DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 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 (i.e., changing from AIA to pre-AIA ) 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 1-5 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cid Aguilar (WO 2020/046096).
Regarding claim 1, Cid Aguilar discloses a grey glass comprising in percentages by weight: Fe2O3 1.20-3.0%, FeO 0.5-1.0%, Co3O4 0.020-0.040%, Se 0.0015-0.010%, CuO 0.00050-0.050% and TiO2 0.01-1%, see abstract. Note that the weight percentages disclosed in the reference overlap the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists; see MPEP 2144.05 I. The reference discloses a reduction percentage of 15-40%, see abstract and MPEP 2144.05 I.
Regarding claim 2, the reference discloses the glass exhibits a low transmission of illuminating light (TLA) not greater than 20%, which encompasses the claimed range, see abstract and MPEP 2144.05 I.
Regarding claim 3, the reference discloses the glass exhibits a transmission of direct solar energy (TDS) of not greater than 14%, see abstract.
Regarding claim 4, the reference discloses the glass exhibits a transmission of near infrared radiation (TIR) of not greater than 14%, see abstract.
Regarding claim 5, the reference discloses the glass exhibits a transmission of ultraviolet radiation (TUV) not greater than 8% and of total solar energy (TTS) not greater than 38%, see abstract.
Regarding claim 7, the reference discloses a purity of not greater than 50% and a dominant wavelength of 480-590 nm when there is a thickness of 2.85-3.85 mm, see abstract.
Regarding claim 8, the reference discloses the composition as comprising the claimed components with the same ranges for SiO2, Al2O3, CaO, MgO, K2O and SO3 and with an overlapping range for Na2O, see pages 13-14 and MPEP 2144.05 I.
Regarding claim 9, the reference discloses the composition comprises 0.01 to 1.0% NaNO3, see page 14.
Regarding claim 10, the reference discloses the composition comprising 0 to 0.07% carbon, see page 14.
Regarding claims 11 and 12, the reference discloses the composition comprising 1.20 to 3.0% Fe2O3, see abstract and MPEP 2144.05 I.
Regarding claim 13, while the reference discloses examples with the claimed color CIELAB values, see Table 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/571,512 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both are directed to a gray glass composition comprising overlapping compositions and light transmission properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed July 24, 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 requires a redox ratio in the range of 13.2% to 58.8% whereas the reference teaches a redox ratio of 15% to 40%. According to Applicant, the present invention achieves a desired gray glass where such as glass a redox ration percentage in the range of 13.2% to 58.8%. Such a result was neither disclosed nor taught by the cited reference. As such, Applicant concludes that the cited reference fails to disclose a glass with the claimed redox ratio. Examiner respectfully disagrees.
As discussed above, and previously, Cid Aguilar discloses a gray glass with a redox ratio of 15% to 40%, see above discussion. Note that the disclosed ranges for the individual constituents overlap the claimed ranges, and, as such, a prima facie case of obviousness exists; see MPEP 2144.05 I. Applicant may rebut a prima facie case of obviousness by showing the criticality of the claimed range or that the prior art teaches away from the claimed invention; see MPEP 2144.05 III A. & B. Given Applicant has not presented arguments as to the criticality of the claimed range, Examiner maintains the position that the cited reference renders obvious the claimed redox ratio given overlapping ranges; see MPEP 2144.05 I.
For the above reasons, the rejections under 35 U.S.C. 103 over Cid Aguilar are respectfully maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/ Primary Examiner, Art Unit 1783
