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 6/25/26. Claim 1 has been amended. Claims 1-20 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. 18729759 (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. 18729797 (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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Regarding Claim 6, it does not offer a further limitation.
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) 1-3, 5-8, 10, 14, 15, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1.
1. Regarding Claims 1, 6, Hecq discloses a clear (corresponds to claimed transparent) glass substrate (column 5, lines 1-2) provided on one of its main surfaces with a stack of thin layers, the stack of 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 another tin oxide (corresponds to claimed second dielectric module) (column 14, lines 14-34). Although Hecq does not disclose using nitride-based coatings in the aforementioned stacking embodiment, it does disclose using nitride-based coating as an alternative to the aforedescribed tin oxide layers in other embodiments (column 5, lines 3 - column 6, lines 1-23). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the tin oxide coatings, of Hecq, by trying other suggested alternative equivalents, such as nitride-based layers, as also proposed by Hecq. The substitution would be obvious and intuitive given that the same, single reference itself suggests a degree of equivalence between the two. Such a substitution would flow naturally out of a desire for optimization as is routinely done in this art.
2. Regarding Claims 2, 3, 14, and 15, Hecq discloses that said tungsten oxide coating (corresponds to claimed absorbent layer) contains 0.094 molar ratio of sodium to said tungsten (corresponds to claimed doping element of instant Claims 2 and 3) (column 14, lines 14-34).
3. Regarding Claims 5 and 17, Hecq discloses wherein said tungsten oxide coating (corresponds to claimed absorbent layer) has a thickness of 15 nm to 500 nm (corresponds to claimed limitation of instant Claim 5) (column 5, lines 3-25).
4. Regarding Claim 7, Hecq discloses a titanium nitride coating (corresponds to claimed second dielectric nitride module) (column 5, lines 3-25).
5. Regarding Claim 8, Hecq discloses the afore-mentioned as part of a glazing (Abstract).
6. Regarding Claim 10, Hecq discloses using sputtering methods (column 4, lines 25-42).
Claim(s) 4 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1, as applied to Claims 1-3, 5-8, 10, 14, 15, and 17, and in view of Guimard EP_3421439_A1.
7. Regarding Claims 4 and 16, Hecq does not disclose the use of cesium as its dopant.
8. 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).
9. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the dopant, of Hecq, by trying the use of cesium, of Guimard. One of ordinary skill in the art would have been motivated in trying to see the advantages that can be derived from the use of other similar group 1 alkali metals at the same molar ratio within the endeavor of glazings used in automotive applications.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1, as applied to Claims 1-3, 5-8, 10, 14, 15, and 17, and in view of Kamimori USPN_4338000.
10. Regarding Claim 9, Hecq does not disclose the claimed laminated glass.
11. 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).
12. 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, 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.
13. Regarding Claims 11, 13, 18, and 20, Hecq in view of Kamimori suggests a deposition temperature as low as 20C and a pressure of 1 to 5X10-5 torr (Kamimori: column 3, lines 43-47).
Claim(s) 12 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hecq USPN_7005182_B1, as applied to Claims 1-3, 5-8, 10, 14, 15, and 17, and in view of Meyer USPN_6440592_B1.
14. Regarding Claims 12 and 19, Hecq does not disclose the claimed atmospheric condition.
15. 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).
16. 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, 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 6/25/26, with respect to the rejection(s) of all claim(s) under 35 USC 102 under Hecq have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 USC 103 under Hecq.
Conclusion
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 August 17, 2026
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