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
Applicant’s election of Group I, claims 1, 4, 6-9, 12 and 14-16 in the reply filed on March 25, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2, 13, 21-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 4, 6-9, 12, 15 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Bockmeyer (USPub20140004323).
Regarding claim 1: Bockmeyer et al. teaches a coating-attached glass article comprising a glass substrate, a self-cleaning coating on the substrate (see abstract and Figures) and an additional layer between the coating and the substrate (see 0051, 0061, Figures).
Bockmeyer’s additional layer is that of SiO2 (0061). Given that SiO2 is the same material used by Applicants’ (see Applicants’ specification par 0039), one skilled in the art would reasonably conclude the same functionality of diffusion prevention (MPEP 2112).
Regarding claim 4: Note for the record that the features of claim 4 is evaluating the amount of diffusion coming from the underlying glass to that of the coating.
While Bockmeyer may not explicitly calculate the level of diffusion in the manner claimed, given that Bockmeyer’s coated article including the intervening layer preventing such diffusion is the same as claimed, one skilled in the art would reasonably conclude the same amount of resulting diffusion (MPEP 2112).
Regarding claims 6 and 7: The self-cleaning coating includes cerium oxide which is nanocrystalline (abstract, 0027-0028, 0041, 0046, Example 3).
Regarding claim 8: The self-cleaning coating includes zirconium oxide (abstract, 0027-0028, 0041, 0046, Example 3).
Regarding claim 9: Claim 9 is a conditional claim wherein the coated glass article only has to have the recited contact angle after a thermal treatment as claimed. In the instant case, while Bockmeyer does teach their coated glass article having a contact angle of water on the surface of their coating being greater than 80oC (0031), they do not explicitly disclose the specific contact angle after a thermal treatment as claimed. However, given that Bockmeyer’s coated article meets that claimed, one skilled in the art would reasonably conclude the same resulting properties after being treated as claimed (MPEP 2112).
Regarding claim 12: While Bockmeyer may not explicitly discuss their intervening layer of SiO2 (diffusion prevention layer) being amorphous, given that there is no teaching or suggestion in the reference of making the intervening layer crystalline, similar to that which Bockmeyer did for the overlying coating, one skilled in the art would reasonably conclude the intervening layer to be amorphous.
Regarding claim 15: Claim 15 is a conditional claim wherein the coated glass article only has to have the recited visible transmittance difference after a treatment as claimed. In the instant case, given that Bockmeyer’s coated article meets that claimed, one skilled in the art would reasonably conclude the same resulting properties after being treated as claimed (MPEP 2112).
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) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bockmeyer (USPub20140004323) as applied to claim 1 above, in view of either one of (USPub2015329755) or (USPN12,319,611 having an earlier effective filing date).
Regarding claim 14: Bockmeyer does teach that their self-cleaning coating can include Al (0047) but just does not explicitly disclose it being an oxide. However, Bockmeyer’s coating is a self-cleaning hydrophobic coating that can include zirconium oxide, cerium oxide, and can additionally include Al (see abstract, 0030-0031, 0028, 0041, 0046-0047, Example 3).
Given that ‘755, who similarly teaches hydrophobic coatings that can include zirconium oxide, cerium oxide (0104) and additionally include Al suggests that such Al can be added as an oxide (see 0037-0057), and given that ‘611, who similarly teaches hydrophobic coatings that can include zirconium oxide, cerium oxide (abstract, Col. 6, lines 49-53) and additionally include Al as an oxide (Col. 6, line 52), it would have been obvious to one having ordinary skill at the time of invention to modify Bockmeyer to include their Al being added as an oxide to obtain a desirable hydrophobic coating.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bockmeyer (USPub20140004323) as applied to claim 1 above, in view of (USPub20150140325).
Regarding claim 16: Bockmeyer does not explicitly disclose their glass being reinforced glass, however, Bockmeyer does not exclude this and instead, only generally teaches their glass being that for cooktops, viewing windows, etc. (see for instance, Figures, 0057-0058).
As ‘325 suggests that glass for cooktops, etc. often require damage resistance (0003-0004) and that their strengthened glasses are desirable for damage resistant (see entire document), it would have been obvious to one having ordinary skill at the time of invention to modify Bockmeyer to include their glasses being strengthened according to ‘325 for enhanced damage resistance.
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, 6-9, 12, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/728777 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations would have been rendered obvious over the prior art relied upon in the Office Action above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6-9, 12, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-47 of copending Application No. 18/727129 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations would have been rendered obvious over the prior art relied upon in the Office Action above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6-9, 12, 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/728731 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope and any additional limitations would have been rendered obvious over the prior art relied upon in the Office Action above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6-9, 12, 14-16 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 and any additional limitations would have been rendered obvious over the prior art relied upon in the Office Action above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, the claims have been allowed so once issued, the rejection will change 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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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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
Prosecution Insights