DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on March 9, 2026 has been entered.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent 11,993,536. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Patent 10,654,747. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent 10,654,749. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of US Patent 10,654,748. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent 10,703,673. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10358384. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 9604875. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 8865325. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9932267. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US 10,981,826. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US 11,401,207. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US 11,286, 200. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US 11,267,752. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Allowable Subject Matter
Claims 1-20 would be allowable upon the filing of an appropriate eTD over the above conflicting Patents and Applications.
The following is a statement of reasons for the indication of allowable subject matter: Similar to the reasons of Allowance in the Patent Application 17/581,184, while the closest prior art of record (see Notice of References cited) may disclose a coated transparency similar to that claimed, the art fails to teach or render obvious for reasons below.
Initially, the closest prior art of Nakamura’s transparency is a coated substrate with at least one discontinuous metallic layer similar to that claimed. However, Nakamura’s transparency is a PDP which is different in both effect and structure from an automotive or architectural transparency as required by the claims.
There is absolutely nothing in the prior art that provides motivation to modify Nakamura to use such a transparency having discontinuous metallic in automotive or architectural transparencies.
Further, while Morimoto ‘872’s transparency is a coated substrate wherein at least one discontinuous metallic layer can be said to be obvious in view of Nakamura due to both teaching analogous art related to transparencies used in PDPs, Morimoto does not teach nor can be said to render obvious a transparency with discontinues metallic in specifically, automotive or architectural transparencies.
The Examiner does note for the record that while Morimoto ‘872 may generally mention that their transparency can be used for PDPs, vehicle transparencies, etc. (0004, 0058), as mentioned above, Morimoto’s transparency does not include a discontinuous metal layer as required by the claims and the only prior art of record to disclose or suggest a discontinuous metallic is that of Nakamura which is specifically a PDP transparency. As such, although Morimoto may disclose a transparency used as a PDP or vehicle transparency, the only motivation for the inclusion of a discontinuous metallic in Morimoto is in a PDP transparency. There is simply no suggesting or motivation to modify Morimoto to include such a discontinuous metallic in their transparency as a vehicle or architectural transparency.
Response to Arguments
Applicant's arguments filed March 9, 2026 have been fully considered and those related to the Obviousness-Type Double Patenting Rejections Items (ix), (xiv), (xv), (xvii) and (xviii) in view of the PTAB’s final decision in U.S. Application 17/135,529 are persuasive and as such, those Obviousness Double Patenting rejections will be withdrawn.
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 on 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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