DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 in the reply filed on 11/17/2025 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
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.
Claims 1-8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sternchuss et al. (US 20160002098).
Sternchuss discloses a substrate coated with a low-E multilayer coating. Concerning claims 1-4, 8, and 11-14, Sternchuss discloses a coated substrate (FIG. 2; para. 0012-0135) comprising a substrate and a coating comprising a silicon nitride layer (element 9) (i.e. first underlayer), a silica layer (element 8) (i.e. second underlayer), a transparent conductive oxide layer (elements 2 and 3), and an intermediate layer (element 4) formed from silicon nitride or a zinc tin oxide embedded in the TCO layer, wherein the TCO layer is an ITO. With respect to the thickness of the embedded film, Sternchuss discloses the thickness of each intermediate layer is from 2 to 30 nm (para. 0034). Examiner notes that the materials of the layers is/are the same as that disclosed in the specification and as such, would have the claimed refractive index relationship between the layers and sheet resistance.
Concerning claim 5, the sum total of the thickness of the TCO layers is 40 to 200 nm, wherein each TCO layer can have a thickness that overlaps and includes the claimed ranges (para. 0020-0022). With respect to claim 6, the TCO layers are each ITO (para. 0012-0023). Regarding claim 7, as shown in Figure 2, if the TCO layer is considered elements 2 and 3, the intermediate film is approximately in the middle. Regarding claim 10, as shown in Figure 2, the underlayer is disposed directly onto the substrate.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sternchuss et al. (US 20160002098) as applied to claim 1 above, and further in view of Molle et al. (US 20060246321).
Sternchuss discloses the above, including a protective coating comprising a first layer of silica (FIG. 2; element 7) and a layer of titanium dioxide (element 10; para. 0115-0117). However, Sternchuss is silent to the layer of titanium dioxide further including alumina.
Molle discloses a mixed oxide layer titania and alumina, wherein the addition of alumina provides higher structural and thermal stability (para. 0008-0012). As such, for increased structural and thermal stability, one of ordinary skill in the art would have been motivated to have the protective layer of Sternchuss be a mixed oxide of aluminum oxide and titanium dioxide.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10650935. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a transparent conductive oxide having an embedded film with the same structure. While it is noted that the ‘935 claims disclose the first underlayer comprising zinc, this would still read on the instant claims because the present claims are broader than those of the ‘935 patent. Further, the thickness values and sheet resistance would be met by the ‘935 claims since the coated article has the same materials and it would have been obvious to one of ordinary skill in the art to have the claimed thickness values in order to meet the refractive index relationship.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11881326. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a transparent conductive oxide having an embedded film with the same structure. While it is noted that the ‘326 claims are silent to the sheet resistance and thickness of the TCO layers, it would have been obvious to one of ordinary skill in the art to have the claimed thickness values in order to meet the refractive index relationship.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783