DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1, 4-7, 9, 11-17, 19-26, 31-32 are pending.
Claims 2-3, 8, 10, 18, 27-29 are cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/1/26 has been entered.
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.
Claim(s) 1, 5-7, 9, 11-17, 20-22, 24-26, 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (“Mathew”) (US 2018/0173071) in view of Weng et al (“Weng”) (US 2019/0084874).
Re claim 1, Mathew discloses a window ([0005]; Fig. 4a) comprising:
a first transparent panel (402a; [0006]) comprising an exterior-facing first surface (Fig. 4A, S1) and an opposing second surface (Fig. 4A, S2),
a second transparent panel (402b; [0006]) comprising an interior-facing fourth surface (S4) and an opposing third surface (S3),
wherein the first transparent panel (402a) and the second transparent panel (402b) are spaced apart from one another (Fig. 4A) by a gap (between S2 and S3),
wherein the first surface (S1) comprises a pattern (405; [0083]) comprising a plurality of markings ([0102] disclosing laser etching; Fig. 3B-3H) spaced at (Fig. 3B-3H) the first surface (S1), wherein the pattern (Fig. 3B-3H) is spaced over the entire area (Fig. 3A-3H) of the first surface (S1), wherein each of the plurality of markings (Fig. 3B-3H) comprise an abrasion ([0102] disclosing laser etching), thereby leaving a visible marking (Fig. 3B-3H) at the first surface (S1),
wherein the abrasions ([0102] disclosing laser etching) are laser-induced markings ([0102] disclosing laser etching) formed after the gap is sealed by applying a laser beam ([0102] disclosing laser etching) to the first surface (S1; see also [0012] disclosing that the pattern may be etched onto glass) to remove at least a portion of material ([0102] disclosing laser etching) of the first surface (S1) or produce microcracks beneath ([0102] disclosing laser etching) the first surface (S1) without damaging the other sections of the window (Fig. 3B-3H),
but fails to disclose the gap sealed closed by an edge connecting the first panel and the second panel, wherein 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.
However, Weng discloses the gap (17) sealed closed by an edge (15) connecting the first panel (1) and the second panel (30).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew with the gap sealed closed by an edge connecting the first panel and the second panel as disclosed by Weng in order to maintain spacing between the first and second panels ([0026] disclosing 15 as a sealing spacer).
In addition, Weng discloses wherein the laser beam ([0033]) has an energy density of from 0.5 J/cm2 to 10 J/cm2 (Claim 32; [0033]) at a location of a marking (150) formed by the laser beam ([0033]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew wherein 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 as disclosed by Weng in order to allow ablation to occur with partial removal but without significant damage to the substrate and without significant haze in the patterned areas ([0033]). In addition, where 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.
The language “wherein the abrasions are laser-induced markings formed after the gap is sealed by applying a laser beam to the first surface to remove at least a portion of material of the first surface or produce microcracks beneath the first surface without damaging the other sections of the window, wherein 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” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 4, Mathew as modified discloses the window of claim 1, wherein the abrasions ([0102] disclosing laser etching) are formed by removing at least a portion of material ([0102] disclosing laser etching) of the first surface (S1; see also [0012] disclosing that the pattern may be etched onto glass).
The language “formed by removing at least a portion of material of the first surface” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 5, Mathew as modified discloses the window of claim 1, wherein the abrasions are formed by producing microcracks beneath the first surface.
The language “formed by producing microcracks beneath the first surface.” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 6, Mathew as modified discloses the window of claim 1, wherein the first surface (S1) is an uncoated surface or a coated surface (Fig. 4D adding 425).
Re claim 7, Mathew as modified discloses the window of claim 2, wherein the laser- induced markings are formed by at least one of the following: a carbon dioxide laser, a yttrium aluminum garnet (YAG) laser, a frequency doubled YAG laser, a fiber laser, a diode laser, an excimer laser, and/or any combination thereof (as this language is considered product by process).
The language “wherein the laser- induced markings are formed by at least one of the following: a carbon dioxide laser, a yttrium aluminum garnet (YAG) laser, a frequency doubled YAG laser, a fiber laser, a diode laser, an excimer laser, and/or any combination thereof” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 9, Mathew as modified discloses the window of claim 1, wherein each of the plurality of markings (Fig. 3B-3H) scatter incident electromagnetic radiation ([0045] disclosing scattering of UV light, UV being a known type of electromagnetic radiation).
Re claim 11, Mathew as modified discloses the window of claim 1, wherein the gap (between S2 and S3) comprises a gas denser than air ([0079] disclosing argon, a gas with denser than air).
Re claim 12, Mathew discloses the window of claim 1, but fails to disclose wherein the gap is evacuated to produce a vacuum.
However, Weng discloses wherein the gap (17) is evacuated to produce a vacuum ([0027]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew wherein the gap is evacuated to produce a vacuum as disclosed by Weng in order to allow increase thermal properties of the window, as evacuated glazings are extreme well-known and common in the art.
Re claim 13, Mathew discloses the window of claim 12, but fails to disclose further comprising a plurality of supports arranged in the gap to connect the first panel and the second panel.
However, Weng discloses further comprising a plurality of supports (15, [0027] disclosing plural 15) arranged in the gap (17) to connect the first panel (1) and the second panel (30).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew further comprising a plurality of supports arranged in the gap to connect the first panel and the second panel as disclosed by Weng in order to seal the gap to allow for evacuation of the gap or filling with a gas ([0027]).
Re claim 14, Mathew discloses the window of claim 13, Weng discloses wherein at least a portion of the plurality of markings (150) are formed between locations (Fig. 2) in which the plurality of supports (15) contact the first panel (1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew wherein at least a portion of the plurality of markings are formed between locations in which the plurality of supports contact the first panel as disclosed by Weng in order to distribute marking about an entirety of the panel instead of just edges thereof.
Re claim 15, Mathew discloses the window of claim 13, Weng discloses wherein at least a portion of the plurality of markings (150) are formed at locations (Fig. 3) in which the plurality of supports (15) contact (Fig. 3) the first panel (1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew wherein at least a portion of the plurality of markings are formed at locations in which the plurality of supports contact the first panel as disclosed by Weng in order to distribute marking about an entirety of the panel including edges thereof.
Re claim 16, Mathew as modified discloses the window of claim 1, wherein the first panel (402a) is a component of a building ([0077] disclosing a building) integrated photovoltaic (BIPV) component ([0142]).
Re claim 17, Mathew as modified discloses the window of claim 1, wherein the window (Fig. 4A) is arranged in a frame ([0083]) of an architectural structure ([0077] disclosing a building) with the exterior-facing first surface (S1) arranged as an exterior surface ([00134]) of the architectural structure ([0077] disclosing a building).
Re claim 19, Mathew as modified discloses the window of claim 1, wherein the plurality of markings (Fig. 3B-3H) are not formed by chemical etching unassisted by any photon enhanced reaction ([0111] disclosing laser etching).
Re claim 20, Mathew discloses the window of claim 1, but fails to disclose wherein the plurality of markings exhibit a 20 gloss value of less than 1.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew wherein the plurality of markings exhibit a 20 gloss value of less than 1 in order to reduce glare, provide visual clarity, and enhanced aesthetics. In addition, where 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.
Re claim 21, Mathew as modified discloses the window of claim 1, wherein the pattern (Fig. 3B-3H) is spaced over (Fig. 4A) the entire area of the first surface (S1) such that there is no four square inch area ([0056]-[0058]) of the first surface (S1) without a marking of the plurality of markings (Fig. 3B-3H).
Re claim 22, Mathew as modified discloses the window of claim 1, wherein the first panel (402a) comprises glass and/or plastic (402a; [0093]).
Re claim 24, Mathew as modified discloses an architectural structure ([0077] disclosing a building) comprising the window (Fig. 4A) of claim 1 (per the above).
Re claim 25, Mathew as modified discloses the architectural structure of claim 24, comprising a building ([0077] disclosing a building) comprising an opening ([0077] discloses exposing to the outside and inside environments which necessarily requires an opening), wherein the window (Fig. 4A) is mounted in the opening ([0077]) with the exterior-facing first surface (S1) arranged as an exterior surface ([0077]) of the building ([0077]).
Re claim 26, Mathew discloses a method (Fig. 1-4A) of manufacturing a window ([0096]) comprising:
providing (Fig. 4A showing the unit provided) an insulated transparency unit (Fig. 4A) comprising a first transparent panel (402a; [0006]) comprising an exterior-facing first surface (Fig. 4A, S1) and an opposing second surface (Fig. 4A, S2) and a second transparent panel (402b; [0006]) comprising an interior-facing fourth surface (S4) and an opposing third surface (S3), wherein the first transparent panel (402a) and the second transparent panel (402b) are spaced apart from one another (Fig. 4A) by a gap (between S2 and S3),
forming (Fig. 4A showing 405 formed, [0102] disclosing forming) a pattern (405; Fig. 3B-3H) at the first surface (S1), wherein the pattern (405) comprises a plurality of markings ([0102] disclosing laser etching; Fig. 3B-3H) spaced at (Fig. 3B-3H) the first surface (S1), wherein each of the plurality of markings (Fig. 3B-3H) comprises an abrasion ([0102] disclosing laser etching), thereby leaving a visible marking (Fig. 3B-3H) at the first surface (S1), wherein the pattern (Fig. 3B-3H) is spaced over the entire area (Fig. 3A-3H) of the first surface (S1), wherein forming the pattern (405; Fig. 3B-3H]) comprises removing at least a portion of material ([0102] disclosing laser etching; see also [0012] disclosing that the pattern may be etched onto glass) or producing microcracks beneath ([0111] disclosing laser etching) the first surface (S1) without damaging the other sections of the window (Fig. 3B-3H) using a laser beam ([0011]),
but fails to disclose sealing the gap closed by forming an edge connecting the first panel and the second panel, and forming the pattern after the gap is sealed, wherein 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.
However, Weng discloses the gap (17) sealed closed by an edge (15) connecting the first panel (1) and the second panel (30).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew with the gap sealed closed by an edge connecting the first panel and the second panel as disclosed by Weng in order to maintain spacing between the first and second panels ([0026] disclosing 15 as a sealing spacer).
In addition, Weng discloses wherein the laser beam ([0033]) has an energy density of from 0.5 J/cm2 to 10 J/cm2 (Claim 32; [0033]) at a location of a marking (150) formed by the laser beam ([0033]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew wherein 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 as disclosed by Weng in order to allow ablation to occur with partial removal but without significant damage to the substrate and without significant haze in the patterned areas ([0033]). In addition, where 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.
In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew with forming the pattern after the gap is sealed in order to allow for creation of markings on an assembled window instead of just glass that may not end up requiring such markings. In addition, selection of the order of performing process steps has been held as within the level of ordinary skill in the art absent new or unexpected results. In re Gibson, 39 F.2d 975.
Re claim 29, Mathew as modified discloses the method of claim 26, wherein the gap (between S2 and S3) is filled with a gas denser than air ([0079] disclosing argon, a gas with denser than air).
Re claim 30, Mathew as modified discloses the method of claim 26, but fails to disclose wherein the gap is comprises a vacuum.
However, Weng discloses wherein the gap (17) comprises a vacuum ([0027]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew wherein the gap is evacuated to produce a vacuum as disclosed by Weng in order to allow increase thermal properties of the window, as evacuated glazings are extreme well-known and common in the art.
Re claim 31, Mathew as modified discloses a method (Fig. 1-4A) of preventing bird collisions (Abstract) with an architectural substrate ([0077] disclosing a building), comprising: installing ([0077] disclosing use with the building) the window (Fig. 4A) of claim 1 (see above) in an opening ([0077] discloses exposing to the outside and inside environments which necessarily requires an opening) of an architectural substrate ([0077] disclosing a building) with the exterior-facing first surface (S1) arranged as an exterior surface ([0077]) of the architectural substrate ([0077] disclosing a building).
Claim(s) 5, 7 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (“Mathew”) (US 2018/0173071) in view of Weng et al (“Weng”) (US 2019/0084874) and Mathew et al (“Mathew 2”) (US 2019/0294016).
Re claim 5 in the alternative, Mathew as modified discloses the window of claim 1, but fails to disclose wherein the abrasions are formed by producing microcracks beneath the first surface.
However, Mathew 2 discloses wherein the abrasions ([0102]) are formed by producing microcracks ([0173]) beneath the first surface (S1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew wherein the abrasions are formed by producing microcracks beneath the first surface as disclosed by Mathew 2 in order to provide optimal “first-surface” effectiveness, maintained visibility and light, and to utilize “green” manufacturing.
The language “formed by removing at least a portion of material of the first surface” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 7 in the alternative, Mathew as modified discloses the window of claim 2, but fails to disclose wherein the laser- induced markings are formed by at least one of the following: a carbon dioxide laser, a yttrium aluminum garnet (YAG) laser, a frequency doubled YAG laser, a fiber laser, a diode laser, an excimer laser, and/or any combination thereof.
However, Mathew 2 discloses wherein the laser-induced markings (Fig. 3AB-3H; [0102]) are formed by at least one of the following: a carbon dioxide laser ([0171]), a yttrium aluminum garnet (YAG) laser ([0171]), a frequency doubled YAG laser, a fiber laser, a diode laser, an excimer laser, and/or any combination thereof.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mathew wherein the laser- induced markings are formed by at least one of the following: a carbon dioxide laser, a yttrium aluminum garnet (YAG) laser, a frequency doubled YAG laser, a fiber laser, a diode laser, an excimer laser, and/or any combination thereof as disclosed by Mathew 2 in order to utilize high-precision, non-contact etching delivering high-contrast marks at high speeds.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (“Mathew”) (US 2018/0173071) in view of Weng et al (“Weng”) (US 2019/0084874) and Agrawal et al (“Agrawal”) (US 2023/0007876).
Re claim 23, Mathew as modified discloses the window of claim 1, but fails to disclose further comprising at least one side light positioned to emit light at a side of the first transparent panel between the first surface and the second surface.
However, Agrawal discloses further comprising at least one side light (13) positioned to emit light (Fig. 1) at a side (of 18/24) of the first transparent panel (18/24) between the first surface and the second surface (Mathew: S1/S2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew with further comprising at least one side light positioned to emit light at a side of the first transparent panel between the first surface and the second surface as disclosed by Agrawal in order to allow more light to enter the building, as sidelites (side lights) are extremely well-known and common in the art.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (“Mathew”) (US 2019/0294016) in view of Weng et al (“Weng”) (US 2019/0084874) and Collins et al (“Collins”) (US 5,664,395).
Re claim 32, Mathew as modified discloses the window of claim 1, but fails to disclose further comprising a pump out tube and a pump out cavity cut out from the second surface and/or the third surface, wherein the pump out tube and the pump out cavity are configured to evacuate the gap after the edge has been formed to seal the gap.
However, Collins discloses further comprising a pump out tube (8) and a pump out cavity (11) cut out from (as this language is product by process) the second surface and/or the third surface (left surface of 2), wherein the pump out tube (8) and the pump out cavity (11) are configured to evacuate (Col 1 lines 26-35) the gap (between 2 and 3) after (Col 1 lines 26-35) the edge (4) has been formed to seal the gap (between 2 and 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the window of Mathew with further comprising a pump out tube and a pump out cavity cut out from the second surface and/or the third surface, wherein the pump out tube and the pump out cavity are configured to evacuate the gap after the edge has been formed to seal the gap as disclosed by Collins in order to provide a low pressure space, providing a thermally insulting glass panel (Abstract).
The language “cut out from the second surface and/or the third surface” and “after the edge has been formed to seal the gap” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Response to Arguments
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 is hereby withdrawn.
Claim Rejections 35 USC 102 and/or 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
At the outset, it is noted that many of Applicant’s arguments are directed to Mathew (US 2019/0294016). This reference is no longer relied upon as a primary reference. However, because the newly relied upon Mathew primary reference is directed to very similar subject matter, Applicant’s arguments will be addressed inasmuch as they apply to the newly relied upon Mathew reference.
Applicant argues that Mathew is directed to forming a patterned layer by etching a pre-patterned layer. Applicant argues that as such, Mathew does not disclose removing a portion of material of the first surface. In essence, Applicant contends Mathew fails to read on claims 1 and 26 because a portion of glass is not removed to create the pattern, and instead, a portion of an additional layer is removed. The Examiner respectfully disagrees.
First, with respect to claim 1, as stated in the previous rejections and in the above, the language about which Applicant argues is considered product by process. The determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985). In addition, the claim recites, “a first transparent panel comprising…a first surface….to remove at least a portion of material of the first surface.” The claim does not require removing a portion of glass material. It requires that the panel has a first surface and that a portion of that surface is removed. It does not require that the first surface is the surface of the panel, nor does it preclude a surface being attached to or disposed on the panel to constitute the first surface. The pre-patterned layer may constitute the first surface. In any event, the newly relied upon Mathew reference discloses laser etching the glass.
Second, regarding claim 26, the claim language recites, “a first transparent panel comprising an exterior-facing first surface…forming a pattern at the first surface” (emphasis added). Similarly to claim 1, it does not require that the first surface is the surface of the panel, nor does it preclude a surface being attached to or disposed on the panel to constitute the first surface. The pre-patterned layer of Mathew is “at” the first surface. In any event, the newly relied upon Mathew reference discloses laser etching the glass.
With respect to Weng, Applicant argues that Weng partially removes a UV coating but not the underlying glass. However, Weng is not relied upon as disclosing this feature. The remainder of Applicant’s arguments concern the McCamy Declaration which will be addressed below.
Declaration: At the outset, the McCamy Declaration is made by James McCamy. James McCamy is a named inventor in the present Application. An affidavit of an applicant as to the advantages of their claimed invention, while less persuasive than that of a disinterested person, cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA 1953). However, it is noted the James McCamy is an interested party in the present Application and thus, the, Declaration is less persuasive.
The Declaration, in points 9-11, asserts generally that laser marking multi-panel windows after the gap is sealed is complex. It states that forming markings on the window after the gap is sealed allows for more efficient formation of windows. It states that the ability to laser mark pre-produced windows was unexpected. Point 12 asserts that, due to stresses in VIG units, a person of ordinary skill would expect the glass to fail during laser marking. Point 13 asserts that the claimed energy density is sufficient for laser marking without damage. Point 14 asserts examples of how the inventors utilized the claimed invention on four VIG units.
As noted in the above, with respect to claim 1, the claim language about which Declaration argues is considered product by process. The determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985). In addition, the claim recites, “a first transparent panel comprising…a first surface….to remove at least a portion of material of the first surface.” The claim does not require removing a portion of glass material. It requires that the panel has a first surface and that a portion of that surface is removed. It does not require that the first surface is the surface of the panel, nor does it preclude a surface being attached to or disposed on the panel to constitute the first surface. The pre-patterned layer may constitute the first surface. In any event, the newly relied upon Mathew reference discloses laser etching the glass.
As noted in the above, with respect to claim 26, the claim language recites, “a first transparent panel comprising an exterior-facing first surface…forming a pattern at the first surface” (emphasis added). Similarly to claim 1, it does not require that the first surface is the surface of the panel, nor does it preclude a surface being attached to or disposed on the panel to constitute the first surface. The pre-patterned layer of Mathew is “at” the first surface. In any event, the newly relied upon Mathew reference discloses laser etching the glass.
Finally, with respect to laser marking after sealing the gap, the previous rejection and the above note that such an order of process allows for creation of markings on an assembled window instead of just glass that may not end up requiring such markings. In other words, a person of ordinary skill could (and would) produce windows at a large scale, and only mark the ones that are desired to be marked. Sealing VIG units closed prior to finishing is common sense. Other forms of finishing are done post assembly, post sealing, including addition aesthetic features and properties. For example, glass may be readily “frosted” after assembly, even post installation. Even if the art doesn’t specifically contemplate sealing prior to laser etching specifically, such a decision is well within the level of ordinary skill in the art. Doing so would result in the benefits explained above.
Due in part to James McCamy being an interested party, and in part to the above explanation, the Declaration is insufficient to overcome the rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
Prosecution Insights