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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Substrate: PET; FIRST OXIDE: TiO2; SECOND OXIDE: TiO2; FIRST METAL: Cr; SECOND METAL: Ag; and THIRD METAL: Ag) in the reply filed on 10 October 2025 is acknowledged.
Claims 3 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 October 2025.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The substitute specification filed 9 December 2024 has been entered.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The word “NOVEL” should be deleted from the Title. See MPEP 606.
The following title is suggested: VISIBLY TRANSPARENT AND INFRARED REFLECTIVE (VTIR) COATINGS.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The void areas and corresponding axes lack antecedent support. While these are mentioned in the Specification, they are mentioned only in exactly the same manner as being claimed in the so-called embodiments and not in a technical description of the invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the void area with corresponding axes must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: Regarding Claim 1, there is a missing “and” at the end of the penultimate line. 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.
Claims 1, 2, 4-12, 17, 19, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As assessed by the Wands Factors and the evidence as a whole, the claims are not enabled. See MPEP 2164.01(a).
Wands Factors include (A)-(H): (A) The breadth of the claims: The claims relate to laminate having mesh structure (or mask structure, in certain claims) which has axially extending first and second voids; (B) The nature of the invention: The invention relates to VTIR coating system, claimed as such in certain claims, but more generally having patterned layer with voids that make possible a VTIR coating system; (C) The state of the prior art: The prior art teaches patterned layer laminates for which VTIR performance at some level is expected but does not teach or suggest axially extending first and second voids; (D) The level of one of ordinary skill: One of ordinary skill in the art would be expected to be able to form patterned layer having voids, but the claimed feature of axially extending first and second voids would be unknown and it is unclear how it could be achieved; (E) The level of predictability in the art: There is high level of predictability in terms of forming patterned structures, but none with regard to axially extending first and second voids; (F) The amount of direction provided by the inventor: The Specification makes no mention of how to achieve axially extending first and second voids; (G) The existence of working examples: There are no apparent working examples of laminates having axially extending first and second voids; AND (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Since there is no apparent recognition in the prior art, is no reason to expect one of ordinary skill in the art to know how to achieve axially extending first and second voids, is uncertainty about what it means as developed below, is no guidance, and are no working examples, it would be expected that there would be vast, undefinable quantity of experimentation required, rending claims non-enabled.
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, 4-12, and 17-20 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, the claim refers to the patterned layer comprising a metal or metal compound and then articulates possibilities of including first metal layer or second metal layer. It is unclear whether the metal or metal compound feature is being further defined by these possibilities or not necessarily. It is unclear whether a “metal layer” can be a layer that comprises metal compound.
Regarding Claim 1, the patterned layer is possibly (a) “a first metal layer disposed between the first oxide layer and second oxide layer”. It is unclear whether the first metal layer, alone, or the tri-layer is to be patterned. The same indefiniteness applies to “(b)”.
Regarding Claim 1, it is unclear what is different between “(a)” and “(b)” other than the designations of first and second with respect to “metal layer”. Is there any structural difference?
Regarding Claim 1, it is unclear why reference is made to “the first oxide layer” in both (a) and (b) when there is no previous mentioning of such layer. In (a) there is to be a “second oxide layer”, but it is unclear whether it is has or does not have antecedent basis since there is no article in front of the phrase.
Regarding Claim 1, it is unclear how to count the layers “relative to the substrate”. Is “(a)” one layer, or does it include three layers? For “(b)”? It is unclear whether the phrase “the patterned layer is the second or the third layer” refers to its position in the structure as opposed to a definitional designation.
Regarding Claim 1, it is unclear whether the claim is requiring that the first axis and second axis cannot be parallel, could be parallel, or something else.
Regarding Claim 1, it is unclear what is the “first layer” antecedent basis. Regarding Claim 1, it is unclear what is the “second layer” antecedent basis. Regarding Claim 1, it is unclear what is the “third layer” antecedent basis. Regarding Claim 1, it is unclear what is the “fourth layer” antecedent basis.
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?
For example, do the “first” and “second” relate to “first metal layer” and “second metal layer”? If so, how is that possible if the patterned layer is only to contain one of these?
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 8, it is unclear what is the antecedent basis of “the first layer”. Previous Claim 1 refers to “a first metal layer”, but it is unclear what is being referred to.
Regarding Claim 9, it is unclear what is the antecedent basis of “the first layer”. Previous Claim 1 refers to “a first metal layer”, but it is unclear what is being referred to in this claim.
Regarding Claim 10, it is unclear what is the antecedent basis of “the metal”. Previous Claim 8 refers to “metal” but previous Claim 1 refers to other metals, and so it is unclear what is being referred to.
Regarding Claim 11, it is unclear what is the antecedent basis of “the metal”. Previous Claim 9 refers to “metal” but previous Claim 1 refers to other metals, and so it is unclear what is being referred to.
Regarding Claim 12, it is unclear which range limits the claim scope, “at least 40%” or “at least 80%”? It is unclear whether “about” in each case modifies both endpoints of 300 and 800, or only 300.
Regarding Claim 17, firstly, this claim unnecessarily, apparently, repeats substantial sections of previous Claim 1, including “a” and “b(iv)-(vi)”, rendering the claim verbose. Rejections with respect to these aspects of “b(iv)-(vi)” set forth with respect to Claim 1 apply here as well. Secondly, it is unclear how the patterned layers of this claim and their components relate to the patterned layer requirements of previous Claim 1 set forth in (b)(a) and (b)(b). This claim refers to various first, second and third layers, oxide, etc. It is unclear how these relate to those of previous Claim 1. For example, this claim refers to first patterned layer, first oxide, first layer, patterned second layer, second layer, patterned third layer, second oxide, and third layer. All have what could be references in previous Claim 1, or possibly not. For example, does “first layer” refer to “first patterned layer” of this claim or to one of the types of first layer of previous Claim 1?
Regarding Claim 18, it is unclear what is antecedent basis of “said mesh structure”.
Regarding Claim 18, it is unclear why the claimed article is termed as a coating, yet it includes a substrate as a feature of the coating. Coatings are typically applied to substrates, not inclusive of a substrate.
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 set forth in (b)(a) and (b)(b). 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 does any of these relate to requirements of previous Claim 1 patterned layer, including because Claim 1 called for the patterned layer to be either (b)(a) or b(b) and this claim arguably includes both aspects. 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 Claim 20, it is unclear whether the claim is requiring that the first axis and second axis cannot be parallel, could be parallel, or something else.
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.
Claims 17 and 19 are 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 17, notwithstanding indefiniteness regarding how Claim 17 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 17 would fail to further limit previous Claim 1. 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 § 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 Claims 1 and 20 that are patterned or discontinuous, respectively.
EXAMINER’S COMMENT
No reviewed prior art has been identified that teaches or suggests Claims 1, 2, 4-12, 17, 19, and 20 for the elected species. In particular, the combination of claimed features including the feature of axially extending first and second voids in the claimed context has not been identified. However, in view of the enablement, indefiniteness, and other issues raised above that may result in substantial claim amendments or clarifications, no definitive statement of patentability over the reviewed prior art is offered at this time.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
24 January 2026