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 without traverse of Group I, claims 1-11 and 16-20, in the reply filed on 27 March 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 27 March 2026.
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.
Claims 1-11 and 16-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The term “thin” in claims 1 and 11 is a relative term which renders the claim indefinite. The term “thin” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant specification does not provide a definition of what is considered to be a “thin” layer, and the claim does not recite a layer thickness. Therefore, the metes and bounds of the disputed limitation is not clear.
Claims 2-10 and 16-20 are rejected as they depend on a rejected claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8-11, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Terneu et al. (EP 0994081, previously cited) in view of Fleury (2007/0188871, previously cited).
Claim 1: Terneu teaches a transparent glass sheet with a coating that includes a conductive or semiconductive layer of a doped metal oxide, where the metal oxide can be tungsten trioxide etc. (paragraph 0016). Preferred dopants include hydrogen, lithium, sodium, potassium, etc. (i.e. these are chemical elements of group 1 according to the IUPAC nomenclature) (paragraph 0022). For a WO3-based layer (i.e. the tungsten oxide layer), the preferred quantity of hydrogen, lithium, sodium, or potassium dopant is in the range of 20 to 100 moles per 100 moles of the metal oxide (i.e. a molar ratio of about 0.2-1) (paragraph 0022). Although Terneu does not specify the doped tungsten oxide to be absorbent, this feature is considered to be present due to being a substantially identical material as the instantly claimed doped tungsten oxide. See MPEP § 2112.01. The coating may include a transparent layer as an undercoat between the glass sheet and the conductive or semi-conductive layer and the undercoat is preferably a dielectric material and having a thickness in the range of 15-90 nm (paragraphs 0025-0029) (i.e. a first dielectric module of at least one thin layer). The coating may also include a transparent layer as an overcoat layer on the conductive or semi-conductive layer and the overcoat is preferably a dielectric material to help neutralize the tint of the coating in reflection and to minimize the reflection of the finished product (paragraphs 0030-0036) (i.e. a second dielectric module). The most preferred embodiment includes both an undercoat layer and an overcoat layer in a triple coating of undercoat layer (i.e. first dielectric module), conductive or semi-conductive layer (i.e. the tungsten oxide layer as outlined above), and overcoat layer (i.e. second dielectric module) (paragraph 0037). Terneu teaches the overcoat help neutralize the tint of the coating in reflection and to minimize the reflection of the finished product (paragraph 0036), but does not specifically teach the overcoat layer to be several thin layers.
In a related field of endeavor, Fleury teaches a transparent substrate having an antireflection coating (paragraph 0001) that can provide an antireflection effect and neutral tint in transmission and an attractive appearance in reflection (paragraph 0014). Fleury teaches the antireflection multilayer includes a first and third layer having an index of refraction between 2.00 and 2.30 and second and fourth layers having an index of refraction between 1.35 and 1.65 (paragraphs 0034-0036).
As Terneu and Fleury both teach a multilayer coating on a transparent substrate, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the overcoat layer (i.e. second dielectric module) of the coating of Terneu to be an antireflection multilayer (i.e. several thin layers) as taught by Fleury because the antireflection multilayer of Fleury can provide an antireflection effect and neutral tint in transmission and an attractive appearance in reflection (Fleury, paragraph 0014) which is comparable to the function of the overcoat of Terneu which helps neutralize the tint of the coating in reflection and to minimize the reflection of the finished product (Terneu, paragraph 0036), and one would have had a reasonable expectation of success.
Claim 2: Fleury teaches an antireflection coating (i.e. the second dielectric module as outlined above) as having four layers where the first and third layer have a refractive index between 2.00 and 2.30 (i.e. corresponding to a high index layer) and the second and fourth layers have a refractive index between 1.35 and 1.65 (i.e. corresponding to a low index layer) (paragraphs 0034-0036) (i.e. at least one succession of two layers with a low-index layer and a high index layer). The ranges of refractive index for the high index layers and the low index layers overlap the instantly claimed ranges and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Claim 3: Fleury teaches an antireflection coating (i.e. the second dielectric module as outlined above) as having four layers where the first and third layer have a refractive index between 2.00 and 2.30 (i.e. corresponding to a high index layer) and the second and fourth layers have a refractive index between 1.35 and 1.65 (i.e. corresponding to a low index layer) (paragraphs 0034-0036) (i.e. two successions of two layers with, for each succession, a low-index layer and a high index layer).
Claim 4: Fleury teaches that appropriate materials for the second and fourth layer, those of low index, can be based on silicon oxide (paragraph 0042) and the first and/or third layer, those of high index, at least one is based on zirconium-doped silicon nitride (i.e. corresponding to the instantly claimed zirconium silicon nitride-zirconium SixNyZrz) (paragraph 0045), although TiO2 is also known for high-index layers used with low-index layers of SiO2 (paragraph 0006).
Claims 5-6: Terneu teaches that for a WO3-based layer (i.e. the tungsten oxide layer), the preferred quantity of hydrogen, lithium, sodium, or potassium dopant is in the range of 20 to 100 moles per 100 moles of the metal oxide (i.e. a molar ratio of about 0.2-1) (paragraph 0022), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 8: Terneu teaches the preferred thickness of the conductive or semi-conductive layer (i.e. the tungsten oxide layer as outlined above) is 15-500 nm when used in combination with an undercoat and overcoat (paragraph 0037), and this range overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 9: Terneu teaches that the undercoat (i.e. the first dielectric module as outlined above) may be nitrides, etc., such as AlN, Si3N4, etc. (paragraph 0025). Fleury teaches an antireflection coating (i.e. the second dielectric module as outlined above) as having four layers (paragraphs 0034-0036), where appropriate materials for the first and/or third layer, those of high index, at least one is based on zirconium-doped silicon nitride (i.e. a nitride-based layer) (paragraph 0045).
Claim 10: Terneu teaches the coated glass sheet may be as a single-sheet glazing panel or in a multiple-glazed or laminated panel assembly (paragraph 0052). Fleury also teaches that the antireflection multilayer may be for a glazing of a single substrate (paragraph 0047) or in a laminated structure with two glass substrates (paragraph 0049).
Claim 11: Terneu teaches the coated glass sheet may be as a single-sheet glazing panel or in a multiple-glazed or laminated panel assembly (paragraph 0052), and that a glazing panel incorporating other sheets of glass (i.e. a multiple-glazed or laminated panel assembly; i.e. a first transparent substrate and a second transparent substrate) can include non-vitreous laminating materials (i.e. an adhesive lamination interlayer) (paragraph0003). Fleury teaches that a laminated structure of two glass substrates joined together by one or more sheets of a thermoplastic (i.e. an adhesive lamination interlayer) can be arranged with a solar-protection coating within the laminate (i.e. on the side of the glass in contact with the lamination interlayer).
Claim 16: Terneu teaches that the overcoat layer may be SiO2 (paragraphs 0030-0031) (i.e. SiO2 is compatible being in contact with the tungsten oxide layer). The low index layers taught by Fleury may include silicon oxide (i.e. SiO2) (paragraph 0042). Although Fleury teaches the antireflection layer as being first and third layers of high index and second and fourth layers of low index (paragraphs 0041-0042), Fleury does not specifically teach a reason for the high index being first. It would be within the level of ordinary skill in the art to rearrange the layers such that the low index layers are first and third and the high index layers are second and fourth, as a simple matter of design choice. See MPEP § 2144.04(VI)(C).
Claim 17: Since Fleury teaches alternating layers of high and low index layers (i.e. based on first and third layer of high index and second and fourth layers of low index taught by Fleury in paragraphs 0041-0042), then the rearrangement of low index layers first as outlined above regarding claim 16 would result in succession each being with the low-index layer of the succession closer to the tungsten oxide layer than the high-index layer of the succession).
Claim 18: Terneu teaches that for a WO3-based layer (i.e. the tungsten oxide layer), the preferred quantity of hydrogen, lithium, sodium, or potassium dopant is in the range of 20 to 100 moles per 100 moles of the metal oxide (i.e. a molar ratio of about 0.2-1) (paragraph 0022), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 20: Terneu teaches the preferred thickness of the conductive or semi-conductive layer (i.e. the tungsten oxide layer as outlined above) is 15-500 nm when used in combination with an undercoat and overcoat (paragraph 0037), and this range overlaps the instantly claimed range. See MPEP § 2144.05.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Terneu et al. (EP 0994081, previously cited) in view of Fleury (2007/0188871, previously cited) as applied to claim 1 above, and further in view of Mikayama et al. (US 2017/0266928).
Claim 1: The teachings of Terneu in view of Fleury regarding claim 1 are outlined above. Terneu teaches sheets of solar control glass (paragraph 0001) using a doped tungsten oxide as a preferred material for the conductive or semi-conductive layer, wherein among its useful properties is a low emissivity (paragraph 0020) and the conductive or semi-conductive layer imparts to the coated sheet a greater reflection in the near infra-red than in the visible range, thereby improving solar protection (paragraph 0018). With hydrogen, lithium, sodium, or potassium dopants the layer is conductive or with fluorine dopant the layer is semi-conductive (paragraph 0024). The preferred quantity of dopant is in the range 20 to 100 moles per 100 moles of the metal oxide for a WO3-based layer (paragraph 0022). However, Terneu does not specify cesium as a dopant.
In a related field of endeavor, Mikayama teaches a laminated glass (paragraph 0001) using sodium-doped tungsten oxide, cesium-doped tungsten oxide, etc. because they have a high heat shielding function (paragraph 0109), or that the tungsten oxide may be represented by MxWyOz, where M represents at least one kind of element selected from H, an alkali metal, etc., W represents tungsten, O represents oxygen, 0.001≤x/y≤1 and 2.0<z/y≤3.0 (paragraphs 0111-0112). From the viewpoint of further enhancing heat shielding properties, cesium-doped tungsten oxide and particularly Cs0.33WO3, is especially preferred (paragraph 0114). Both the generally taught amount of x/y and the specific formula of Cs0.33WO3 overlap the instantly claimed molar ratio of cesium to tungsten and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. Infrared rays (i.e. heat rays) can be effectively cut off by the use of the heat shielding material (paragraph 0106).
As Terneu teaches solar control glass having a doped tungsten oxide as a preferred material for low emissivity and reflecting in the (near) infrared range and Mikayama teaches a laminated glass that includes a doped tungsten oxide as a heat shielding material for cutting off (transmission of) infrared rays, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the doped tungsten oxide of Fleury-modified Terneu to be a cesium-doped tungsten oxide as cesium oxide is taught by Mikayama to be especially preferred for further enhancing heat-shielding properties over tungsten oxide doped with H (hydrogen) or other alkali metals, and one would have had a reasonable expectation of success.
Claim 19: Mikayama teaches 0.001≤x/y≤1 (i.e. a molar ratio of dopant to tungsten being 0.001-1) having at least one kind of element selected from H, an alkali metal, etc. (i.e. the dopant may be an alkali metal; i.e. cesium is a known alkali meta) (paragraphs 0111-0112) and from the viewpoint of further enhancing heat shielding properties, cesium-doped tungsten oxide and particularly Cs0.33WO3, is especially preferred (i.e. a molar ratio of cesium to tungsten is about 0.33)(paragraph 0114). Both the generally taught amount of x/y and the specific formula of Cs0.33WO3 overlap the instantly claimed molar ratio of cesium to tungsten. See MPEP § 2144.05.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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, 5-15, and 18-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6, 8-14, and 16-17, respectively, of copending Application No. 18/729,809 (reference application). Although some wording variation is present in comparing the instant claims with the claims of the ‘809 application, such variation does not amount to a patentable distinction between the resulting structures.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 7 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/729,797 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1, 5-6, 8-9, 11-15, and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8-9, and 11-17 of the ‘797 application due to overlapping subject matter (i.e. as obvious variants of the claims of the ‘797 application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 9, and 11-17 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-7, 12-13, and 15-20 of copending Application No. 18/729,779 (reference application). Although some wording variation may be present in comparing the instant claims with the claims of the ‘779 application, such variation does not amount to a patentable distinction between the resulting structures.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of the ‘779 application due to overlapping subject matter (i.e. the ranges overlap – see MPEP § 2144.05). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5-9, 11-16, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 11-15, and 18 of copending 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 instantly claimed limitations are all included in the claims of the ‘318 application (i.e. wherein the first dielectric module of instant claim 1 is interpreted to correspond to the ‘318 application reciting the first thin layer based on nitride which is followed by an absorbent layer based on tungsten oxide, and the instantly claimed second dielectric module is interpreted to correspond to the ‘318 application reciting the second thin layer based on nitride, the titanium nitride-based layer, and the second dielectric module). Instantly claimed ranges overlap ranges recited in the 318 application. See MPEP § 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Copending Application Nos. 18/860,342 and 18/721,530 recite many substantially identical features as in the instant application but include a metallic functional layer (which are excluded by the instantly claimed transparent substrate because the stack consists of the recited layers (i.e. excludes other layers within the stack). These applications will be monitored during prosecution of the instant application to continue checking for possible double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gong et al. (CN 103388917A, machine translation attached) teaches a solar selectively absorbing coating, where the substrate can be sheet glass or polished sheet glass. An absorbing layer of tungsten oxide is applied, first as a heavily doped tungsten oxide with high tungsten content and second as a low doped tungsten oxide with low tungsten content. The coating includes an antireflection layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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