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 .
Election/Restrictions
Claims 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.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 May 21, 2026.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/627756 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims completely encompass that of the copending Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, note that the copending Application issues tomorrow (7/14/26) as US Patent No 12,679,072 so once patented, the current rejection will be changes to nonprovisional.
Allowable Subject Matter
Claims 1-9 would be allowable upon the filing of an eTD over the copending Application 18/627756 discussed above.
The following is a statement of reasons for the indication of allowable subject matter: While the prior art of record (see notice of references cited as well as IDS) may disclose window glass comprising a glass plate coated with layers similar to that claimed, for reasons similar to that in the notice of allowance in related Patent Application 18/627756, the prior art simply does not teach or render obvious a ceramic color layer in the periphery of the first main surface of the glass with an organic ink layer covering at least a region on the ceramic layer in the periphery with the thickness of the organic ink layer being smaller than the ceramic color layer.
Note that while the ISR for the parent PCT/JP2022037021 of the present Application attempted to assert that the D1 reference therein (note USPub20200391577 is the corresponding English equivalent) teaches the features of the claim, upon close review of ‘577, this is not the case. While the Examiner does agree that ‘577 is the closes prior art of record wherein it does teach a window glass comprising a glass plate 205 with an opaque enamel 203 (ceramic color layer) in the periphery on the first main surface of the glass with a darkening source 221 covering a region of the enamel (see Fig 2(b)) wherein organic ink can be chosen as the darkening source 221 (0061), the art does not teach or render obvious making such an organic ink thickness less than that of the enamel as would be required by the claims.
Specifically, while the ISR does accurately point out that ‘577 does teach the opaque enamel having a thickness of 0.003-0.02mm (0050), the ISR incorrectly asserted the organic ink having a thickness of 0.01-0.2mm to meet the claim limitation.
Initially, note for the record that ‘577’s disclosure of 0.01-0.2mm thickness is related to ‘577’s embodiment wherein the darkening source material chosen is a polymer sticker (see 0069) and not an organic ink which is an alternative embodiment material (0054, 0061). There is simply nothing in the reference that discloses or suggests what the thickness should be if the darkening source material is instead that of the organic ink.
Additionally, even if one attempted to argue that it would have been obvious to make the organic ink the same thickness as that used for a polymer sticker, the thickness relationship between that of the organic ink and ceramic color layer would still not be rendered obvious. At best, one skilled in the art would only have suggestion to make the opaque enamel have a thickness of 0.003-0.02mm with the organic ink having a thickness of 0.01-0.2mm. While one skilled in the art may attempt to then argue that the individual ranges would allow for a relationship wherein the ink can be less thick than the ceramic layer, this would be considered unreasonable. Initially, note that regardless of whether or not the individual ranges may possibly allow for a relationship wherein the organic ink is smaller thickness than that of the ceramic layer does not necessarily render the relationship obvious when a references ranges are so broad to encompass large number of possibilities especially with most of the possibilities allowed for by the ranges indicates preference being outside of, and therefore leading away from, that required by the claim (See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994)).
For example, note that with an enamel (ceramic layer) having a thickness of 0.003-0.02mm and an ink having a thickness of 0.01-0.2mm, essentially all of the relationships allowed for by these ranges would actually result in the ink being thicker than that of the enamel and not thinner as required by the claims. Note that using these ranges, the only time the ink would be said to be thinner would be if the ink had its most minimum thickness of 0.01mm with the enamel having its maximum thickness of 0.02mm and a single point in a large number of possibilities with most of the possibilities leading away from that required by the claim would not be considered enough to render obvious the subject matter.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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