Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-20 are pending.
Claim 12 is objected to.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/16/2024 has been considered by the examiner.
Drawings
The drawings were received on 9 February 2024. These drawings are accepted.
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.
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Claims 1-11 and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, and 10 of U.S. Patent No. 10,581,020. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, US 10,581,020 claims a substrate comprising (see claim 1, line 1, light extraction substrate):
a glass substrate having a first surface and a second surface (see claim 1, lines 2-3, homogenous glass substrate);
a first region on and/or adjacent the first surface, the first region comprising nanoparticles embedded in the glass substrate at a depth of 0 to 50 microns (see claim 1, lines 4-7); and
a second region on at least a portion of the second surface (see claim 1, lines 9-10),
wherein the first surface of the glass substrate is smoother than the second surface of the glass substrate (see claim 1, lines 7-8 and 14-16, where a lower average surface roughness is smoother),
wherein the first surface has an average surface roughness in the range of 1 nm to 100 nm (see claim 1, lines 7-8, average surface roughness of up to 10 nm), and
wherein the second surface has an average surface roughness in the range of 50 nm to 500 nm (see claim 1, lines 14-16).
Regarding claim 2¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein the nanoparticles are selected from silver oxide nanoparticles, alumina nanoparticles, titania nanoparticles, cerium oxide nanoparticles, zinc oxide nanoparticles, tin oxide nanoparticles, silica nanoparticles, zirconia nanoparticles, and combinations thereof (see claim 2).
Regarding claim 3¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein the nanoparticles are deposited at a depth in the range of 0 microns to 10 microns with respect to the first surface (see claim 10).
Regarding claim 4¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein the second region comprises a coating (see claim 3).
Regarding claim 5¸ US 10,581,020 claims the substrate of claim 4 (see above), wherein the coating is selected from silica, alumina, zinc oxide, titania, zirconia, tin oxide, silicate coatings, and mixtures thereof (see claim 4).
Regarding claim 6¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein the second region is formed by texturing the second surface (see claim 5).
Regarding claims 7-10¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein the substrate has haze in the range of 10% to 90%, the substrate has haze in the range of 10% to 80%, the substrate has haze in the range of 1% to 60%, or the substrate has haze in the range of 1% to 50% (see claim 1, lines 11-13, haze in the range of 10% to 40%).
Regarding claim 11¸ US 10,581,020 claims the substrate of claim 1 (see above), wherein an anode layer is deposited on the first surface (see claim 6).
Regarding claim 13¸ US 10,581,020 claims a substrate comprising (see claim 1, line 1, light extraction substrate):
a glass substrate having a first surface and a second surface (see claim 1, lines 2-3, homogenous glass substrate);
a first region on and/or adjacent the first surface, the first region comprising nanoparticles embedded in the glass substrate at a depth of 0 to 10 microns (see claim 1, lines 4-7, where the depth of 0 to 10 microns is encompassed in 0 to 50 microns); and
a second region on at least a portion of the second surface (see claim 1, lines 9-10),
wherein the first surface of the glass substrate is smoother than the second surface of the glass substrate (see claim 1, lines 7-8 and 14-16, where a lower average surface roughness is smoother),
wherein the first surface has an average surface roughness in the range of 1 nm to 50 nm (see claim 1, lines 7-8, average surface roughness of up to 10 nm), and
wherein the second surface has an average surface roughness in the range of 50 nm to 500 nm (see claim 1, lines 14-16).
Regarding claim 14¸ US 10,581,020 claims the substrate of claim 13 (see above), wherein the nanoparticles are selected from silver oxide nanoparticles, alumina nanoparticles, titania nanoparticles, cerium oxide nanoparticles, zinc oxide nanoparticles, tin oxide nanoparticles, silica nanoparticles, zirconia nanoparticles, and combinations thereof (see claim 2).
Regarding claim 15¸ US 10,581,020 claims the substrate of claim 13 (see above), wherein the second region comprises a coating (see claim 3).
Regarding claim 16¸ US 10,581,020 claims the substrate of claim 15 (see above), wherein the coating is selected from silica, alumina, zinc oxide, titania, zirconia, tin oxide, silicate coatings, and mixtures thereof (see claim 4).
Regarding claim 17¸ US 10,581,020 claims the substrate of claim 13, wherein the substrate has haze in the range of 10% to 90% (see claim 1, lines 11-13, haze in the range of 10% to 40%).
Regarding claim 18¸ US 10,581,020 claims the substrate of claim 13, further comprising an anode layer deposited on the first surface (see claim 6).
Regarding claim 19¸ US 10,581,020 claims the substrate of claim 13, wherein an underlayer coating stack is deposited on the first surface and an anode layer is deposited on the underlayer coating stack, the underlayer coating stack boosts transmittance of the glass substrate with the anode layer and with the first or second region (see claim 8).
Regarding claim 20¸ US 10,581,020 claims a substrate comprising (see claim 1, line 1, light extraction substrate):
a glass substrate having a first surface and a second surface (see claim 1, lines 2-3, homogenous glass substrate);
a first region on and/or adjacent the first surface, the first region comprising nanoparticles embedded in the glass substrate at a depth of 0 to 50 microns (see claim 1, lines 4-7); and
a second region on at least a portion of the second surface (see claim 1, lines 9-10),
wherein the first surface of the glass substrate is smoother than the second surface of the glass substrate (see claim 1, lines 7-8 and 14-16, where a lower average surface roughness is smoother),
wherein the first surface has an average surface roughness in the range of 1 nm to 100 nm (see claim 1, lines 7-8, average surface roughness of up to 10 nm),
wherein the second surface has an average surface roughness in the range of 50 nm to 500 nm (see claim 1, lines 14-16), and
wherein the first region provides haze in the range of 10% to 40% (see claim 1, lines 11-13).
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for at least the reason that the prior art fails to teach or suggest that an anode layer is deposited on the first surface (claim 11) and that an underlayer coating stack is deposited prior to the anode layer to boost the transmittance of the substrate with the anode layer and with the first and/or second region, as generally set forth in claim 12, the invention including the totality of the particular limitations in claims 1 and 11, from which claim 12 depends.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP 1,793,263 to Chiang discloses a substrate comprising embedded diffuser materials and a surface structure (see at least Fig. 8b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM W BOOHER whose telephone number is (571)270-0573. The examiner can normally be reached M - F: 8:00am - 4:00pm.
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/ADAM W BOOHER/ Examiner, Art Unit 2872