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 .
Claim Objections
Claims 12 and 19 objected to because of the following informalities: Regarding Claim 12, at the end the phrase “or at” appears to be superfluous. Regarding Claim 19, a conjunction such as “and” should be provided between “ii” and “iii”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding Claim 18, it is unclear where there is support for this claim. Original Claim 18 further included void area requirements now present in Claim 20. There is no explanation for support for their omission as now presented.
The following is a quotation of 35 U.S.C. 112(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, 2, 4-7, 11, 12, and 18-20 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.
Regarding Claim 1, Claim 1 defines a patterned layer in terms of metal layer and first oxide layer and second oxide layer and then makes reference to “the first layer,” “the second layer,” “the third layer,” and “the fourth layer”. It is unclear how these referenced layers relate to those that define the patterned layer. It is unclear whether “the fourth layer” is optional or necessary. it is unclear what is antecedent basis of “the first layer,” “the second layer,” “the third layer,” and “the fourth layer”. It is unclear how these “first”, “second”, “third”, and “fourth” relate to previously characterized patterned layer requirements, if they do. If they do not, do they have any compositional requirements?
Regarding Claim 1, it is unclear whether “the fourth layer” is present or not since the last clause seems to imply it could be absent, but the penultimate clause specifies its position.
Regarding Claim 6, it is unclear what is antecedent basis of “the first oxide”. Is this an oxide of which the “first oxide layer” is to be made, in the meaning of TiO2 layer? Analogous rejection applies to Claim 7.
Regarding Claim 20, it is unclear why there are references to “the substrate” since the claimed article is termed a coating. Is the claim directed to a coating on a substrate or capable of being on a substrate, or something else?
Regarding Claim 18, it is unclear what is meant by “mask structure”. The Specification refers to mask structure in the context of intermediate structure present in making the mesh structure. Since the claim includes a mesh structure, it is unclear how it also would contain the mask structure that would no longer be present since the intermediate structure would have become the final mesh structure. This rejection applies to Claim 20 as well.
Regarding Claim 18, it is unclear what is meant by the designations of “third”, “second”, and “first” since they appear to not be related to counterpart designations that would be expected. It is unclear what is antecedent basis of “the second layer” and “the first layer”. It is unclear whether “the third layer” is the “discontinuous third layer”.
Regarding Claim 19, it is unclear how the patterned layers of this claim and their components relate to the patterned layer requirements of previous Claim 1. This claim refers to various first, second, third, and fourth components. It is unclear how these relate to those numbered in previous Claim 1. For example, this claim refers to patterned layers in (i)-(iii). How do any of these relate to requirements of previous Claim 1 patterned layer? This constitutes an antecedent basis indefiniteness issue since first, second, etc. are mentioned in previous Claim 1 and it is unclear whether these are referring to the same or not.
Regarding Claim 19, each of (i)-(iii) has “when present” phrase. It is unclear what is being claimed when not present if none is present.
Regarding Claim 19, it is unclear how to count the layers “relative to the substrate”. Can individual layers be bi-layers or multi-layers or must they be single layers?
Regarding Claim 19, with respect to (ii), it is unclear what is being claimed as the underlying layers that would make this second layer if (i) is not present. It is unclear what is being claimed as the underlying layers that would make this layer the third or fourth layer if (i) and (ii) are not present or if only one of (i) and (ii) is present or if both are present (with respect to being fourth).
Regarding Claim 20, it is unclear how the discontinuous layers of this claim and their components relate to the discontinuous layer requirements of previous Claim 18. This claim refers to various first, second, third, and fourth components. It is unclear how these relate to those numbered in previous Claim 18. This constitutes an antecedent basis indefiniteness issue since first, second, etc. are mentioned in previous Claim 18 and it is unclear whether these are referring to the same or not. It is also unclear how they relate in this claim. For example, reference is made to “a discontinuous first layer . . . the first layer being disposed . . .”. In the phrase is “the first layer” necessarily referring to “a discontinuous first layer” in this phrase?
Regarding Claim 20, it is unclear in (ii) how the discontinuous second layer can be disposed between the substrate and the second layer if the discontinuous second layer is the second layer.
Regarding any claims having parentheticals, these parentheticals are confusing and should be replaced by text rendering the claim(s) a proper sentence. There are too many to cite individually.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Regarding Claim 19, notwithstanding indefiniteness regarding how Claim 19 relates to the requirements of previous Claim 1, it appears to contradict certain Claim 1 requirements. For example, this claim may not require a patterned layer meeting the requirements of previous Claim 1, in view of the different definitions and unclear relationship to previous Claim 1. In this circumstance, Claim 19 would fail to further limit previous Claim 1. Claim 19 also may fail to further limit if the “when present” language could mean that all of the limitations (i)-(iii) are completely absent, in which case the claim could constitute no further limitation on the structure of previous Claim 1. 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 § 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.
Claim(s) 1, 2, 4, 6, 7, 11, 12, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qiu in “Trilayer Nanomesh Films . . .” in Advanced Functional Materials 2020, 30, 2002356 (pages 1-8) (IDS filed on 10 March 2026, NPL No. 31). Qiu teaches PET sheet coated with patterned layer of TiO2, Ag, TiO2 having voids extending therethrough (Section 3; Figure 3). Regarding Claim 12, these films are tailored for visible transmittance (Abstract; page 3, right column, near bottom; Figure 2(c)). Regarding Claim 18, the claimed discontinuous third layer can be identified with the Ag layer in Qiu and the “first” and “third” with the TiO2 layer. Qiu demonstrates visible transmittance and infrared reflectivity would be expected since there is significant metal coverage in the discontinuous metal layer (e.g., ca. 50%; page 3, right column, middle), which has infrared reflective characteristic inherently. See Specification (paragraph 10). It is noted that no specific degree of transmittance or reflectivity is being claimed. Regarding Claim 19, in addition to not being clear as to what is being claimed, these layers are seemingly not required in view of “when present”. Furthermore, Qiu teaches stacking laminates, which would allow identifications of additional patterned and oxide layers as those are required by these claims (page 5, right side, middle; page 7, left side, lower). Furthermore, Qiu teaches adhesion layers (Supporting Information: Table S1 and Figure S7), which can represent a second patterned metal layer. Regarding Claim 20, it is unclear as to what is being claimed for the reasons addressed above. As well, Qiu teaches stacking laminates, which would allow identifications of additional patterned and oxide layers is those are required by these claims (page 5, right side, middle; page 7, left side, lower). As well, Qiu teaches adhesion layers (Supporting Information: Table S1 and Figure S7), which can represent a second patterned metal layer.
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stalder USPA 2017/0363789. Stalder teaches VTIR coating (Figure 2; showing visible transmission on left and ir reflection on right) which is formed of substrate (1), discontinuous metal layer (3) sandwiched between lower and upper layers (4), and a passivation layer (5) on the upper layer (4) (Figure 1). Stalder teaches that substrate can be PET (paragraph 49). Stadler teaches that discontinuous metal layer can be Ag (paragraph 17) and that layer (4) is a sandwiching layer (paragraph 16) that may comprise titanium dioxide (paragraph 18). Thus, Stalder suggests a masking layer formed of discontinuous metal layer (claimed “a discontinuous third layer”) comprising Ag (claimed “second metal”) wherein there is an upper layer (4) (claimed “second layer”) that is disposed between discontinuous metal layer (3) (claimed “third layer”) and passivation layer (5) (claimed “first layer”). Stalder does not exemplify this structure having these compositions, but as set forth above explains that effective laminates may have these respective compositions, rendering obvious the claimed laminate. It is noted that “second layer” and “first layer” of Claim 18 are not treated as being subjected to the elected species since they are not characterized as having any particular structure such as the layers in Claim 1 that are patterned, respectively.
Claim(s) 1, 2, 4, 6, 7, 11, 12, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu in “Trilayer Nanomesh Films . . .” in Advanced Functional Materials 2020, 30, 2002356 (pages 1-8) (IDS filed on 10 March 2026, NPL No. 31). Qiu teaches PET sheet coated with patterned layer of TiO2, Ag, TiO2 and patterned layer of TiO2, Au, TiO2 each having voids extending therethrough (Section 3; Figure 3). Qiu teaches that adhesion layer, such as Ti or Cr can be used (page 3, right side, lower; Supporting Information: S1). It would have been obvious to one of ordinary skill in the art before the time of filing to use Cr adhesion layer and form suggested laminate since Qiu teaches such layers are effective. In doing so, metal layer meeting election species requirement for Cr would be obtained. Regarding Claim 12, these films are tailored for visible transmittance (Abstract; page 3, right column, near bottom; Figure 2(c)), teaching and rendering obvious claimed transmittance. Regarding Claim 18, the claimed discontinuous third layer can be identified with the Cr layer in Qiu and the “first” and “third” with the TiO2 layer. Qiu demonstrates visible transmittance and infrared reflectivity would be expected since there is significant metal coverage in the discontinuous metal layer (e.g., ca. 50%; page 3, right column, middle; and Supporting Information), which has infrared reflective characteristic inherently. See Specification (paragraph 10). It is noted that no specific degree of transmittance or reflectivity is being claimed. Regarding Claim 19, in addition to not being clear as to what is being claimed, these layers are seemingly not required in view of “when present”. Furthermore, Qiu teaches stacking laminates, which would allow identifications of additional patterned and oxide layers is those are required by these claims (page 5, right side, middle; page 7, left side, lower). Furthermore, Qiu teaches adhesion layers and layer being adhered (Supporting Information: Table S1 and Figure S7), which can represent a second patterned metal layer. Regarding Claim 20, it is unclear as to what is being claimed for the reasons addressed above. As well, Qiu teaches stacking laminates, which would allow identifications of additional patterned and oxide layers is those are required by these claims (page 5, right side, middle; page 7, left side, lower). As well, Qiu teaches adhesion layers and layer being adhered (Supporting Information: Table S1 and Figure S7), which can represent a second patterned metal layer.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu in “Trilayer Nanomesh Films . . .” in Advanced Functional Materials 2020, 30, 2002356 (pages 1-8) (IDS filed on 10 March 2026, NPL No. 31) in view of Noor USPA 2020/0087849. Qiu is relied upon as set forth above in the section 102 rejection over Qiu and the section 103 rejection over Qiu. Qiu does not teach textile substrate. Qiu teaches laminates being useful as electronic skins (page 5, right side, middle). Noor teaches that electronic skins can be made of textiles which can be polyester or include PET (paragraphs 53, 54, and 279). PET is a quintessential polyester. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare the structures of Qiu on PET substrate as textile since Qiu teaches forming electronic skins and since Noor teaches that electronic skin substrate can be polyester textile and can suggest PET textile.
Response to Amendment
It is noted that the claim status identifier for Claim 3 should read “(Withdrawn)”.
In view of applicant’s amendments and arguments, applicant traverses the objection to the Specification regarding the Title of the Office Action mailed on 28 January 2026. Objection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the objection to the Specification regarding antecedent basis of terminology of the Office Action mailed on 28 January 2026. Objection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the objection to the Specification regarding Drawings of the Office Action mailed on 28 January 2026. Objection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the claim objection of the Office Action mailed on 28 January 2026. Objection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (a) enablement rejection of the Office Action mailed on 28 January 2026. Rejection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (a) written description rejection of the Office Action mailed on 28 January 2026. Applicant has not addressed this rejection directly. It is pointed out that the claim does not appear to require void areas extending therethrough. Rejection is maintained.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (b) rejection of the Office Action mailed on 28 January 2026. Rejections are withdrawn only to the extent not repeated above for the reasons given above.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (d) rejection of the Office Action mailed on 28 January 2026. Rejections are withdrawn only to the extent not repeated above for the reasons given above.
In view of applicant’s amendments and arguments, applicant traverses the section 103 rejection over Stalder of the Office Action mailed on 28 January 2026. Applicant argues that Stalder fails to teach or suggest mesh structure. Firstly, Stalder teaches “mask” and “discontinuous” which is what the claim defines as being a mesh. Secondly, there is no other necessary meaning to mesh that is required or necessarily inherent in the term. Merely having openings suffices. Rejection is maintained.
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 MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
10 July 2026
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