DETAILED ACTION
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, 4-9, 14-15, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 11-12 of co-pending Application No. 18/860,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims set forth each and every feature as required in the claims of the instant application, where titanium nitride-based layer is considered to be a metallic functional layer and where the physical thickness of the tungsten oxide layer set forth in the co-pending claims overlaps the range of the instant claims. One of ordinary skill in the art would have found it obvious to select a thickness from the co-pending claims including values which fall within the range of the instant claims.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-11, 13-17, and 19 of co-pending Application No. 19/477,694 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims set forth each and every feature as required by the claims of the instant application including thickness values for the tungsten oxide layer which fall within the thickness range required by the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 sets forth a glazing “comprising at least two transparent substrates, one of the substrates being a substrate according to claim 1”, however claim 1 is directed to a transparent substrate provided with a functional stack i.e. the transparent substrate of claim 1 does not include the functional stack. Claim 14 additionally limits the glazing with respect to “the functional stack”, however no functional stack has been established (i.e. the claim only references the transparent substrate of claim 1). There is therefore insufficient antecedent basis in claim 14 for “the functional stack”. For the purpose of examination claim 14 will be considered to define the glazing such that one of the substrates being “the transparent substrate provided with a functional stack of thin layers on at least one of its faces according to claim 1”.
Allowable Subject Matter
Claims 1-13 and 15-19 distinguish over the prior art but are rejected under double patenting. Wanakule et al. (US Patent 11,524,919) disclose a glazing comprising a functional coating including a high-index layer which may be tungsten oxide (col. 9 lines 21-27), and a metallic functional layer positioned between dielectric coatings (col. 10 lines 55-59), but do not appear to explicitly disclose one or more of the dielectric coatings to comprise a thin layer of tungsten oxide layer doped with a group I element. Further there is insufficient motivation such that one of ordinary skill in the art would have found it obvious to modify the glazing of Wanakule et al. to conform to the claimed layer configuration and composition, namely one or more dielectric modules comprising thin layers where at least one of the dielectric modules comprises a thin layer of tungsten oxide doped with a group I element.
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and upon overcoming the rejection under double patenting.
Claim 20 depends form one or more rejected claims but is otherwise found to distinguish over the prior art for those reasons as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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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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/Adam Krupicka/Primary Examiner, Art Unit 1784
Prosecution Insights