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 .
Response to Amendment
The Examiner acknowledges the remarks and amendments filed on 6/26/26. Claim 21 is newly added. Claim 1 has been amended. Claims 1-21 are pending.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18729809 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim teaches all of the claimed limitations of instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18860318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim teaches all of the claimed limitations of instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18721530 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim teaches all of the claimed limitations of instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18729779 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim teaches all of the claimed limitations of instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18860342 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim teaches all of the claimed limitations of instant Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-8, 11, and 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1 in view of Guimard EP_3421439_A1.
1. Regarding Claims 1-3, 5, 8, 15, 16, and 21, Hecq discloses a clear (corresponds to claimed transparent) glass substrate (column 5, lines 1-2) having on one of its main surfaces a stack of thin layers consisting of the following layers, starting from the glass substrate: a first tin oxide (corresponds to claimed first dielectric module), a tungsten oxide coating (corresponds to claimed absorbent layer), and a titanium nitride coating or another thin tin oxide (corresponds to claimed second dielectric module) (column 5, lines 3-25; column 6, lines 20-23; column 14, lines 14-34); as is being claimed in instant Claims 1, 5, and 8. Hecq discloses that said tungsten oxide coating (corresponds to claimed absorbent layer) contains sodium (corresponds to a doping element) (column 14, lines 14-34), but does not disclose the use of cesium as its dopant.
2. Guimard teaches a glass substrate having a near infrared absorbing coating that can comprise doped tungsten oxide particles (Claims 1 and 2), which is similar to Hecq’s use of said tungsten oxide layer. Guimard discloses using cesium as a dopant for its tungsten oxide as CsxWyOz wherein 0.001≤x/y≤1 and 2.2≤z/y≤3.0 (paragraph 0016) as part of a substrate used in automotive glazings (paragraphs 0002, 0042). Thus, the molar ratio of Ce to W disclosed encompasses the claimed range of instant Claims 1, 15, and 16. Guimard states that its objective is to provide improved near infrared absorbing coatings that are more compatible with sputtering methods (paragraph 0005). Hecq also uses sputtering methods (column 4, lines 25-42).
3. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the Na dopant, of Hecq, by trying the use of cesium in the molar ratio of Cs to W, of Guimard. One of ordinary skill in the art would have been motivated in trying to see the improvements that can be derived from the use of other similar group 1 alkali metal dopants, such as Cs, at the stated molar ratio within the endeavor of glazings used in automotive applications. Finally, the remaining percent of tungsten in the layer would be greater than 70%, as is being claimed in instant Claim 21.
4. Regarding Claims 4 and 17, Hecq in view of Guimard suggests wherein said tungsten oxide coating (corresponds to claimed absorbent layer) has a thickness of 15 nm to 500 nm (Hecq column 5, lines 3-25).
5. Regarding Claims 6 and 7, Hecq in view of Guimard suggests having a stacking of nitride layers (Hecq column 5, lines 23-25). The remaining limitations of instant Claim 7 have been taught under the rejection of instant Claim 1 above.
6. Regarding Claim 11, Hecq in view of Guimard suggests using magnetron sputtering methods (Guimard: paragraph 0005).
7. Regarding Claims 18-20, Hecq in view of Guimard suggests using tin oxide (Guimard: paragraph 0005) or silicon zirconium nitride (Guimard: paragraph 0020).
Claim(s) 9, 10, 12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1 in view of Guimard EP_3421439_A1, as applied to Claims 1-8, 11, and 15-20, and further in view of Kamimori USPN_4338000.
8. Regarding Claim 9, Hecq in view of Guimard does not suggest the claimed laminated glass.
9. Kamimori discloses window glass for cars (column 1, lines 14-20) comprising a first transparent plate (corresponds to claimed first transparent substrate), an interlayer having adhesive contact (column 2, lines 20-21), a tungsten oxide film, and a second transparent plate (corresponds to claimed second transparent substrate) (Abstract).
10. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the automotive glazing, of Hecq in view of Guimard, by trying the setup of the glass automotive window, of Kamimori. One of ordinary skill in the art would have been motivated in doing so in order to further the utility of its invention in other like automotive glass applications.
11. Regarding Claim 10, Hecq in view of Guimard and further in view of Kamimori suggests a coloring of the substrate glass (Hecq: Title).
12. Regarding Claims 12 and 14, Hecq in view of Guimard and further in view of Kamimori suggests a deposition temperature as low as 20°C and a pressure of 1 to 5X10-5 torr (Kamimori: column 3, lines 43-47).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1 in view of Guimard EP_3421439_A1, as applied to Claims 1-8, 11, and 15-20, and in view of Meyer USPN_6440592_B1.
13. Regarding Claim 13, Hecq in view of Guimard does not disclose the claimed atmospheric condition.
14. Meyer discloses forming windows (column 1, lines 1-5) comprising tungsten (abstract) having an argon to oxygen ratio of 0.15 (column 5, lines 45-50).
15. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the argon to oxygen ratio, of Hecq in view of Guimard, by using the ratio, of Meyer. One of ordinary skill in the art would have been motivated in selecting a ratio that is used in the same field of endeavor.
Response to Arguments
Applicant's arguments filed 6/26/26 have been fully considered but they are not persuasive.
Applicants state on page 4: “Accordingly, the x/y ratio of Guimard paragraph [0016] defines the elemental composition of an individual cesium-doped tungsten oxide nanoparticle, and not the molar ratio of cesium to tungsten in the absorbent layer required by claim 1.”
The Examiner respectfully submits that under broadest reasonable interpretation, the instant claim describes the stoichiometry of the doped tungsten oxide compound itself, exactly what Guimard expresses as CsxWyOz. Doping levels are always expressed as the x/y ratio within the compound formula in this art, not as some separate bulk layer measurement. Absent an express definition in the instant specification requiring the ratio to be measured as an aggregate across the whole layer (including the binder/resin), the Examiner maintains the current rejection. Moreover, Guimard’s disclosure is referring to the uniform distribution of said nanoparticles in the absorbing layer. While the resin in the layer does not itself contain any further cesium or tungsten. Since the only source providing the doped cesium tungsten is the nanoparticles, the aggregate molar ratio of Cs atoms to total W atoms across the whole layer is necessarily identical to the x/y ratio within the nanoparticles themselves.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 August 17, 2026
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