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 .
Response to Amendment
The Amendment filed 17 December 2025 has been entered. Claims 1 – 43 remain pending in the application.
Claim Interpretation
Claims 1 and 38 (i.e. the independent claims) each refer to a “laser-etched pattern” in a No. 1 surface comprising “laser-etched abrasions”, each having “at least one abraded portion” and “at least one non-abraded portion”. These recitations indicate claims 1 and 38 are product-by-process claims.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
No particular parameters are identified for the lasering of the No. 1 surface beyond a result of the laser-etched abrasions being spaced apart from one another, where each individual abrasion comprises the previously mentioned abraded and non-abraded portions.
The instant specification mentions lasers remove material from, or produce microcracks beneath, the No. 1 surface but does not limit the laser to product such effects (e.g. ¶¶ [0005], [0010], [0015], [0072], [0079], [0082], [0105], [0123], [0125], [0149]). Accordingly, while patentability can be determined based on such structures, patentability should not be based solely on such structures.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01, I.
Therefore, any structure produced through lasering which results in a pattern having the features required of the claims should also be understood as satisfying the claim.
A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Therefore, claims 2 – 37 and 39 – 43, which depend on claim 1 or claim 38, as appropriate, are subject to the discussion above, albeit with the additional requirements of their respective subject matter.
Claim Objections
Claim 21 is objected to because of the following informalities:
Regarding claim 21, claim 21 recites “a location of each laser-etched abrasions” (l. 2 of the claim). It appears this should be “a location of each of the laser-etched abrasions”.
Appropriate correction is required.
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 – 17 and 19 – 43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18 and 20 – 31 of copending Application No. 18/505,435 (hereinafter “the ‘435 application”) in view of Yeo (US 2022/0179136 A1).
Regarding claim 1, claim 1 of the ‘435 application is directed to a window comprising:
a first transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface; and
a second transparent panel comprising an interior-facing No. 4 surface and an opposing No. 3 surface, wherein the first transparent panel and the second transparent panel are spaced apart from one another by a gap,
wherein the No. 1 surface comprises a pattern comprising a plurality of laser-etched abrasions spaced apart at the No. 1 surface, wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion, thereby leaving a visible marking at the No. 1 surface.
Although the claims of the ‘435 application are not explicit as to each of the laser-etched abrasions comprising an individual single abrasion having within each single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous, these features would have been obvious in view of Yeo.
Yeo discloses a window (“building glass”: e.g. ¶¶ [0002], [0068]) comprising a transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface (“base”, e.g. “base” 100: e.g. Fig. 1 – 3; ¶¶ [0011], [0017], [0022], [0023], [0036], [0038], [0045]),
wherein the No. 1 surface comprises a laser etched pattern comprising a plurality of laser-etched abrasions spaced apart at the No. 1 surface (“optical array” formed by laser melting or ablation, e.g. “optical array” 200: e.g. Fig. 1, 2, 4 – 8; ¶¶ [0002], [0011], [0019], [0022], [0023], [0027], [0029], [0030], [0032], [0035] – [0038], [0040], [0045] – [0057], [0060] – [0065]), wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous (“bird recognizable optical element” having a “grating structure”, e.g. “bird recognizable optical element” 210: e.g. Fig. 7, 8; ¶¶ [0011] – [0018], [0020], [0022], [0032], [0037], [0046], [0048] – [0051], [0053] – [0056], [0058], [0059], [0061] – [0063], [0065] – [0067]), thereby leaving a visible laser-etched pattern formed from the plurality of laser-etched abrasions at the No. 1 surface (the “bird recognizable optical element” can “diffract” or “scatter” visible rays: e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]).
Yeo’s window serves, among other things, to have high visibility to birds and therefore reduce bird mortality from impacts and in particular improves visibility to birds by virtue of interaction with ultraviolet wavelengths which birds can recognize while also not compromising transparency in visible wavelengths which humans can recognize, thus reducing bird mortality by allowing birds to see the window before impact is made (e.g. ¶¶ [0008], [0009], [0024], [0053] – [0055], [0058], [0059], [0069]).
Accordingly, it would have been obvious to modify each of the plurality of laser-etched abrasions of the ‘435 application to comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous as Yeo suggests. One of ordinary skill in the art would have made these modifications in order to improve the visibility of the laser-etched abrasions to birds, thereby reducing bird mortality.
Regarding claim 2, in addition to the limitations of claim 1, claim 21 of the ‘435 application recites the pattern is spaced over the entire area of the No. 1 surface such that there is no four square inch area of the No. 1 surface without a laser-etched abrasion, which encompasses the claimed range.
Regarding claim 3, in addition to the limitations of claim 1, claim 21 of the ‘435 application recites the pattern is spaced over the entire area of the No. 1 surface such that there is no four square inch area of the No. 1 surface without a laser-etched abrasion, which matches the claimed range.
Regarding claim 4, in addition to the limitations of claim 1, claim 21 of the ‘435 application recites the pattern is spaced over the entire area of the No. 1 surface such that there is no four square inch area of the No. 1 surface without a laser-etched abrasion, which is within the claimed range.
Regarding claim 5, in addition to the limitations of claim 1, claim 21 of the ‘435 application recites the pattern is spaced over the entire area of the No. 1 surface such that there is no four square inch area of the No. 1 surface without a laser-etched abrasion, which is within the claimed range.
Regarding claim 6, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 10, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 11, in addition to the limitations of claim 1, Yeo discloses the total area of the plurality of laser-etched abrasions covers at least 0.36% of the area of the No. 1 surface (average interval is 5 cm or shorter between each “bird recognizable optical element”, and each “bird recognizable optical element” is 3 mm or larger: e.g. ¶¶ [0012], [0014], [0054], [0055], [0057]).
Yeo’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 12, in addition to the limitations of claim 1, Yeo discloses the plurality of laser-etched abrasions are formed such that each laser-etched abrasion has a maximum width in at least one direction of 3 mm or larger (e.g. ¶¶ [0014], [0055], [0057]).
Yeo’s maximum width overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 13, in addition to the limitations of claim 1, claim 1 of the ‘435 application recites each of the laser-etched abrasions are formed by applying a laser beam to the No. 1 surface to remove at least a portion of material of the No. 1 surface or produce microcracks beneath the No. 1 surface.
Regarding claim 14, in addition to the limitations of claim 13, claim 4 of the ‘435 application recites the abrasions are formed by removing at least a portion of material of the No. 1 surface.
Regarding claim 15, in addition to the limitations of claim 13, claim 5 of the ‘435 application recites the abrasions are formed by producing microcracks beneath the No. 1 surface.
Regarding claim 16, in addition to the limitations of claim 13, Yeo discloses each of the laser-etched abrasions are formed from one or more geometric shapes containing one or more intermittent and/or discontinuous non-abraded areas (“grating structure”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 17, in addition to the limitations of claim 16, Yeo discloses the geometric shapes are, e.g., polygons (“grating structure” which is “linear”, “radial”, or “two-dimensional”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 19, in addition to the limitations of claim 13, Yeo discloses the abrasions are formed from a rectangular line containing one or more intermittent and/or discontinuous non-abraded areas therein (“grating structure” which is “linear” or “two-dimensional”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 20, in addition to the limitations of claim 13, claim 7 of the ‘435 application recites the laser-etched abrasions are formed by a carbon dioxide laser.
Regarding claim 21, in addition to the limitations of claim 13, claim 1 of the ‘435 application recites the laser beam has an energy density of from 0.5 J/cm2 to 10 J/cm2 at a location of a marking formed by the laser beam.
Regarding claim 22, in addition to the limitations of claim 1, claim 6 of the ‘435 application recites the No. 1 surface is an uncoated surface or a coated surface.
Regarding claim 23, in addition to the limitations of claim 1, claim 9 of the ‘435 application recites each of the plurality of markings scatter incident electromagnetic radiation.
Regarding claim 24, in addition to the limitations of claim 1, claim 1 of the ‘435 application recites the gap is sealed closed by an edge connecting the first panel and the second panel.
Regarding claim 25, in addition to the limitations of claim 1, claim 11 of the ‘435 application recites the gap comprises a gas denser than air.
Regarding claim 26, in addition to the limitations of claim 1, claim 12 of the ‘435 application recites the gap is evacuated to produce a vacuum.
Regarding claim 27, in addition to the limitations of claim 26, claim 13 of the ‘435 application recites the window further comprises a plurality of supports arranged in the gap to connect the first panel and the second panel.
Regarding claim 28, in addition to the limitations of claim 27, claim 14 of the ‘435 application recites at least a portion of the plurality of laser-etched abrasions are formed between locations in which the plurality of supports contact the first panel.
Regarding claim 29, in addition to the limitations of claim 28, claim 15 of the ‘435 application recites at least a portion of the plurality of laser-etched abrasions are formed at locations in which the plurality of supports contact the first panel.
Regarding claim 30, in addition to the limitations of claim 1, claim 16 of the ‘435 application recites the first panel is a component of a building integrated photovoltaic (BIPV) component.
Regarding claim 31, in addition to the limitations of claim 1, claim 17 of the ‘435 application recites the window is arranged in a frame of an architectural structure with the exterior-facing No. 1 surface arranged as an exterior surface of the architectural structure.
Regarding claim 32, in addition to the limitations of claim 2, claim 18 of the ‘435 application recites the gap is sealed closed by an edge connecting the first panel and the second panel, wherein the plurality of laser-etched abrasions are formed by applying the laser beam to the No. 1 surface after the gap is sealed closed.
Regarding claim 33, in addition to the limitations of claim 1, claim 20 of the ‘435 application recites the plurality of laser-etched abrasions exhibit a 20° gloss value of less than 1.
Regarding claim 34, in addition to the limitations of claim 1, claim 22 of the ‘435 application recites the first panel comprises glass and/or plastic.
Regarding claim 35, in addition to the limitations of claim 1, claim 23 of the ‘435 application recites the window comprises at least one side light positioned to emit light at a side of the first transparent panel between the No. 1 surface and the No. 2 surface.
Regarding claim 36, claim 24 of the ‘435 application recites an architectural structure comprising the window discussed in the double patenting rejection of claim 1. The modifications in view of Yeo similarly apply.
Regarding claim 37, in addition to the limitations of claim 36, claim 25 of the ‘435 application recites the architectural structure comprises a building comprising an opening, wherein the window is mounted in the opening with the exterior-facing No. 1 surface arranged as an exterior surface of the building.
Regarding claim 38, claim 26 of the ‘435 application is directed to a method of manufacturing a window, the method comprising the steps of:
providing an insulated transparency unit comprising a first transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface and a second transparent panel comprising an interior-facing No. 4 surface and an opposing No. 3 surface, wherein the first transparent panel and the second transparent panel are spaced apart from one another by a gap; and
forming a laser-etched pattern at the No. 1 surface, wherein the laser-etched pattern comprises a plurality of laser-etched abrasions spaced at the No. 1 surface, wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion, thereby leaving a visible laser-etched pattern formed form the plurality of laser-etched abrasions at the No. 1 surface.
Although the claims of the ‘435 application are not explicit as to each of the laser-etched abrasions comprising an individual single abrasion having within each single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous, these features would have been obvious in view of Yeo.
Yeo discloses a window (“building glass”: e.g. ¶¶ [0002], [0068]) comprising a transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface (“base”, e.g. “base” 100: e.g. Fig. 1 – 3; ¶¶ [0011], [0017], [0022], [0023], [0036], [0038], [0045]),
wherein the No. 1 surface comprises a laser etched pattern comprising a plurality of laser-etched abrasions spaced apart at the No. 1 surface (“optical array” formed by laser melting or ablation, e.g. “optical array” 200: e.g. Fig. 1, 2, 4 – 8; ¶¶ [0002], [0011], [0019], [0022], [0023], [0027], [0029], [0030], [0032], [0035] – [0038], [0040], [0045] – [0057], [0060] – [0065]), wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous (“bird recognizable optical element” having a “grating structure”, e.g. “bird recognizable optical element” 210: e.g. Fig. 7, 8; ¶¶ [0011] – [0018], [0020], [0022], [0032], [0037], [0046], [0048] – [0051], [0053] – [0056], [0058], [0059], [0061] – [0063], [0065] – [0067]), thereby leaving a visible laser-etched pattern formed from the plurality of laser-etched abrasions at the No. 1 surface (the “bird recognizable optical element” can “diffract” or “scatter” visible rays: e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]).
Yeo’s window serves, among other things, to have high visibility to birds and therefore reduce bird mortality from impacts and in particular improves visibility to birds by virtue of interaction with ultraviolet wavelengths which birds can recognize while also not compromising transparency in visible wavelengths which humans can recognize, thus reducing bird mortality by allowing birds to see the window before impact is made (e.g. ¶¶ [0008], [0009], [0024], [0053] – [0055], [0058], [0059], [0069]).
Accordingly, it would have been obvious to form each of the plurality of laser-etched abrasions of the ‘435 application to comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous as Yeo suggests. One of ordinary skill in the art would have made these modifications in order to improve the visibility of the laser-etched abrasions to birds, thereby reducing bird mortality.
Regarding claim 39, in addition to the limitations of claim 38, claim 26 of the ‘435 application recites the step of forming the laser-etched pattern comprises removing at least a portion of material of the No. 1 surface or producing microcracks beneath the No. 1 surface using a laser beam.
Regarding claim 40, in addition to the limitations of claim 38, claim 26 of the ‘435 application recites the method further comprises the step of:
sealing the gap closed by forming an edge connecting the first panel and the second panel, wherein the plurality of laser-etched abrasions are formed at the No. 1 surface after the gap is sealed closed.
Regarding claim 41, in addition to the limitations of claim 38, claim 29 of the ‘435 application recites the gap is filled with a gas denser than air.
Regarding claim 42, in addition to the limitations of claim 38, claim 30 of the ‘435 application recites the gap comprises a vacuum.
Regarding claim 43, claim 31 of the ‘435 application is directed to a method of preventing bird collisions with an architectural substrate, the method comprising the step of:
installing the window discussed in the double patenting rejection of claim 1 in an opening of an architectural substrate with the exterior-facing No. 1 surface arranged as an exterior surface of the architectural substrate. The modifications in view of Yeo similarly apply.
Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the ‘435 application and Yeo as applied to claim 16 above, and further in view of Kain (WO 2020/225256 A1).
Regarding claim 18, although the ‘435 application and Yeo are not explicit as to the geometric shapes being selected concentric circles of alternating abraded and non-abraded areas, this feature would have been obvious in view of Kain.
MPEP § 2143, I, B, states the following regarding simple substitution of one known element for another to obtain predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), as noted previously, Yeo is not explicit as to the geometric shapes being selected concentric circles of alternating abraded and non-abraded areas, but also does not limit their disclosure to any particular pattern so long as birds can detect the pattern (e.g. ¶ [0075]) .
With respect to (2), Kain discloses coatings formed as a pattern using concentric circles is equivalent to a pattern which is irregular or uses strips or bands (e.g. Fig. 2A – 2C; p. 14, ll. 22 – 31; p. 22, l. 24, to p. 23, l. 27). Yeo discloses their “optical array” can be formed by laser-etching the panel directly or by attaching a secondary structure, and thus the patterns formed by either method serve the same purpose and have the same effect (e.g. ¶¶ [0023], [0038] – [0043], [0066]).
With respect to (3), neither the claims of the ‘435 application nor Yeo limit the geometric shapes. Rather, Yeo only requires scattering of ultraviolet radiation which birds can recognize (e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]). Accordingly, one of ordinary skill in the art could have substituted a pattern, e.g. Yeo’s linear pattern, for concentric circles. Given the claims of the ‘435 application and Yeo operate on the properties of abraded and non-abraded areas, one of ordinary skill in the art would have adopted an alternating pattern for such areas in making such substitution.
With respect to (4), like Yeo, Kain seeks to help prevent bird strikes with their pattern (e.g. p. 1, ll. 9 – 11). Accordingly, one of ordinary skill in the art would have been reasonable to consider Kain for alternative shapes for a pattern and still be consistent with Yeo.
Therefore, it would have been obvious to substitute for concentric circles of alternating abraded and non-abraded areas, the motivation being such substitution yields a predictable result in the form of reduce bird strikes.
These are provisional nonstatutory double patenting rejections.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 17, 19 – 24, 30 – 40, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Mathew (US 2019/0294016 A1) in view of Yeo (US 2022/0179136 A1).
Regarding claim 1, Mathew discloses a window (“insulated glass unit”, “IGU”: e.g. Fig. 1 – 11; ¶¶ [0005] – [0187]) comprising:
a first transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface (“exterior pane”, e.g. “lite” 402a comprising an “exterior-facing surface” S1 and an “interior-facing surface” S2: e.g. Fig. 4A – 4X; ¶¶ [0006], [0007], [0011], [0016], [0017], [0019], [0087], [0088], [0092], [0099], [0101] – [0103], [0105], [0143], [0151], [0154], [0155], [0172], [0183]); and
a second transparent panel comprising an interior-facing No. 4 surface and an opposing No. 3 surface (“interior pane”, e.g. “lite” 402b comprising an “exterior-facing surface” S3 and “interior-facing surface” S4, or “lite” 402c comprising an “interior-facing surface” S5 and an “exterior-facing surface” S6: e.g. Fig. 4A – 4X; ¶¶ [0006], [0007], [0011], [0016], [0017], [0019], [0087] – [0089], [0091], [0092], [0098], [0099], [0101] – [0103], [0143], [0151], [0155], [0172], [0183]), wherein the first transparent panel and the second transparent panel are spaced apart from one another by a gap (“interior” of the “IGU”: e.g. Fig. 4A – 4X; ¶¶ [0059], [0084], [0087] – [0089], [0091], [0143], [0172]),
wherein the No. 1 surface comprises a laser etched pattern comprising a plurality of laser-etched abrasions spaced at the No. 1 surface, wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion, thereby leaving a visible marking at the No. 1 surface (e.g. Fig. 3A – 3H; ¶¶ [0005] – [0023], [0030], [0054] – [0086]).
While Mathew’s laser-etched abrasions will be understood to define an abraded portion intrinsically, Mathew is not specific as to each of the plurality of laser-etched abrasions comprising an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous, these features would have been obvious in view of Yeo.
Yeo discloses a window (“building glass”: e.g. ¶¶ [0002], [0068]) comprising a transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface (“base”, e.g. “base” 100: e.g. Fig. 1 – 3; ¶¶ [0011], [0017], [0022], [0023], [0036], [0038], [0045]),
wherein the No. 1 surface comprises a laser etched pattern comprising a plurality of laser-etched abrasions spaced apart at the No. 1 surface (“optical array” formed by laser melting or ablation, e.g. “optical array” 200: e.g. Fig. 1, 2, 4 – 8; ¶¶ [0002], [0011], [0019], [0022], [0023], [0027], [0029], [0030], [0032], [0035] – [0038], [0040], [0045] – [0057], [0060] – [0065]), wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous (“bird recognizable optical element” having a “grating structure”, e.g. “bird recognizable optical element” 210: e.g. Fig. 7, 8; ¶¶ [0011] – [0018], [0020], [0022], [0032], [0037], [0046], [0048] – [0051], [0053] – [0056], [0058], [0059], [0061] – [0063], [0065] – [0067]), thereby leaving a visible laser-etched pattern formed from the plurality of laser-etched abrasions at the No. 1 surface (the “bird recognizable optical element” can “diffract” or “scatter” visible rays: e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]).
Mathew discloses their window serves, among other things, to have high visibility to birds and therefore reduce bird mortality from impacts (e.g. ¶¶ [0005], [0008], [0052] – [0062], [0064] – [0068], [0071], [0076], [0078] – [0081], [0084], [0086], [0089], [0090], [0092], [0095], [0096], [0102], [0104] – [0107], [0109], [0115], [0118], [0120] – [0122], [0129] – [0132], [0134] – [0136], [0138], [0142], [0143], [0146] – [0148], [0151], [0154], [0155], [0167] – [0170], [0173] – [0175], [0177]).
Yeo’s window serves the same purpose, and in particular improves visibility to birds by virtue of interaction with ultraviolet wavelengths which birds can recognize while also not compromising transparency in visible wavelengths which humans can recognize, thus reducing bird mortality by allowing birds to see the window before impact is made (e.g. ¶¶ [0008], [0009], [0024], [0053] – [0055], [0058], [0059], [0069]).
Accordingly, it would have been obvious to modify each of Mathew’s plurality of laser-etched abrasions to comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous as Yeo suggests. One of ordinary skill in the art would have made these modifications in order to improve the visibility of the laser-etched abrasions to birds, thereby reducing bird mortality.
Per the Claim Interpretation section above, since Mathew and Yeo provide laser-etched abrasions, i.e. use the same process as recited in the claims, Mathew and Yeo are understood to successfully establish a prima facie case of obviousness.
Regarding claim 2, in addition to the limitations of claim 1, Mathew discloses the pattern is spaced over the entire area of the No. 1 surface such that there is no eight square inch area of the No. 1 surface without a laser-etched abrasion (maximum size of “pattern features” is 2 inches by 4 inches: e.g. Fig. 3A – 3H; ¶¶ [0066] – [0075]).
Mathew’s eight square inch area encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 3, in addition to the limitations of claim 1, Mathew discloses the pattern is spaced over the entire area of the No. 1 surface such that there is no eight square inch area of the No. 1 surface without a laser-etched abrasion (maximum size of “pattern features” is 2 inches by 4 inches: e.g. Fig. 3A – 3H; ¶¶ [0066] – [0075]).
Mathew’s eight square inch area encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 4, in addition to the limitations of claim 1, Mathew discloses the pattern is spaced over the entire area of the No. 1 surface such that there is no eight square inch area of the No. 1 surface without a laser-etched abrasion (maximum size of “pattern features” is 2 inches by 4 inches: e.g. Fig. 3A – 3H; ¶¶ [0066] – [0075]).
Mathew’s eight square inch area encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 5, in addition to the limitations of claim 1, Mathew discloses the pattern is spaced over the entire area of the No. 1 surface such that there is no eight square inch area of the No. 1 surface without a laser-etched abrasion (maximum size of “pattern features” is 2 inches by 4 inches: e.g. Fig. 3A – 3H; ¶¶ [0066] – [0075]).
Regarding claim 6, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 9, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 10, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 11, in addition to the limitations of claim 1, Mathew discloses the total area of the plurality of laser-etched abrasions about 11 to 89 percent of the area of the No. 1 surface (“dimensions” 304, 305 each can range from 0.25 inches to 2 inches: e.g. Fig. 3B; ¶ [0068]; similar dimensions are also disclosed for the embodiments of Fig. 3C – 3H and therefore a similar range to Fig. 3B exists; ¶¶ [0069] – [0074]).
Mathew’s total area overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 12, in addition to the limitations of claim 1, Mathew discloses the plurality of abrasions are formed such that each laser-etched abrasion has a maximum width in at least one direction of up to 50.8 mm (2 inches: e.g. Fig. 3A – 3H; ¶¶ [0068] – [0074]).
Mathew’s maximum width encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 13, in addition to the limitations of claim 1, Mathew discloses each of the laser-etched abrasions are formed by applying a laser beam to the No. 1 surface to remove at least a portion of material of the No. 1 surface or produce microcracks beneath the No. 1 surface (e.g. Fig. 11; ¶¶ [0006] – [0009], [0016], [0017], [0019] – [0022], [0155], [0167] – [0175], [0177], [0178], [0180] – [0187]). Yeo is similarly descriptive (e.g. Fig. 2; ¶¶ [0023], [0040]).
Regarding claim 14, in addition to the limitations of claim 13, Mathew discloses each of the laser-etched abrasions are formed by removing at least a portion of material of the No. 1 surface (ablation: e.g. ¶¶ [0009], [0022], [0180] – [0182], [0187]). Yeo is similarly descriptive (e.g. Fig. 2; ¶¶ [0023], [0040]).
Regarding claim 15, in addition to the limitations of claim 13, Mathew discloses each of the laser-etched abrasions are formed by producing microcracks beneath the No. 1 surface (e.g. ¶¶ [0007], [0169], [0173] – [0175]).
Regarding claim 16, in addition to the limitations of claim 13, Yeo discloses each of the laser-etched abrasions are formed from one or more geometric shapes containing one or more intermittent and/or discontinuous non-abraded areas (“grating structure”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 17, in addition to the limitations of claim 16, Yeo discloses the geometric shapes are, e.g., polygons (“grating structure” which is “linear”, “radial”, or “two-dimensional”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 19, in addition to the limitations of claim 13, Yeo discloses the abrasions are formed from a rectangular line containing one or more intermittent and/or discontinuous non-abraded areas therein (“grating structure” which is “linear” or “two-dimensional”: e.g. Fig. 4 – 8; ¶¶ [0016], [0017], [0032], [0051], [0061], [0065] – [0067]).
Regarding claim 20, in addition to the limitations of claim 13, Mathew discloses the laser-induced markings are formed by a carbon dioxide laser (e.g. ¶¶ [0171], [0174]). Yeo is similarly descriptive (e.g. Fig. 2; ¶¶ [0023], [0040]).
Regarding claim 21, claim 21 recites “the laser beam has an energy density of from 0.5 J/cm2 to 10 J/cm2 at a location of each laser-etched abrasions formed by the laser beam”. This recitation makes claim 21 a product-by-process claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
While not strictly limiting, the instant specification notes an energy density in the claimed range is sufficient for removing material to form the abrasion (e.g. ¶ [0050]) but does not indicate any particular parameters beyond this which would imply further structure. Considering Mathew’s disclosures of ablation where the energy density of the laser is above the threshold for performing the ablation (e.g. ¶¶ [0009], [0022], [0180] – [0182], [0187]), i.e. removing material from the panel, a prima facie case of anticipation is established with respect to claim 21.
Regarding claim 22, in addition to the limitations of claim 1, Mathew discloses the No. 1 surface is a coated surface or an uncoated surface (“protective cover” is optional: e.g. ¶ [0085]).
Regarding claim 23, in addition to the limitations of claim 1, Mathew discloses each of the plurality of laser-etched abrasions scatter incident electromagnetic radiation (e.g. ¶¶ [0054], [0062], [0068] – [0073], [0083], [0136] – [0141], [0173]). Yeo is similarly descriptive (e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]).
Regarding claim 24, in addition to the limitations of claim 1, Mathew discloses the gap is sealed closed by an edge connecting the first panel and the second panel (“spacers”, “frames”, etc.: e.g. ¶¶ [0091], [0092], [0151]).
Regarding claim 30, in addition to the limitations of claim 1, Mathew discloses the first panel is a component of a building integrated photovoltaic (BIPV) component (e.g. ¶¶ [0151], [0153], [0154]).
Regarding claim 31, in addition to the limitations of claim 1, Mathew discloses the window is arranged in a frame of an architectural structure with the exterior-facing No. 1 surface arranged as an exterior surface of the architectural structure (the “exterior-facing surface” S1 in the “building” is arranged in this manner: e.g. ¶¶ [0087], [0092], [0105]).
Regarding claim 32, in addition to the limitations of claim 2, Mathew discloses the gap is sealed closed by an edge connecting the first panel and the second panel (“spacers”, “frames”, etc.: e.g. ¶¶ [0091], [0092], [0151]), wherein the plurality of laser-etched abrasions are formed by applying the laser beam to the No. 1 surface after the gap is sealed closed (e.g. Fig. 3A – 3H; ¶¶ [0005] – [0023], [0030], [0054] – [0086]).
Regarding claim 33, although Mathew and Yeo is not explicit as to the plurality of laser-etched abrasions exhibit a 20° gloss value of less than 1, Mathew uses laser-etched abrasions to introduce haze and reduce gloss so that it is easier for birds to see the window (e.g. ¶¶ [0054], [0135] – [0137], [0143], [0146], [0168]). Given birds may approach the window at varying angles from the normal (Mathew: e.g. ¶ [0177]; Yeo: e.g. ¶ [0058]), reducing the gloss is critical to successfully warning a bird from a potential impact. Such effects are consistent with the purpose of gloss value in the instant specification (e.g. ¶ [0041]).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A. Therefore, it would have been obvious to provide the plurality of laser-etched abrasions with a 20° gloss value of less than 1, the motivation being to better warn a bird of the window’s presence and prevent an impact.
Regarding claim 34, in addition to the limitations of claim 1, Mathew discloses the first panel comprises, e.g., glass (e.g. ¶¶ [0102], [0147] – [0151], [0156], [0160], [0163], [0172] – [0175], [0177] – [0181]). Yeo is similarly descriptive (e.g. ¶¶ [0002], [0015], [0038], [0056], [0057], [0066], [0068]).
Regarding claim 35, in addition to the limitations of claim 1, Mathew discloses the window further comprises at least one side light positioned to emit light at a side of the first transparent panel between the No. 1 surface and the No. 2 surface (e.g. ¶¶ [0151], [0152]).
Regarding claim 36, Mathew discloses an architectural structure comprising the window as discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Mathew and Yeo (“building”: e.g. ¶¶ [0052], [0086] – [0089], [0092], [0098], [0099], [0105]).
Regarding claim 37, in addition to the limitations of claim 36, Mathew discloses the architectural structure comprises a building comprising an opening, wherein the window is mounted in the opening with the exterior-facing No. 1 surface arranged as an exterior surface of the building (the “exterior-facing surface” S1 in the “building” is arranged in this manner: e.g. ¶¶ [0087], [0092], [0105]).
Regarding claim 38, Mathew discloses a method of manufacturing a window (“insulated glass unit”, “IGU”: e.g. Fig. 1 – 11; ¶¶ [0005] – [0187]), the method comprising the steps of:
providing an insulated transparency unit comprising a first transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface and a second transparent panel comprising an interior-facing No. 4 surface and an opposing No. 3 surface, wherein the first transparent panel and the second transparent panel are spaced apart from one another by a gap (“exterior pane” and “interior pane” forming an “interior” of the “IGU”, e.g. “lite” 402a comprising an “exterior-facing surface” S1 and an “interior-facing surface” S2 spaced from “lite” 402b comprising an “exterior-facing surface” S3 and “interior-facing surface” S4, or “lite” 402c comprising an “interior-facing surface” S5 and an “exterior-facing surface” S6: e.g. Fig. 4A – 4X; ¶¶ [0006], [0007], [0011], [0016], [0017], [0019], [0059], [0084], [0087] – [0089], [0091], [0092], [0098] [0099], [0101] – [0103], [0105], [0143], [0151], [0154], [0155], [0172], [0183]); and
forming a laser-etched pattern at the No. 1 surface, wherein the laser etched pattern comprises a plurality of laser-etched abrasion spaced at the No. 1 surface, wherein each of the plurality of laser-etched abrasions comprise an individual singles abrasion, thereby leaving a visible marking at the No. 1 surface (e.g. Fig. 3A – 3H; ¶¶ [0005] – [0023], [0030], [0054] – [0086]).
While Mathew’s laser-etched abrasions will be understood to define an abraded portion intrinsically, Mathew is not specific as to each of the plurality of laser-etched abrasions comprising an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous, these features would have been obvious in view of Yeo.
Yeo discloses a window (“building glass”: e.g. ¶¶ [0002], [0068]) comprising a transparent panel comprising an exterior-facing No. 1 surface and an opposing No. 2 surface (“base”, e.g. “base” 100: e.g. Fig. 1 – 3; ¶¶ [0011], [0017], [0022], [0023], [0036], [0038], [0045]),
wherein the No. 1 surface comprises a laser etched pattern comprising a plurality of laser-etched abrasions spaced apart at the No. 1 surface (“optical array” formed by laser melting or ablation, e.g. “optical array” 200: e.g. Fig. 1, 2, 4 – 8; ¶¶ [0002], [0011], [0019], [0022], [0023], [0027], [0029], [0030], [0032], [0035] – [0038], [0040], [0045] – [0057], [0060] – [0065]), wherein each of the plurality of laser-etched abrasions comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous (“bird recognizable optical element” having a “grating structure”, e.g. “bird recognizable optical element” 210: e.g. Fig. 7, 8; ¶¶ [0011] – [0018], [0020], [0022], [0032], [0037], [0046], [0048] – [0051], [0053] – [0056], [0058], [0059], [0061] – [0063], [0065] – [0067]), thereby leaving a visible laser-etched pattern formed from the plurality of laser-etched abrasions at the No. 1 surface (the “bird recognizable optical element” can “diffract” or “scatter” visible rays: e.g. Fig. 1; ¶¶ [0008], [0011], [0016], [0017], [0019], [0022], [0032], [0036], [0037], [0045], [0046], [0053], [0061], [0065] – [0067]).
Mathew discloses their window serves, among other things, to have high visibility to birds and therefore reduce bird mortality from impacts (e.g. ¶¶ [0005], [0008], [0052] – [0062], [0064] – [0068], [0071], [0076], [0078] – [0081], [0084], [0086], [0089], [0090], [0092], [0095], [0096], [0102], [0104] – [0107], [0109], [0115], [0118], [0120] – [0122], [0129] – [0132], [0134] – [0136], [0138], [0142], [0143], [0146] – [0148], [0151], [0154], [0155], [0167] – [0170], [0173] – [0175], [0177]).
Yeo’s window serves the same purpose, and in particular improves visibility to birds by virtue of interaction with ultraviolet wavelengths which birds can recognize while also not compromising transparency in visible wavelengths which humans can recognize, thus reducing bird mortality by allowing birds to see the window before impact is made (e.g. ¶¶ [0008], [0009], [0024], [0053] – [0055], [0058], [0059], [0069]).
Accordingly, it would have been obvious to form each of Mathew’s plurality of laser-etched abrasions to comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous as Yeo suggests. One of ordinary skill in the art would have made these modifications in order to improve the visibility of the laser-etched abrasions to birds, thereby reducing bird mortality.
Per the Claim Interpretation section above, since Mathew and Yeo provide laser-etched abrasions, i.e. use the same process as recited in the claims, Mathew and Yeo are understood to successfully establish a prima facie case of obviousness.
Regarding claim 39, in addition to the limitations of claim 38, Mathew discloses the step of forming the laser-etched pattern comprises removing at least a portion of material of the No. 1 surface or producing microcracks beneath the No. 1 surface using a laser beam (e.g. Fig. 11; ¶¶ [0006] – [0009], [0016], [0017], [0019] – [0022], [0155], [0167] – [0175], [0177], [0178], [0180] – [0187]). Yeo is similarly descriptive (e.g. Fig. 2; ¶¶ [0023], [0040]).
Regarding claim 40, in addition to the limitations of claim 38, Mathew discloses the method further comprises the step of: sealing the gap closed by forming an edge connecting the first panel and the second panel (“spacers”, “frames”, etc.: e.g. ¶¶ [0091], [0092], [0151]), wherein the plurality of laser-etched abrasions are formed at the No. 1 surface after the gap is sealed closed (e.g. Fig. 3A – 3H; ¶¶ [0005] – [0023], [0030], [0054] – [0086]).
Regarding claim 43, Mathew discloses a method of preventing bird collisions with an architectural substrate (such prevention being the goal of Mathew’s invention: e.g. ¶¶ [0052], [0067]), comprising: installing the window discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Mathew and Yeo in an opening of an architectural substrate with the exterior-facing No. 1 surface arranged as an exterior surface of the architectural substrate (this step is implied from Mathew’s arrangement of the “exterior-facing surface” S1 in a “building” in this manner: e.g. ¶¶ [0087], [0092], [0105]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mathew and Yeo as applied to claim 16 above, and further in view of Kain (WO 2020/225256 A1).
Regarding claim 18, although Mathew and Yeo not explicit as to the geometric shapes being selected concentric circles of alternating abraded and non-abraded areas, this feature would have been obvious in view of Kain.
MPEP § 2143, I, B, states the following regarding simple substitution of one known element for another to obtain predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), as noted previously, Mathew and Yeo are not explicit as to the geometric shapes being selected concentric circles of alternating abraded and non-abraded areas, but also does not limit their disclosure to any particular pattern so long as birds can detect the pattern (e.g. ¶ [0075]) .
With respect to (2), Kain discloses coatings formed as a pattern using concentric circles is equivalent to a pattern which is irregular or uses strips or bands (e.g. Fig. 2A – 2C; p. 14, ll. 22 – 31; p. 22, l. 24, to p. 23, l. 27). Yeo discloses their “optical array” can be formed by laser-etching the panel directly or by attaching a secondary structure, and thus the patterns formed by either method serve the same purpose and have the same effect (e.g. ¶¶ [0023], [0038] – [0043], [0066]).
With respect to (3), Mathew’s invitation to use other patterns and general disclosure for controlling parameters for forming other patterns (e.g. ¶¶ [0066] – [0074]) indicates one of ordinary skill in the art could have substituted a pattern, e.g. Mathew’s irregular pattern, for concentric circles. Given Mathew and Yeo operate on the differing optical properties of abraded and non-abraded areas, one of ordinary skill in the art would have adopted an alternating pattern for such areas in making such substitution.
With respect to (4), like Mathew and Yeo, Kain seeks to help prevent bird strikes with their pattern (e.g. p. 1, ll. 9 – 11). Accordingly, one of ordinary skill in the art would have been reasonable to consider Kain for alternative shapes for a pattern.
Therefore, it would have been obvious to substitute for concentric circles of alternating abraded and non-abraded areas, the motivation being such substitution yields a predictable result in the form of reduce bird strikes.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Mathew and Yeo as applied to claim 1 above, and further in view of Margalit (US 2011/0133940 A1).
Regarding claim 25, although Mathew is not explicit as to the gap comprising a gas denser than air, this feature would have been obvious in view of Margalit.
Mathew notes the gap can be filled with argon (e.g. ¶ [0088]) which Margalit notes is a gas denser than air useful for improving insulating properties of windows (e.g. ¶¶ [0030], [0086]).
Therefore, it would have been obvious for Mathew’s gap to comprise a gas denser than air, e.g. by providing argon in such a density, in order to improve the insulating properties of the window.
Claims 26 – 29 are rejected under 35 U.S.C. 103 as being unpatentable over Mathew and Yeo as applied to claim 1 above, and further in view of Lameris (US 2016/0138324 A1).
Regarding claim 26, although Mathew is not explicit as to the gap being evacuated to produce a vacuum, this feature would have been obvious in view of Lameris.
Lameris discloses windows which have a gap between the transparent panels in order to decrease heat transfer by conduction and convection (e.g. ¶ [0003] describes this feature as a function of non-inventive windows to Lameris, and ¶¶ [0002] and [0004] – [0048] describe windows inventive to Lameris with similar benefits).
Mathew relates to insulated glass units (e.g. ¶¶ [0011], [0016], [0058], [0059], [0084], [0087] – [0103], [0105], [0133], [0143], [0151], [0154] – [0156], [0172]) and thus one of ordinary skill in the art would have wanted to select a gap configuration which is suitable for this purpose.
Accordingly, it would have been obvious for Mathew’s gap to be evacuated to produce a vacuum as Lameris suggests, the motivation being to decrease heat transfer through the window by both conduction and convection.
Regarding claim 27, in addition to the limitations of claim 26, Lameris discloses a plurality of supports are arranged in the gap to connect the first panel and the second panel in order to prevent the panels from contacting one another (e.g. ¶ [0012]) and therefore would have been obvious to provide such supports in Mathew’s gap for a similar reason.
Regarding claim 28, in addition to the limitations of claim 27, Lameris discloses their supports are arranged in a reticulated manner in order to help prevent bird strikes on the window (e.g. ¶ [0024]).
Accordingly, it would have been obvious to add such supports to Mathew’s window in order to further prevent bird strikes.
Given the reticulated nature of Lameris’ supports and the patterns Mathew discloses for the markings, it follows at least a portion of the plurality of markings would be formed between locations in which the plurality of supports contact the first panel.
Regarding claim 29, in addition to the limitations of claim 28, for similar reasons to those discussed with respect to claim 28, Lameris’ supports would likewise provide at least a portion of the plurality of markings which are formed at locations in which the plurality of supports contact the first panel.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Mathew and Yeo as applied to claim 38 above, and further in view of Margalit.
Regarding claim 41, although Mathew is not explicit as to the gap comprising a gas denser than air, this feature would have been obvious in view of Margalit.
Mathew notes the gap can be filled with argon (e.g. ¶ [0088]) which Margalit notes is a gas denser than air useful for improving insulating properties of windows (e.g. ¶¶ [0030], [0086]).
Therefore, it would have been obvious for Mathew’s gap to comprise a gas denser than air, e.g. by providing argon in such a density, in order to improve the insulating properties of the window formed by the method.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Mathew and Yeo as applied to claim 38 above, and further in view of Lameris.
Regarding claim 42, although Mathew is not explicit as to the gap comprising a vacuum, this feature would have been obvious in view of Lameris.
Lameris discloses windows which have a gap between the transparent panels in order to decrease heat transfer by conduction and convection (e.g. ¶ [0003] describes this feature as a function of non-inventive windows to Lameris, and ¶¶ [0002] and [0004] – [0048] describe windows inventive to Lameris with similar benefits).
Mathew relates to insulated glass units (e.g. ¶¶ [0011], [0016], [0058], [0059], [0084], [0087] – [0103], [0105], [0133], [0143], [0151], [0154] – [0156], [0172]) and thus one of ordinary skill in the art would have wanted to select a gap configuration which is suitable for this purpose.
Accordingly, it would have been obvious for Mathew’s gap to be evacuated to produce a vacuum as Lameris suggests, the motivation being to decrease heat transfer through the window by both conduction and convection.
Response to Arguments
Applicant’s arguments, see p. 9, filed 17 December 2025, with respect to the rejections under 35 U.S.C. 112 have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant’s arguments, see pp. 9 – 14, filed 17 December 2025, with respect to the rejections of claims 1 – 43 under 35 U.S.C. 102(a)(1) or 35 U.S.C. 103, as appropriate, using Mathew as the sole or primary reference have been fully considered and are persuasive. Therefore, these rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yeo.
Applicant asserts patentability over Mathew on the basis that Mathew does not form each of the plurality of laser-etched abrasions to comprise an individual single abrasion having within each individual single abrasion both at least one abraded portion and at least one non-abraded portion such that each individual single abrasion of the plurality of laser-etched abrasions is formed to be intermittent and/or discontinuous.
Yeo is newly cited herein to address these features. Notably, each of Yeo’s laser-etched abrasions has a grating pattern formed by laser etching, thus forming an intermittent or discontinuous structure within each abrasion.
The examiner acknowledges Applicant’s comments regarding the double patenting rejections (see p. 14 of the Remarks filed 17 December 2025). While Applicant has not addressed the merits of these rejections, the examiner notes these rejections have been modified in view of Yeo for the same reasons discussed above.
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.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783