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 .
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, 2, 5 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 11 of copending Application No. 18/686,490. Although the claims at issue are not identical, they are not patentably distinct from each other because current claims 1 and 5 correspond to claim 1 of ‘490 where a glass body comprising a first glass plate and a radio wave transmission region having radio wave passage sections and a conductive film section. Current claim 2 corresponds to claim 5 of ‘490 where a maximum length of a line segment passing through a center of the radio wave transmission region is 0.5 mm or more and 30 mm or less. Current claim 9 corresponds to claim 9 of ‘490 where the glass body further comprising a second glass plate, and a spacer forming a void layer between the first glass plate and the second glass plate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 5, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 17/776,694. Although the claims at issue are not identical, they are not patentably distinct from each other because current claim 1 corresponds to claim 1 of ‘694 where a glass body comprising a first glass plate and a radio wave transmission region having radio wave passage sections/radio wave transmittance and a conductive film section/first low-E film. Current claim 4 corresponds to claim 1 of ‘694 where the conductive film section/first low-E film includes plurality of islands. Current claim 5 corresponds to claim 6 of ‘694 where the fine wire width/gap width is 1-100µm. Current claim 8 corresponds to claim 1 of ‘694 where glass body comprises conductive film section/first low-E film. Current claim 9 corresponds to claim 1 of ‘694 where the glass body further comprising a second glass plate, and a spacer forming a void layer between the first glass plate and the second glass plate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rousselet et al. (US 2015/0343884 A1).
Claim 1: Rousselet teaches a pane 10 [0099] comprising a first pane 1.1 made of glass [0099] having an inner face IV [0100] and an outer face III [0100], and a transparent, electrically conductive coating 3 formed on the outer face III, wherein the transparent, electrically conductive coating 3 having de-coated structures 4.1 in regions 9, and wherein the regions 9 are arranged in a section 11 (Fig. 3A, Fig. 3B, [0013] and [0107]). The pane 10 meets the claimed glass body, the first pane 1.1 meets the claimed first glass plate, the inner face IV meets the claimed first surface, the outer face III meets the claimed second surface, the transparent, electrically conductive coating 3 meets the claimed conductive film section, the de-coated structures 4.1 meets the claimed radio wave passage sections, and the section 11 meets the claimed radio wave transmission region. Rousselet teaches silver, tin oxide and zinc oxide as suitable examples material for forming the transparent, electrically conductive coating 3 (claim 11).
Claim 2: Rousselet teaches the length of region 9 can be 10-150mm ([0031] and [0111]).
Claim 3: Rousselet teaches the horizontal and vertical distance h between 2 regions 9 can be 1-100mm ([0030] and [0108]).
Claim 4: Rousselet teaches the regions 9 comprise subregions formed by de-coated structures 4.2, 4.3, 4.4 (Fig. 11, 12B and 14). The subregions meet the claimed island.
Claim 5: The de-coated structures 4.2, 4.3, 4.4 meets the claimed fine wires. Rousselet teaches the line width of de-coated structures 4.2, 4.3, 4.4 can be 0.025-.3mm ([0025] and [0097]), wherein this range overlaps with the claimed 1-100µm. Rousselet teaches the distance b between the de-coated structures can be 0.5-30 mm ([0020], [0111] and [0121]), wherein this range overlaps with the claimed 200 µm-10mm.
Claim 6: Rousselet teaches the shape of the de-coated structures includes a rectangle [0015].
Claim 8: Rousselet teaches the transparent, electrically conductive coating 3 can be a low-E layer [0115].
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Rousselet et al. (US 2015/0343884 A1).
Rousselet teaches the claimed invention as set forth above.
Claim 7: Rousselet teaches the transparent, electrically conductive coating 3 is permeable for electromagnetic radiation of wavelength from 300 to 1,300 nm, in particular for visible light [0043]. It is well established that a visible light transmissive material transmits radio waves because radio waves have lower energy than light and pass-through atoms without getting absorbed.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rousselet et al. (US 2015/0343884 A1) as applied to claim 1 above, and further in view of Tsuno et al. (US 2001/0005184 A1).
Rousselet teaches the claimed invention as set forth above.
Claim 9: Rousselet teaches the pane 10 further comprises a second pane 1.2 made of glass and an intermediate layer 2 between the second pane 1.2 and the transparent, electrically conductive coating 3 (Fig. 3B and [0099]). Rousselet does not teach a void layer between the first pane 1.1 and second pane 1.2 instead of the intermediate layer 2. However, Tsuno teaches a radio wave absorbing panel 1 having air layers 8 that are sealed with in the radio wave absorbing panel 1 (Fig. 1, [0034] and [0047]). Rousselet and Tsuno are analogous art because they are from the same field of endeavor that is the glass panel art. It would have been obvious to a person of ordinary in the art to combine the teaching of Tsuno, (i.e., use of air layer instead of intermediate layer) with the invention of Rousselet, and the motivation for combining would be to provide a lighter weight glass body.
Pertinent Prior Arts
Takamatsu et al. (US 2009/0237782 A1).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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BS
July 7, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
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