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 Arguments
Applicant’s arguments filed 04/28/2026 have been considered; but they are not persuasive.
On page 9, Applicant argues that,
The Office Action Improperly Conflates Two Distinct, Structurally Unrelated Embodiments of Fukuda Without Articulating Any Reason or Reasonable Expectation of Success for the Proposed Substitution in the Windshield Embodiment
Fukuda discloses two distinct embodiments. The first embodiment (Figures 1-4) describes a camera unit 10 mounted to the inner cabin face of a windshield 1, in which a heater 11 is provided. Fukuda is unambiguous about the composition of heater 11: per paragraph [0037], "the heater 11 has a carbon nanotube 111 and a binder 112," and per paragraphs [0038]-[0040], the heater 11 "is a thin film in which the carbon nanotubes 111 are dispersed in the binder 112."
In response, Examiner respectfully disagrees and submits that the two embodiments disclose two infrared camera assemblies for performing similar functions with similar structures.
Assembly in Fig. 1 of Fukuda
Assembly in Fig. 5 of Fukuda
Element 1 (windshield)
Heat insulting portion 3 a heat insulating function between the inner glass 2 and the windshield 1 so as to suppress fogging on a portion of the inner glass 2 through which the electromagnetic wave passes (see [0057])
Inner glass 2 (made of glass)
Heater 11 (carbon nanotubes) ([0040])
Element 203a (made of resin -see [0065]),
Heat insulting portion 203c so as to suppress fogging on a portion of the inner cover 203b through which the laser beam used by the laser transmitter 201 passes (see [0066]))
Inner cover 203b (made of resin)
Heater 21 (carbon nanotubes or indium tin oxide (see [0093])
As the comparison above clearly shows, besides the shapes are different, there are some slight differences in materials used for each of the elements.
The Office Action proposes to incorporate indium tin oxide as in heater 21 into the heater 11.
Fukuda clearly teaches either carbon nanotubes or indium tin oxide can be used for heater 21. Fukuda also discloses the heater 21 is disposed on inner cover 203b, which is made of resin.
Fukuda teaches heater 11 is made of carbon nanotubes disposed on binder 112 made of resin (see [0039]) while silent on whether it may be made of indium tin oxide.
Comparing the materials used (resin), indium tin oxide can be used in place of carbon nanotubes, and for the same functions (to suppress fogging on a portion of the inner cover 203b in the second embodiment and of the inner glass 2 in the first embodiment), Examiner respectfully submits that incorporating indium tin oxide into the heater 11 with high expectation of success and good motivations, which makes the assembly in the first embodiment advantageous due to superior conductivity and lower cost provided by using indium tin oxide for the purpose (see Thirumoorthi 1. Introduction for support).
On pages 10-11, Applicant further argues that,
[…]
By its express terms, paragraph [0098] is limited to "the second embodiment" and to "the heater 21" mounted on the resin inner cover 203b of the bumper-mounted laser device. Fukuda does not disclose, teach, or suggest substituting indium tin oxide for the carbon-nanotube heater 11 of the first embodiment, i.e., the windshield-related embodiment, anywhere in the disclosure. The Office Action concedes this when it states (page 3, second paragraph) that "in the embodiment, Fukuda does not disclose the heating layer is a transparent conductive oxide comprising an indium oxide and another metal" in connection with the windshield embodiment.
The Office Action attempts to bridge that admitted gap by stating (page 3, fourth paragraph) that:
"One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Fukuda in the second embodiment into the glazed unit of the first embodiment since indium tin oxide has superior conductivity and lower cost than carbon nanotubes."
This rationale is conclusory and legally insufficient. Per MPEP 2143(I)(B), simple substitution of one known element for another to obtain predictable results requires, among other things, 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." Per MPEP 2143.02, the Examiner must further articulate why one skilled in the art would have had a reasonable expectation of success in making the proposed substitution.
Here, the Office Action provides neither reasoned articulation nor any showing of reasonable expectation of success. Specifically:
First, the Office Action provides no record evidence for the assertion that indium tin oxide has "superior conductivity and lower cost than carbon nanotubes." That bare assertion is conclusory and is itself insufficient to support a prima facie case.
In response, Examiner respectfully disagrees and submits that Examiner respectfully direct Applicant to Thirumoorthi, 1. Introduction for support.
On pages 11-12, Applicant further argues that,
Second, even crediting the bare assertion arguendo, the Office Action does not explain why a skilled artisan would import the indium tin oxide of paragraph [0098] - disclosed only for the heater 21 on the resin cover 203b of a bumper-mounted laser device - into the structurally and functionally distinct first embodiment of Fukuda. The two embodiments differ in (i) the host substrate (a glass windshield VS. a resin cover, [0065]); (ii) the location on the vehicle (cabin glazing vs. bumper); (iii) the surrounding architecture (camera unit 10 with double-pane heat- insulating gap 3 VS. closed-cavity housing 202 with heat-insulating portion 203c); and (iv) the operational regime (a transparent film for visible-light camera VS. a transparent film for laser optical path, paragraphs [0070]-[0073]). Fukuda nowhere bridges these embodiments; on the contrary, paragraph [0098] expressly confines the indium-tin-oxide alternative to "the heater 21" of the second embodiment.
In response, Examiner respectfully disagrees for the reasons set forth in the comparison of the two embodiments discussed above. Specifically, the two assemblies are similar in structure and slightly different materials in irrelevant elements while the same materials used in relevant elements, i.e. the heaters in both embodiments are disposed on resin. The location of vehicle does not matter since the two assemblies performing the same functionality as discussed above.
On pages 11-12, Applicant argues that,
Third, the Office Action makes no finding regarding reasonable expectation of success for replacing the carbon-nanotube heater 11 on the windshield with indium tin oxide. There is no teaching anywhere in Fukuda that the substrate, mounting, defogging, or optical performance of the windshield-based heater 11 would be preserved if its carbon-nanotube/binder thin-film were replaced with an indium-tin-oxide thin film. Per MPEP 2143.02.II, "Obviousness does not require absolute predictability, however, at least some degree of predictability is required." The Office Action makes no such showing.
In short, the Office Action treats the two embodiments of Fukuda as freely interchangeable and lifts the indium-tin-oxide disclosure of paragraph [0098] from its limited bumper-/laser-cover context into the windshield context without articulated reasoning. This is precisely the type of unsupported combination forbidden by KSR. See KSR, 550 U.S. at 418 ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); MPEP 2143.
In response, Examiner respectfully disagrees for the reasons set forth in the comparison of the two embodiments discussed above.
On pages 12-13, Applicant argues that,
The "Total Infrared Transmission of at Least 70% at the Working Wavelength" Recitation Is Entirely Missing from Fukuda; Paragraph [0070] Pertains to the Wrong Embodiment
[…]
On its face, paragraph [0070] does not satisfy the claim limitation for at least the following independent reasons.
First, paragraph [0070] is part of Fukuda's second embodiment - the bumper-mounted laser device 20. It has nothing to do with a vehicle glazing or windshield. Indeed, the immediately preceding paragraph [0069] confirms that the "heater 21" referred to in paragraph [0070] "has carbon nanotubes and a binder." Paragraph [0070] therefore reports the transparency of a carbon-nanotube heater on a resin laser-device cover, not the transparency of an indium- tin-oxide heater (and certainly not a Mo- or Ti-doped In203 heater) on a vehicle glazing.
In response, Examiner respectfully disagrees for the reasons discussed above. Specifically, when incorporating the indium tin oxide into the heater 11 of first embodiment, the teachings of Fukuda in paragraph ]0070] is relevant.
On page 13, Applicant further argues that,
Second, the limitation of claim 1 is directed to the total infrared transmission of the vehicle glazed unit with the heating layer in place - i.e., an end-to-end optical-transmission property of the assembly. Paragraph [0070], by contrast, reports only the "transparency of the heater 21" - a film-only metric that does not include the substrate, lamination interlayer, second glass sheet, or other elements of a vehicle glazing. The two metrics are not equivalent. See MPEP 2143.03 (all claim limitations must be considered).
In response, Examiner respectfully disagrees and submits that claim does not clearly define “total infrared transmission”, there is no “end-to-end optical-transmission property of the assembly” being recited. The claim also does not specify “end-to-end” as from which end to which end, etc. As such, one way of interpreting the limitation of “a total infrared transmission” of the vehicle glazed unit is: sum of component infrared transmissions. Specifically, based on the structure of the glazed unit shown in Fig. 2 of Fukuda, the total infrared transmission of the vehicle glazed unit is: infrared transmission of windshield 1 + infrared transmission of heat insulating portion 3 + infrared transmission of inner glass 2 + infrared transmission of heater 11.
Since the infrared transmission of heater 11 alone is about 95%, and each of other component infrared transmission is at least non-negative, the total infrared transmission is at least about 95%.
On pages 13-14, Applicant further argues that,
Third, paragraph [0070] does not concern an indium-tin-oxide layer at all, much less a transparent conductive oxide comprising indium oxide and Mo or Ti as required by claim 1. It cannot supply a transmission datum for a layer composition it does not describe.
The Office Action's reliance on paragraph [0070] therefore commingles disclosures from the second (laser/bumper) embodiment with the proposed combination directed to the first (windshield) embodiment, in the same impermissible manner addressed above. The cited art contains no disclosure that the assembled vehicle glazed unit - with a heating layer comprising indium oxide and Mo or Ti in place - has a total infrared transmission of at least 70% at the working wavelength. That limitation of claim 1 is therefore entirely missing from the cited art.
In response, Examiner respectfully disagrees and submits that paragraph [0070] teaches in the infrared transmission zone with the heater 21, a total infrared transmission of about 95% is achieved. In [0098], Fukuda teaches the heater 21 is indium tin oxide. One of ordinary skill in the art before the claimed invention was made would have recognized that with such a heater being incorporated into the first embodiment, the same total transmission is achieved.
On pages 14-16, Applicant argues that,
Newhouse Affirmatively Motivates Away from Mo or Ti Doping; the Examiner's
Quoted Rationale Is, in Context, the Rationale for W-Doping
Newhouse is an Applied Physics Letters paper titled "High electron mobility W-doped In₂O₃ thin films by pulsed laser deposition." As the title indicates, Newhouse's experimental teaching is directed exclusively to W-doped In203 ("IWO"). Newhouse reports that, for IWO films optimized at xfilm of about 0.03 (col. 2), room-temperature mobilities of 104 cm2/Vs (on fused SiO2) and 112 cm2/Vs (on YSZ) are achieved (col. 2) - mobility figures that the paper explicitly contrasts with the substantially lower mobilities of Ti-, Ta-, and Zr-doped In203 reported in the prior art.
The Office Action cites Newhouse for the asserted teaching of "a transparent conductive oxide comprising an indium oxide and another metal chosen from molybdenum and titanium (page 1 - metal doping of In203 using Mo or Ti)." The motivation, as articulated in the Office Action, is:
"to optimize electrical conductivity, thereby averting transparency losses from free-carrier absorption (Newhouse: first paragraph, last four lines).”
Respectfully, this citation is improper because the Office Action's quoted rationale, read in context, is not a rationale for using Mo or Ti at all; instead, it is the rationale for choosing high-mobility W-doping (the very subject of Newhouse). Specifically, the four-line passage appears at the end of the introduction in which Newhouse identifies high-mobility dopants (Mo and W) as the preferred route for averting free-carrier absorption losses, and then announces that the Newhouse paper itself will report on the W-doped system. The closing sentence of the same paragraph reads:
"Here we report transport, structure, and compositional measurements on W- doped In203 thin films (IWO) fabricated by pulsed laser deposition. We show that W is an effective dopant for realizing a high mobility transparent conducting oxide (TCO)." (Newhouse, page 1, first paragraph)
In other words, the Office has lifted the four-line motivational rationale from a paragraph that motivates W-doping and re-deployed it to motivate Mo or Ti doping. That is the opposite of
what Newhouse teaches. Therefore, the cited motivational rationale does not, in fact, motivate the proposed combination. A reference cannot supply a motivation it does not contain. The four- line passage relied on by the Office motivates W-doping, not Mo or Ti doping. See MPEP 2143(I) ("the key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious"); In re Kahn, 441 F.3d 977, 988.
Accordingly, Newhouse does not supply the missing limitation "another metal chosen from molybdenum and titanium" required by claim 1, and the asserted motivation "to optimize electrical conductivity" fails as a matter of law.
Therefore, for at least the foregoing reasons, claim 1 is patentable over the combination of Fukuda and Newhouse.
In response, Examiner respectfully disagrees and submits that the Office Action clearly states “[o]ne of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Newhouse into the glazed unit to optimize electrical conductivity, thereby averting transparency losses from free-carrier absorption”.
In other words “averting transparency losses from free-carrier absorption” is a result of optimizing electrical conductivity, which is a result of “increased carrier mobility”. Regarding “carrier mobility”, Newhouse in the cited portion, states “exhibiting exceptional carrier mobility” if Mo is chosen as the dopant (emphasis added). Examiner respectfully submits that “exhibiting exceptional carrier mobility” leads to optimized electrical conductivity, which in turns leads to averting transparency losses from free-carrier absorption as stated in the motivation.
Applicant’s arguments are therefore not persuasive.
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, 4, 7, 10, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 2020/0391698 A1 – hereinafter Fukuda) and Newhouse et al. (High electron mobility W-doped In2O3 thin films by pulsed laser deposition, Applied Physics Letters 87, 112108 (2005) – hereinafter Newhouse, provided by Applicant in IDS 01/20/2026).
Regarding claim 1, Fukuda discloses a vehicle glazed unit (Fig. 2), comprising: a first glass sheet forming an outer glazing with a first external main face oriented towards an exterior environment of a vehicle and a second internal main face oriented towards a passenger compartment of the vehicle (Fig. 2; [0029]-[0031] – glass sheet of windshield 1 or inner glass 2), at least one first zone that forms an infrared transmission zone transparent to a working wavelength in the infrared in a range from 800 nm to 1800 nm (Fig. 2; [0093] – the zone in front of the camera, in one embodiment, is infrared transmission zone so that infrared light can be captured by infrared camera 100), wherein, in said infrared transmission zone, the glazed unit comprises, opposite the first external main face, a heating coating comprising a heating layer made of an electrically conductive material which is transparent to said working wavelength (Fig. 2; [0036]-[0037]; [0043] – heater 11 is transparent to infrared camera 100).
However, in the embodiment, Fukuda does not disclose the heating layer is a transparent conductive oxide comprising an indium oxide and another metal chosen from molybdenum and titanium, and wherein in the infrared transmission zone with the heating layer, the vehicle glazed unit has a total infrared transmission of at least 70% at the working wavelength.
In another embodiment, Fukuda discloses a heating layer is a transparent conductive oxide comprising an indium oxide and another metal ([0093] - indium tin oxide), wherein in an infrared transmission zone with a heating layer ([0063] – transmission zone of near-infrared wavelength), a vehicle glazed unit has a total infrared transmission of at least 70% at a working wavelength of infrared light ([0070]).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Fukuda in the second embodiment into the glazed unit of the first embodiment since indium tin oxide has superior conductivity and lower cost than carbon nanotubes.
Fukuda does not disclose another metal chosen from molybdenum and titanium.
Newhouse discloses a transparent conductive oxide comprising an indium oxide and another metal chosen from molybdenum and titanium (page 1 – metal doping of In2O3 using Mo or Ti).
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate the teachings of Newhouse into the glazed unit to optimize electrical conductivity, thereby averting transparency losses from free-carrier absorption (Newhouse: first paragraph, last four lines).
Regarding claim 4, see the teachings of Fukuda and Newhouse as discussed in claim 1 above, in which Newhouse in view of Fukuda also discloses for the heating layer, a percentage by weight of indium oxide is at least 90% of a total weight of the transparent conductive oxide (page 3, third paragraph – doping level of 2 wt % of Mo, thus a percentage by weight of indium oxide is 98%).
The motivation for incorporating the teachings of Newhouse into the glazed unit has been discussed in claim 1 above.
Regarding claim 7, Fukuda also discloses the heating coating comprises a stack of layers as follows: at least one underlayer of oxy and/or metal or silicon nitride underlying the heating layer, and/or at least one overlayer of oxy and/or metal or silicon nitride on the heating layer ([0080] – at least one underlayer of air, i.e. including oxy).
Regarding claim 10, Fukuda also discloses the heating layer extends to cover another transmission zone adjacent to said infrared transmission zone ([0093] – at least extending to cover a visible light transmission zone).
Regarding claim 20, Fukuda and Newhouse disclose a device, comprising: said vehicle glazed unit according to claim 1 (see discussion of claim 1 above), and an infrared detection system at the working wavelength in the infrared (Fukuda: Fig. 2; [0093] – camera 100, in one embodiment, captures light in working wavelength in the infrared), arranged in the passenger compartment and comprising a transmitter and/or receiver, so as to transmit and/or receive radiation passing through the first glass sheet at the infrared transmission zone (Fukuda: Figs. 1-2 – at least receiver to receive radiation passing through the first glass sheet at the infrared transmission zone to capture infrared light).
Regarding claim 21, Fukuda in view of Newhouse also discloses the device according to claim 20, wherein the infrared detection system is a LIDAR or a near-infrared camera ([0063]; [0093]).
Allowable Subject Matter
Claims 5-6 and 17-19 are allowed.
Claims 2-3, 8-9, and 11-16 are 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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUNG Q DANG whose telephone number is (571)270-1116. The examiner can normally be reached IFT.
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/HUNG Q DANG/Primary Examiner, Art Unit 2484
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