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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 9 and 10 are rejected for including a broad range together with a narrow range. Specifically, the ranges of claims 9 and 10 allow for redox values of up to 0.32 and 0.25 which is broader than claim 1 from which they depend which requires a maximum of 0.186.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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) 1-7, 9-16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelestak (USPN 6,413,893) or alternatively, in further view of either one of (USPub20030083188) or (USPub20020164487).
Regarding claims 1, 4-6, 9-16: Shelestak teaches a glass that can comprise the following.
SiO2
66-75 wt% (Col. 2, lines 35-42)
Na2O
10-20 wt% (Col. 2, lines 35-42)
CaO
5-15 wt% (Col. 2, lines 35-42)
MgO
0-5 wt% (Col. 2, lines 35-42)
Al2O3
0-5 wt% (Col. 2, lines 35-42)
K2O
0-3 wt% (Col. 2, lines 35-42)
SO3
None disclosed (i.e. 0wt%)
Total iron (Fe2O3)
(see total referred to as Fe2O3 in Col. 3, lines 13-15)
0.5-4 wt% (Col. 17, lines 10-13)
CoO
40-500 PPM (i.e. 0.004-0.05wt%) (Col. 17, lines 10-13)
Cr2O3
15-800PPM (i.e. 0.0015-0.08wt%) (Col. 17, lines 10-13)
CuO
0-2wt% can be added with a reduction in the CoO of 1ppm for every 6ppm CuO to be added (Col. 18, line 65-67 bridged to Col. 19, lines 1-5)
redox ratio
“about” 0.2-0.4 (Col. 17, lines 18-20)
Selenium
5-70PPM (i.e. 0.0005-0.007wt%) (Col. 17, lines 10-13)
TiO2
0.02-1wt% (Col. 17, lines 10-13)
Note that the above ranges for the individual oxides and selenium all overlap with the compositions claimed (MPEP 2144.05).
Regarding the redox ratio, given that the language “about” in Shelestak’s about 0.2-0.4 range allows for values slightly outside the range (i.e. 0.186 is slightly outside 0.2) (In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)), Shelestak’s range is considered to overlap the range claimed (MPEP 2144.05).
Alternatively, in the instance Applicants argue against overlap, note that values allowed for by Shelestak’s “about” 0.2 language would, at the very least, be considered so close to the claimed 0.186 end point to render it obvious Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Alternatively, it is additionally noted for the record that while Shelestak may mention that the redox of their glasses are about 0.2 to 0.4, redox is based on the concentration of FeO in relation to total concentration of Fe2O3 and note that general differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (MPEP 2144.05).
In the instant case, while Shelestak may mention that the redox ratio of their glasses are maintained between about 0.2 to 0.4, Shelestak never explicitly teach away from the possibility of using other redox ratios if desired but additionally note that their glasses are that of green glass having IR absorption (see entire document).
As ‘188 and ‘487, who each similarly teach green glass having IR absorption, not only describe redox ratio in such glasses as a result effective variable which alters heat ray absorptivity (see 0062 and 0074 in ‘188 and 0045 in ‘487), visible transmittance, color, etc. (0046 in ‘487) but suggest that a ratio of 0.15-0.5 is suitable for sufficient heat ray absorptivity (0074 in ‘188 and 0045 in ‘487) while also keeping the color from turning bluish, etc. (0046 in ‘487), it would have been obvious to one having ordinary skill at the time of invention to not only optimize the redox ratio in Shelestak as desired for heat ray absorptivity, color, etc. but additionally to use a ratio of 0.15-0.5 as desired for sufficient heat ray absorptivity, controlling the color from turning bluish, etc.
Regarding claim 2: Given that the glass has a composition meeting that claimed, it would be expected to provide for the claimed properties (MPEP 2112).
Alternatively, Shelestak does teach that their glass can be made to have visible light transmission of up to 60% (see Col. 17, lines 8-10) at thicknesses of 1.8-5mm (Col. 18, lines 33-36) wherein transmission is measured via CIE Illum “A” across wavelengths of 380 to 770nm (see Col. 4, lines 20-23) overlapping all the requirements claimed (MPEP 2144.05).
It is noted for clarity of record that in the instance Applicants attempt to argue that “up to 60%” is much too broad to render obvious the more limited range of greater than 0 to 8 %, note that not only does the “up to 60%” overlap the claimed range but Shelestak’s Examples (for instance see Examples 1-20 in Table 1) provide additional suggestion that transmissions (LTA) falling within 0-8% are within the scope of their invention and encompassed by their “up to 60%” range.
Regarding claim 3: Given that the glass’ composition meets that claimed, it would be expected to provide for the claimed properties (MPEP 2112).
Regarding claim 7: Shelestak does suggest throughout that their glass can be used as a vehicle transparency, etc. (see for instance, Col. 18, lines 35-40).
Regarding claim 19: Shelestak suggests their glasses being used to form a laminate wherein multiple plies of glass will be laminated together using a PVB adhesive (see for instance, Col. 18, lines 38-40).
Claim(s) 8, 17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shelestak (USPN 6,413,893) as applied to claims 1 and 19 above, in view of any one of USPN7,943,246, USPub20210122145, USPub20200384739 or USPub20040028953).
Regarding claims 8, 17 and 20: While Shelestak may not disclose the glass having a coating as claimed, they do not exclude such a coating and instead, only generally teach glass to be used in vehicle glazings, laminates, etc.
As ‘246, ‘145, ‘739 and ‘953, who each similarly teach glass to be used in vehicle glazings and laminates, teach that it is desirable in the art to apply a low e coating on the glass (see entire document or ‘246; 0082 in ‘145; 0028 in ‘739 and 0023-0029 in ‘953) or even a low e coating and solar control coating on the glass with placement of such coating on surface 2 or 3 of the laminate (see 0062-0066 and 0082 in ‘145; 0065-0065 in ‘739 and 0023-0029 in ‘953), it would have been obvious to one having ordinary skill at the time of invention to modify Shelestak to include a low e coating or solar control coating on their glass, including placement on surface 2 or 3 in a laminate, for low e properties and/or solar control.
Response to Arguments
Applicant's arguments filed July 28, 2026 have been fully considered but they are not persuasive.
In summary, Applicants argue that Shelestak no longer meets the claimed invention because Shelestak requires a redox to fall between 0.2 and 0.4 and Shelestak’s Examples all fall between 0.2 and 0.4 but this is not persuasive.
Initially note that Shelestak actually teaches “about 0.2 to 0.4” and given that the language “about” allows for values slightly outside the range (i.e. 0.186) (In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)), Shelestak’s range is still considered to overlap the range claimed (MPEP 2144.05). Alternatively, in the instance Applicants argue against the overlap, note that Shelestak’s “about 0.2” would, at the very least, be considered so close to the claimed 0.186 end point to render it obvious Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding the argument concerning the Examples all falling between 0.2and 0.4, this is not persuasive because it has been held by the courts that a reference is not limited to their examples but instead what it teaches as a whole. In the instant case, while Shelestak’s Examples may not meet the claimed invention, as mentioned above the reference as a whole does teach a range which is considered to overlap or at the very least, be so close to the claimed range to render it obvious.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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