DETAILED ACTION
Oath/Declaration
1. Oath and declaration filed on 5/22/2024 is accepted.
Information Disclosure Statement
2. The prior art documents submitted by application in the Information Disclosure Statement filed on 3/6/2026 and 9/10/2024 have all been considered and made of record ( note the attached copy of form PTO – 1449).
Double Patenting
3. 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 24 is rejected on the ground of nonstatutory obviousness -type double patenting as being unpatentable over claim 1 respectively U.S. Patent No. 9,158,173 B1.
Although the conflicting claims are not identical they are not patentable distinct from each other because the instant claims are anticipated by the patented claims.
The claims of the instant application corresponds to the patented claim as follows:
Instant application 18/671,863
Regarding claim 24, An insulated glass unit comprising: a first substantially transparent substrate; a second substantially transparent substrate; an optically switchable device disposed on one of the first and second substantially transparent substrates; a spacer sandwiched between the first and second substantially transparent substrates; a secondary seal outside an outer perimeter of the spacer; and at least one ribbon cable comprising a plurality of wires running substantially parallel to each other, wherein at least a portion of the at least one ribbon cable is in the secondary seal.
U.S.Patent No. 9,158,173B1
Regarding claim1, An insulated glass unit (IGU) comprising: a. a first substantially transparent substrate having an optically switchable device disposed on a surface of the first substantially transparent substrate; b. a second substantially transparent substrate; c. an electrically insulating spacer between the first and the second substantially transparent substrates, the electrically insulating spacer having a substantially rectangular cross section and comprising an electrically insulating material; and a sealing material bonding the first and second substantially transparent substrates to the electrically insulating spacer, thereby forming a sealed interior space between the first and second substantially transparent substrates, wherein the optically switchable device faces the sealed interior space of the IGU; and e. one or more bus bars configured to deliver power to the optically switchable device, wherein the one or more bus bars are disposed, along their length, between the electrically insulating spacer and the first substantially transparent substrate, and not within the inner perimeter of the electrically insulating spacer.
Claim Rejections - 35 USC § 102
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
Claim(s) 24-30 and 32-46 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Brown et al (11,719,039 B2).
The applied reference has a common assignee with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Regarding claim 24, Brown et al discloses (refer to figures 11A-11D) an insulated glass unit (1100) comprising: a first substantially transparent substrate(1105) (glass) ; a second substantially transparent substrate (1115) (glass) ; an optically switchable device (1145) disposed on one of the first and second substantially transparent substrates; a spacer (1110) sandwiched between the first and second substantially transparent substrates; a secondary seal outside an outer perimeter of the spacer (1110); and at least one ribbon cable comprising a plurality of wires running substantially parallel to each other, wherein at least a portion of the at least one ribbon cable (952) is in the secondary seal (column 26, lines 8 -lines 45).
Regarding claim 25, Brown et al discloses wherein an end of the at least one ribbon cable (940) includes one or more connectors (941 and 943) .
Regarding claim 26, Brown et al discloses wherein at least one of the connectors (941 and 943) (column 19 , lines 67) is configured to connect to a window controller.
Regarding claim 27, Brown et al discloses, wherein at least one of the connectors is configured to connect to a voltage source (1045).
Regarding claim 28, Brown et al discloses wherein at least one of the connectors (941 and 943) includes a memory and/or an integrated circuit device.
Regarding claim 29, Brown et al discloses , wherein at least one of the connectors of the at least one ribbon cable is configured to connect to a connector in electrical communication with one or more bus bars (515) disposed on the optically switchable device.
Regarding claim 30, Brown et al discloses, wherein at least one of the connectors is configured to connect to a connector at an end of one or more wires (522 and 523) connected to one or more bus bars disposed on the optically switchable device.
Regarding claim 32, Brown et al discloses wherein the at least one ribbon cable (940) is configured to provide power and/or communication signals to the optically switchable device.
Regarding claim 33, Brown et al discloses, wherein the plurality of wires (522 and 523) comprises at least four conducting wires for powering the optically switchable device.
Regarding claim 34, Brown et al discloses, wherein the optically switchable device is an electrochromic device (column 26, lines 1-lines 3).
Regarding claim 35, Brown et al discloses, further comprising an other optically switchable device disposed on an other one of the first and second substantially transparent substrates (1105 and 1115) (shown in figures 11A-11E).
Regarding claim 36, Brown et al discloses, wherein the at least one ribbon cable (905) is configured to provide power and/or communication signals to the other optically switchable device (shown in figures 11A-11E).
Regarding claim 37, Brown et al discloses, wherein the one or more connectors (941 and 943)are in electrical contact with one or more bus bars disposed on the optically switchable device and/or the other optically switchable device.
Regarding claim 38, Brown et al discloses , wherein the at least one ribbon cable (940) passes through the spacer.
Regarding claim 39, Brown et al discloses , wherein the spacer (1110) comprises a body with a hollow interior space, and wherein the at least one ribbon cable passes through the hollow interior space.
Regarding claim 40, Brown et al discloses (1110) , wherein the spacer comprises a body and the at least one ribbon cable passes between the body of the spacer and at least one substantially transparent substrate of the first and second substantially transparent substrates (1110 and 1115).
Regarding claim 41, Brown et al discloses, wherein the at least one ribbon cable (940) passes through a primary seal between a body of the spacer and at least one of the first and second substantially transparent substrates.
Regarding claim 42, Brown et al discloses, wherein the at least one ribbon cable (940) passes through a primary seal, the primary seal between a body of the spacer and the first substantially transparent substrate and the body of the spacer and the second substantially transparent substrate.
Regarding claim 43 Brown et al discloses, wherein the spacer comprises a body with an aperture (605, figure 6) and wherein the at least one ribbon cable passes through the aperture.
Regarding claim 44, Brown et al discloses, wherein the aperture (605) is sealed.
Regarding claim 45, Brown et al discloses, wherein the at least one of the plurality of wires is covered with insulation (column 24, lines 20-25).
Regarding claim 46, Brown et al discloses, wherein the spacer (1110) comprises a polymeric body.
Allowable Subject Matter
5. Claims 31 is 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.
6. The following is a statement of reasons for the indication of allowable subject matter: wherein: the at least one connector at the end of the at least one ribbon cable comprises a first set of ferromagnetic elements; the connector at the end of the one or more wires comprises a second set of ferromagnetic elements; and the first and second sets of ferromagnetic elements are configured to engage with each other to connect the at least one connector at the end of the at least one ribbon cable to the connector at the end of the one or more wires.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED A HASAN whose telephone number is (571)272-2331. The examiner can normally be reached M-TH 6 AM -4 PM.
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/MOHAMMED A HASAN/Primary Examiner, Art Unit 2872 4/22/2026
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