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 with traverse of Group I, claims 1-13, in the reply filed on April 2, 2026 is acknowledged. The traversal is on the ground(s) that a search for the etching composition of claim 1 would necessarily overlap with the search for the etching composition of claim 14. This is not found persuasive because neither group is directed to an etching composition. Instead, Group I is directed to a colored glass, and Group II is directed to a method of making a colored glass. Note that requiring the Examiner to search both groups simultaneously would constitute a serious burden given the inventions cannot be searched simultaneous because the inventions require a different field of search (searching different class/subclasses or electronic resources, and/or employing different search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim.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 April 2, 2026.
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 1-13 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.
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 6, the reference discloses a reduction percentage of 15-40%, 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 1-13 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.
Conclusion
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
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