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
Priority
Note that Applicant cannot rely upon the certified copy of the foreign priority application and its filing date to overcome any rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Election/Restrictions
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected articles, there being no allowable generic or linking claim.
Applicant's election with traverse of Group I, claims 1-7 in the reply filed on June 17, 2026 is acknowledged. The traversal is on the ground(s) that there is overlapping or related technical features among all Groups and there would be no undue burden to examine all Groups. This is not found persuasive.
Initially, it is noted that even though all Groups may include the same technical feature of a glass as recited in claim 1, this feature is not considered a “special” technical feature as it does not make a contribution over the prior art as discussed in the restriction requirement and as such, unity of invention is lacking. Note that “where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. (37 CFR 1.475(a)).
Further, regarding Applicants argument that there would not be undue burden, this is not persuasive because undue burden is US Practice and the present Application was restricted under unity of invention.
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) 1-3, 5-7 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by McNeil (WO2022014607, rejection using corresponding English document USPN 12,319,611).
Regarding claims 1 and 5: McNeil teaches a glass article comprising a glass substrate and a water repellent film on the glass and containing an inorganic water repellent component containing cerium oxide (abstract).
Regarding claims 2 and 3: The glass can have a curved surface (Col. 3, line 62, Col. 4-Col. 5) and be chemically strengthened (Col. 4, lines 3-4).
Regarding claim 6: As McNeil never teaches production of cracks, one skilled in the art would reasonably conclude no cracks to occur. Additionally, it is noted for the record that given that McNeil explicitly mentions heat cracking not occurring (Col. 11, lines 15-16), one skilled in the art would again, reasonably conclude no cracks.
Regarding claim 7: The film has a thickness of 5-1000nm (0.005-1micron) (Col. 6, lines 56-59).
Claim(s) 1, 4-7 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Koval et al. (USPub20120107558).
Regarding claims 1 and 5: Koval teaches glass articles comprising a glass substrate and a water repellent coating film 115 on the substrate and containing CeO2 (lanthanoid oxide) component therein (see disclosure in par 0024, 0026, 0028 and Example 1 wherein CeO2 component is present in undercoat 120).
Given that cerium oxide is the same component used by Applicants’, it would be considered to have the same functionality of being a water repellent component (MPEP 2112).
Regarding claim 4: Given that the water repellant coating film has the component in an undercoat 120 which is covered by overcoat (s) (see Figures), the component is not considered exposed on the surface of the coating film.
Regarding claim 6: As Koval never teaches the production of cracks, one skilled in the art would reasonably conclude no cracks to occur.
Regarding claim 7: In an alternative interpretation of Koval, Koval is considered to teach a water repellent coating film having thickness of less than 30micron while also meeting claim 1 as laid out below.
Specifically, Koval’s Example 1 teaches a glass article comprising a glass substrate wherein an aqueous dispersion of CeO2 particles having a size of 160nm is deposited and then air-dried (i.e. note the aqueous material will be removed during drying leaving the CeO2 particles of 160nm size spread across the substrate surface (see also 120 in Figures as an illustration of this)). Given that the CeO2 particles are spread across the substrate surface forming a film of said particles (see 120 in Figures) and each particle is 160nm size, it can be reasonably concluded that the film thickness will in turn be no greater than 160nm. Additionally, note that as CeO2 is a water repellent component itself, the CeO2 film will itself be considered a water repellent film.
Claim Rejections - 35 USC § 102/103
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.
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(s) 1-2, 4-7 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Takeda (USPub20120282458).
Regarding claims 1 and 5: Takeda teaches articles, such as glass articles (see 0045, 0056-0057) comprising a glass substrate (0056) and a water repellent coating film (see abstract, 0059 and film shown in Figure 2 comprising undercoat 11 and overcoat 12) on the substrate and containing a component therein (see disclosure of fine particles A in undercoat 11 in par 0059, 0065, 0069- 0079).
Takeda teaches that it is preferred that the component is at least one of silicon oxide, aluminum oxide, titanium oxide, tin oxide, zirconium oxide and cerium oxide (0072). Given that cerium oxide (lanthanoid oxide) is one out of a very limited listing of preferred materials, one skilled in the art would reasonably conclude Takeda to be anticipating with sufficient specificity a component of cerium oxide (lanthanoid oxide), or at the very least render it obvious.
Given that cerium oxide is the same component used by Applicants’, it would be considered to have the same functionality of being a water repellent component (MPEP 2112).
Regarding claim 2: The substrate can have a curved surface (0057).
Regarding claim 4: Given that the water repellant coating film has the component in undercoat 11 which is covered by overcoat 12 (see Figure 2), it can be concluded that the component is not exposed on the surface of the coating film.
Regarding claim 6: As Takeda never teaches the production of cracks, one skilled in the art would reasonably conclude no cracks to occur.
Regarding claim 7: The water repellent coating film has a thickness of 50-600nm (0.05-0.6micron) (0017, 0029, 0061).
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(s) 2 is/are rejected under 35 U.S.C. 103(a) as being obvious over Koval et al. (USPub20120107558) as applied to claim 1 or alternatively in view of either one of (USPub20200299186) or (USPub20190367408).
Regarding claim 2: While Koval does not explicitly teach the substrate surface being “curved”, note that this is merely a change in shape and it has been held by the courts that change in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04). In the instant case, while Koval may not disclose the glass substrate being curved, Koval does teach the glass being used as protective cover glass for displays for a variety of electronic devices, etc. (see 0021, 0044) and it would have been well within the skill in the art to optimize the shape depending on the shape of the desired device application.
Alternatively, Koval does not place limits on their substrate shape and instead, Koval only teaches the glass being used as protective cover glass for displays for a variety of electronic devices, etc.
As ‘186 and ‘408 each suggest it being well known in the art that glasses used as cover glasses for displays can be curved as desired (see 0065 and Figure 6 in ‘186 and 0037, 0083, 0124 in ‘408), it would have been obvious to one having ordinary skill at the time of invention to modify Koval to include their glass substrate being curved as desired in the production of their cover glass in display applications.
Claim(s) 3 is/are rejected under 35 U.S.C. 103(a) as being obvious over Koval et al. (USPub20120107558) as applied to claim 1 in view of either one of (USPub20200299186) or (USPub20190367408).
Regarding claim 3: While Koval does not explicitly teach the substrate being subjected to one of the treatments claimed, Koval does not exclude such treatments and instead, only generally teach their glass being used as protective cover glass for displays for a variety of electronic devices, etc.
As ‘186 suggests that chemically strengthening glasses utilized as cover glasses on displays of electronic devices is well recognized in the art (0003 and entire document), it would have been obvious to one having ordinary skill at the time of invention to modify ‘558 to include their glass being chemically tempered as desired to obtain a strengthened cover glass for displays.
Similarly, as ‘408 suggests it being desirable to chemically strengthen glasses utilized as cover glasses for displays (see entire document, 0037, 0040-0049, 0083, 0124), it would have been obvious to one having ordinary skill at the time of invention to modify ‘558 to include their glass being chemically tempered as desired to obtain a strengthened cover glass for displays.
Claim(s) 7 is/are rejected under 35 U.S.C. 103(a) as being obvious over Koval et al. (USPub20120107558) as applied to claim 1 or alternatively in view of Takeda (USPub20120282458).
Regarding claim 7: The following rejection of claim 7 is an alternative rejection to the 102 rejection of claim 7 above.
Note that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05). In the instant case, while Koval may not explicitly teach the overall thickness of their overall coating film 115, Koval does not appear to place limits on the thickness and it would have been well within the skill in the art to optimize thickness as desired depending on desired surface coverage, film strength, etc. which are all features well known to be affected by adjustment in thickness. Note that there simply does not appear to be anything critical, nor have Applicants provided any evidence to support criticality, for the thickness claimed.
Alternatively, note that Koval does not appear to place limits on their coating film 115 thickness and instead, only generally teaches a glass article comprising a water repellent film coating substrate for use as cover glasses for displays, etc.
As ‘458, who similarly teaches a glass article comprising a water repellent film coating on a substrate, suggest a desirable thickness for water repellent coatings being that of 50-600nm (0.05-0.6micron) (0017, 0029, 0061), it would have been obvious to one having ordinary skill at the time of invention to modify Koval to include their coating film having a thickness of 50-600nm (0.05-0.6micron) as desired for water repellency.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeda (USPub20120282458) as applied to claim 1 above, in view of any one of (USPub20190367408), (USPub20210039984) or (USPub20210355026).
Regarding claim 3: While Takeda does not explicitly mention their substrate being treated as claimed, Takeda does not exclude such treatments either and instead, only generally teaches their glass being used as windshield glass, etc. (0045, 0056, 0296).
As ‘408, ‘984 and ‘026, who similarly teach glasses that can be used as windshield glass, etc. (0003, 0098 in ‘408; 0002, 0154 in ‘984; and 0004-0006 in ‘026), suggest it being desirable to chemically strengthen such glasses (see 0003, 0098 in ‘408; 0096-0097 in ‘984 and 0002, 0004-0006, 0038-0039 in ‘026), it would have been obvious to one having ordinary skill at the time of invention to modify Takeda to include chemically strengthening their glass as desired for enhanced strength.
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 1-3 and 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,319,611. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and specifically, present claim 1 encompasses that of the Patent.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15, 17, 19-26 of copending Application No. 18/042156 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, note that the copending Application has been allowed and as such, once patented the present rejection will be changed to nonprovisional.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-38 of copending Application No. 18727129 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, note that the copending Application has been allowed and as such, once patented the present rejection will be changed to nonprovisional.
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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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