide antecedent basis (i.e., by amending the substrate to instead reference “the first substrate”). Therefore, the grounds of rejection under 35 U.S.C. 112(b) has been withdrawn.
The remainder of Applicant’s arguments have been fully considered but they are not found persuasive.
On pages 5-6, then repeated on pages 7-8, Applicant discusses the formation process of Agrawal, and then concludes that Agrawal is silent as to the first substrate being set back to the counter-substrate over an entire circumference of the first substrate, and the counter-substrate disposed opposite the electrochemical system across the first substrate. Applicant argues that Agrawal instead discloses a process in which other components of the electrochromic device are present. Applicant’s arguments are not found persuasive as they are not commensurate in scope with the claims. As best understood, the first substrate of Agrawal is set back to its counter substrate, as the first substrate and counter substrate are spaced from each other. It is possible Applicant believes an additional structural distinction is present, but the arguments do not make such a distinction clear. That the process of Agrawal is different from the process of forming the claimed invention does not necessarily imply a particular structural difference (nor is any structural difference recited in the claims). In addition, the claims do not preclude the existence of other electrical components between the first substrate and counter substrate. Applicant additionally argues that Agrawal does not disclose a third substrate, but this argument is not found persuasive as the term “substrate” is rather broad. The transparent conductive layer of Agrawal is considered to constitute a counter-substrate (i.e., third substrate). It is possible Applicant believes that the counter-substrate must be a glazing sheet, but it is noted that the claims do not specify the material of the counter-substrate.
On pages 6-7, then repeated on pages 8-9, Applicant argues that one of ordinary skill would have understood that the substrates of Agrawal have the same dimension, and therefore, Agrawal fails to disclose a glazing unit in which the substrate is set back relative to the counter substrate. Applicant further points to process steps disclosed in Agrawal in support. These arguments are not found persuasive as they are not commensurate in scope with the claims. That the claimed first and second substrates are set back relative to the counter substrate does not imply or require a specific substrate size. The claimed phrase “set back relative to” relates to a positional requirement, and not a substrate area or size requirement. It is not clear how selection of substrates having the same size results in a structure which fails to meet the claims, as argued by Applicant.
On pages 8-9, Applicant argues that Poll is silent as to the first substrate being set back relative to the counter substrate. This argument is not found persuasive as Poll was not cited to teach this structure. Poll was instead cited to teach the glazing sheet as spaced from the second substrate. Agrawal separately discloses a first substrate set back relative to a counter substrate in the claimed manner.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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