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
Applicant's election with traverse of Group I and in that Group, Species b (Claims 1, 4, 6-13 and 20-23) in the reply filed on April 8, 2026 is acknowledged
Claims 2-3, 5, and 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Groups and Species, there being no allowable generic or linking claim.
The traversal arguments are summarized below.
Regarding Groups I and II, Applicants argue that the Office has not
adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP 806.05(j). Specifically, the Office has not shown mutual exclusivity or a lack of a distinct capability of use together or substantially different design, mode of operation, function or effect and have provided no examples to support their determination.
This is not persuasive. Note that the restriction requirement stated the
following.
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Regarding Applicants argument that the Office has not shown lack of a distinct capability of use together or substantially different design, mode of operation, function or effect, the Office clearly indicated by way of Example, not just a conclusionary statement, that the inventions do have a materially different design thereby meeting (C). Note for the record that the “or” language in (C) only requires one of lack of a distinct capability of use together or substantially different design, mode of operation, function or effect requirements to be met but not all. In the instant case, the Office indicated the materially different design alternative and thereby, (C) is met.
Regarding the argument that the Office has not shown mutual exclusivity, the Office clearly noted that the inventions do not encompass overlapping subject matter in view of the heat treatments being completely different. As such (A) is met.
Finally, regarding (B), the Office noted that there is nothing of record to show the inventions being obvious variants and therefore, (B) is also met.
Regarding Groups I and III, Applicants similarly argue that the Office has not
adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP 806.05(j). Specifically, the Office has not shown mutual exclusivity or a lack of a distinct capability of use together or substantially different design, mode of operation, function or effect and have provided no examples to support their determination.
This is not persuasive. Note that the restriction requirement stated the
following.
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Regarding Applicants argument that the Office has not shown lack of a distinct capability of use together or substantially different design, mode of operation, function or effect, the Office clearly indicated by way of Example, not just a conclusionary statement, that the inventions do have a materially different design thereby meeting (C). Note for the record that the “or” language in (C) only requires one of lack of a distinct capability of use together or substantially different design, mode of operation, function or effect requirements to be met but not all. In the instant case, the Office indicated the materially different design alternative and thereby, (C) is met.
Regarding the argument that the Office has not shown mutual exclusivity, the Office clearly noted that the inventions do not encompass overlapping subject matter in view of the heat treatments being completely different. As such (A) is met.
Finally, regarding (B), the Office noted that there is nothing of record to show the inventions being obvious variants and therefore, (B) is also met.
Regarding Groups II and III, Applicants similarly argue that the Office has not
adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP 806.05(j). Specifically, the Office has not shown mutual exclusivity or a lack of a distinct capability of use together or substantially different design, mode of operation, function or effect and have provided no examples to support their determination.
This is not persuasive. Note that the restriction requirement stated the
following.
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Regarding Applicants argument that the Office has not shown lack of a distinct capability of use together or substantially different design, mode of operation, function or effect, the Office clearly indicated by way of Example, not just a conclusionary statement, that the inventions do have a materially different design thereby meeting (C). Note for the record that the “or” language in (C) only requires one of lack of a distinct capability of use together or substantially different design, mode of operation, function or effect requirements to be met but not all. In the instant case, the Office indicated the materially different design alternative and thereby, (C) is met.
Regarding the argument that the Office has not shown mutual exclusivity, the Office clearly noted that the inventions do not encompass overlapping subject matter in view of the heat treatments being completely different. As such (A) is met.
Finally, regarding (B), the Office noted that there is nothing of record to show the inventions being obvious variants and therefore, (B) is also met.
Regarding the relationships of Groups, I and IV, II and IV and III and IV,
Applicants similarly argue that the Office has not adequately demonstrated any of the indications of distinctness (A), (B), or (C) listed in MPEP 806.05(j) but merely states a conclusion with no Examples.
This is not persuasive. Note that the restriction requirement stated the
following.
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Note for the record that intermediate products and a final product can be shown to be distinct inventions if the intermediate and final products are mutually exclusive inventions (not overlapping in scope) that are not obvious variants, and the intermediate product as claimed is useful to make something other than the final product as claimed.
In the instant case, the Office clearly indicated by way of Example, not just a conclusionary statement, that the intermediate products of Groups I, II and III are each deemed useful to make flat glass which is different from being used to make bent glass as required by Group IV which meets one of the two criteria and the Office clearly indicated that there is nothing to show them to be obvious variants/overlap in scope and as such, the second requirement is met.
It is noted for the record that as discussed, the intermediate glass can be that of flat glass, however, in Group IV, note that the act of bending will alter not only be altering the physical appearance of a glass article but it would also alter the physical stress state properties of such a glass as bending introduces stress which ultimately affects is mechanical properties. As such, the intermediate products would thereby lose their identity as generic borosilicate flat glass having different stresses from that provided by bending.
Regarding the relationships of Groups, I and V, II and V and III and V,
Applicants argue that the Office has not shown that the products can be used in a materially different process but instead, merely stated a conclusion.
This is not persuasive. Note that the restriction requirement stated the
following.
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As indicated above, the Office clearly indicated by way of Example, not just a conclusionary statement, that the products of Groups I, II and III can each be used in a materially different process such as in that of just being used as flat glass with no required heating/bending. However, for the sake of arguendo, the Examiner points out that each of the Groups I, II and III include a recitation of flat glass which is even further indication that it can be used differently as that of Group V which is a process requiring heat and bending.
While Applicants appear to argue that the Office has provided no evidence to support their assertion, note that it is understood in the art that flat glass is different than bent glass (different stress, different physical structure, etc.).
Regarding the relationships of Group IV and V, Applicants argue that the
Office has not shown that the product can be made by a materially different process but instead, merely stated a conclusion.
This is not persuasive. Note that the restriction requirement stated the
following.
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As indicated above, the Office clearly indicated by way of Example, not just a conclusionary statement, that the product can be made by a materially different process such as cold bending instead of using a heating step. While Applicants appear to argue that the Office has provided no evidence to support their assertion, note that cold bending and heat bending are both simply generally well known processes used for bending glass and Applicants have provided no convincing evidence that the product cannot be made by the alternative process.
Regarding the argument regarding the Species election requirements,
Applicants argue that the Office has not shown patentable distinction but merely state a conclusion.
This is not persuasive. Note that the restriction requirement stated the
following.
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As indicated above, the Office did indicate that each of the species are different embodiments and there is nothing to show them to be obvious variants. While Applicants argue that the Office has not stated how the differences would cause the different species to cause relevant difference in the context of the application, it is noted for the record that such difference would be general common sense to one skilled in the art. Specifically, float glass is known to have tin presence on one surface of the glass due to the processing while fusion draw glass is known to result in pristine surfaces resulting from how its made. Also, single bent and multi-bent glass are completely different as not only the number of bends but note that one skilled in the art would know that the difference in bend number will necessarily alter the physical properties (i.e. strength, shape, etc.) and depending on how the glass is made, multiple heat bending steps may be required in multi-bent glass versus the single bent glass which will further alter the properties of the glass itself. As such, these differences are merely well understood in the art.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6-13, 20-23 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Dejneka (USPub20180141850).
Regarding claim 1: Dejneka teaches borosilicate glass having a composition meeting that required by claim 1 (see for instance Examples 1-3, 7-8, and 13-15).
Note that the following limitation of claim 1 is a conditional limitation wherein the prior art only has to meet the claimed properties, and resulting property relationship, during the conditions “when” it is a flat glass having a thickness of 1.5mm and “when” the flat glass with that thickness is heated and bent at the temperature conditions recited.
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In the instant case, given that Dejneka’s glass has the same composition claimed, one skilled in the art would expect the same properties, and relationships resulting therefrom, to be present when subjected to the same conditions (i.e. being a flat glass, having 1.5mm thickness, when heated and bent at the required temperature) as claimed (MPEP 2112).
Regarding claim 4: Similarly, the following limitation of claim 4 is conditional wherein the prior art only has to meet the claimed properties, and resulting property relationship, during the conditions “when” it is a flat glass having a thickness of 1.5mm and “when” the flat glass with that thickness is heated and bent at the temperature conditions recited.
In the instant case, given that Dejneka’s glass has the same composition claimed, one skilled in the art would expect the same properties, and relationships resulting therefrom, to be present when subjected to the same conditions (i.e. being a flat glass, having 1.5mm thickness, when heated and bent at the required temperature) as claimed (MPEP 2112).
Regarding claim 6: The glass can be fusion draw glass (0079, 0082-0083).
Regarding claim 7: Given that Dejneka’s glass has the same composition claimed, one skilled in the art would expect the same properties (MPEP 2112).
Regarding claim 8: Dejneka’s glasses are free of Er2O3 (see for instance Examples 1-3, 7-8, and 13-15).
Regarding claims 9 and 11: Dejneka does teach that over the 380-780nm wavelength range, their glass can have a transmittance of 78% or more at thicknesses of 0.7mm or 1mm (0086).
While Dejneka may not explicitly mention such a property “when” their glass thickness is 1.5mm, similar to reasons above, this is a conditional limitation wherein the prior art only has to meet the claimed properties “when” it has a thickness of 1.5mm. Given that Dejneka’s glass has the same composition claimed, one skilled in the art would expect the same properties when under the same condition of having 1.5mm thickness (MPEP 2112).
Regarding claims 10 and 12: Similar to that discussed above, the claimed property over the recited wavelength when” the glass thickness is 1.5mm is a conditional limitation wherein the prior art only has to meet the claimed properties “when” it has a thickness of 1.5mm. Given that Dejneka’s glass has the same composition claimed, one skilled in the art would expect the same properties when under the same condition of having 1.5mm thickness (MPEP 2112).
Regarding claim 13: Dejneka’s glasses have Fe2O3 content as claimed (see for instance Examples 1-3, 7-8, and 13-15).
Regarding claim 20: Dejneka teaches laminated glass comprising first and second glass plates sandwiched together by an interlayer wherein one of the glasses can be Dejneka’s borosilicate glass (see Figures, 0015)
Regarding claim 21: The total thickness of Dejneka’s laminate can be less than 6.00mm (0110).
Given that Dejneka’s laminate meets that of Applicants’, it would be expected to have the same properties when measured similarly (MPEP 2112).
Regarding claims 22 and 23: Dejneka teaches that window glasses for vehicles can comprise their glass and laminated glasses described above (see entire disclosure).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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