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 .
Claim Rejections - 35 USC § 103
2. 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.
3. 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.
4. Claim(s) 1-6, 8,9,12,13, 15, 16, 21, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681).
Regarding claim 1, Broos discloses a method of adapting an installed window already installed in a window frame currently installed in a building, said method to provide added anti- ballistic properties to said window, (Abstract, Par 0096)
said method comprising the steps of:
connecting an apparatus configured to apply a fluid into a gap adjacent to a first pane of transparent material provided as part of said installed window (Par 0021, 0043, 0098-0100); and
said apparatus applying the fluid into the gap while said window remains installed in said building, (Par 0021-0022)
wherein said fluid is configured within said gap to maintain window transparency in the installed window with said fluid also being configured to add new anti-ballistic properties to the installed window (Par 0016, 0019, 0026).
Broos discloses the use of an air pump to lower the gas pressure between the glass layers, but does not specifically disclose an apparatus configured to pump the fluid into the gap. However, Kim discloses a double glass window system including a gap and an apparatus 50 configured to pump fluid into the gap (Fig 1). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Broos to include a pump as taught by Kim in order to automate the application of the fluid while providing a smooth and steady flow. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claim 2, Broos discloses said gap is formed by a second pane of transparent material provided as part of said installed window next to said first pane of transparent material (Par 0021, 0043).
Regarding claims 3 and 8, Broos discloses said first pane of transparent material is comprised of a glass material (P0043).
Regarding claim 4, Broos discloses a step of drilling a hole through said installed window into said gap for receiving said fluid therethrough (P0097).
Regarding claims 5 and 6, Broos discloses subsequent to said pumping step, said fluid is cured within said gap to exhibit said transparency and said new anti- ballistic properties (P0066, 0100).
Regarding claim 9, Broos discloses the step of installing a second pane of transparent material next to said first pane of transparent material to form said gap (Par 0021).
Regarding claim 12, Broos modified by Kim discloses as discussed in claim 1, but does not specifically discloses said apparatus is comprised of a portable pumping system that is transported to the building having the installed window. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the system portable, since it has been held that making an old device portable or movable without producing any new and unexpected result involves only routine skill in the art.
Regarding claim 13, Broos discloses said fluid is comprised of a polycarbonate, (P0026).
Regarding claims 15, 16, Broos modified by Kim discloses the claimed method. The limitations of claims 15 and 16 can be seen above in the rejections of claims 1-5.
Regarding claim 21, Broos discloses the step of drilling at least one gas escape hole in the installed window or the window frame of the installed window to allow gas to escape from the gap between said two panes of transparent material in the installed window during the pumping step (Par 0097, 0099).
Regarding claim 22, Broos modified by Kim discloses the claimed method. The limitations of claim 22 can be seen above in the rejections of claims 1-5, 12.
5. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681) and further in view of Sher Efim (SU 806848 A1).
Regarding claim 7, Broos modified by Kim discloses as discussed in claim 1, but does not disclose subsequent to said pumping step, said fluid remains a fluid or gel within said gap to exhibit said transparency and said new anti-ballistic properties. However, Sher Efim discloses a window comprising transparent panels 5 forming a gap that can be filled with a fluid (liquid 6) that remains fluid. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a liquid, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice according to the desired anti-ballistic properties of the window.
6. Claim(s) 10, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681) and further in view of Duncan (US 2009/0229216).
Regarding claim 10, Broos modified by Kim discloses as discussed in claim 9, but does not disclose said second pane of transparent material is configured to provide anti-ballistic properties better than said first pane of transparent material. However, Duncan discloses an impact resistant window having a first pane 102, a second pane 101 having a durable transparent film 111 configured to provide impact resistant properties better than said first pane (Fig 5), (Abstract, Par 0074). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the second pane of Broos to include a film as taught by Duncan, in order to enhance the anti-ballistic properties of the second pane. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
As modified, the second pane of transparent material would be configured to provide anti-ballistic properties better than said first pane of transparent material.
Regarding claim 17, Broos modified by Kim discloses as discussed in claim 15, but does not disclose the step of installing a new layer of transparent material adjacent to said already installed window to provide additional anti-ballistic properties. However, Duncan discloses an impact resistant window having a first pane 101, a second pane 102 and the step of installing a new layer of transparent material 111 adjacent to said already installed window (Fig 5), (Abstract, Par 0074). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Broos to include a new layer as taught by Duncan, in order to enhance the anti-ballistic properties of the window. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claim 18, Duncan further discloses said new layer 111 is a film applied to said first pane 101 of transparent material (Fig 5).
7. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681) and further in view of Snow (US 4,455,329). Broos modified by Kim discloses as discussed in claim 1, but does not disclose the step of vibrating the installed window to enhance settling of the fluid into said gap. However, Snow discloses a method of applying a coating to a surface of a pipe including the step of vibrating the pipe to enhance depletion of air bubbles in the coating and formation of a lining having a smooth surface, (Abstract, Claim 2). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Broos to include the step of vibrating as taught by Snow, in order to evenly spread the fluid into the gap and to eliminate air bubbles. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
8. Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681) and further in view of Yuter (US 2010/0161177). Broos modified by Kim discloses as discussed in claim 1, but does not disclose said fluid includes a substance that provides controllable tinting capability for the installed window. However, Yuter discloses a window that includes a substance (liquid crystal film 30) that provides controllable tinting capability for the installed window (Fig 3), (Par 0027, 0050). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fluid of Broos to include a liquid crystal film as taught by Yuter, in order to obtain privacy in building windows in a controllable manner. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
9. Claim(s) 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Broos (US 2010/0024950) in view of Kim (US 6,701,681) and further in view of Bertolini (US 10,239,288).
Regarding claim 17, Broos modified by Kim discloses as discussed in claim 15, but does not disclose the step of installing a new layer of transparent material to provide additional anti-ballistic properties. However, Bertolini discloses a window with anti-ballistic properties having a first pane 2, a second pane 6 and the step of installing a new layer of transparent material 8 adjacent to said second pane 6 (Fig 1), (Col 5, Lines 9-30). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Broos to include a new layer as taught by Bertolini, in order to enhance the anti-ballistic properties of the window. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
As modified, the new layer of transparent material would be adjacent to said already installed window.
Regarding claim 19, Bertolini further discloses said new layer 8 is a third pane of transparent material (Col 6, Lines 1-6).
Regarding claim 20, Bertolini further discloses said third pane of transparent material 8 forms a second gap that is filled with a transparent anti-ballistic material 7, (Fig 1).
Double Patenting
10. 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.
11. Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No.12,007,208. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Response to Arguments
12. Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive.
Applicant is drawing conclusions without proof when he states that “Broos does not teach that the window being filled with a fluid to fill a gap between window panes while the window is installed in a building. Rather, Broos teaches that the window must actually be placed into the fluid for filling (see Paragraph 0099), an action that cannot be done to a window that is currently installed in a building, but that clearly requires that the window be removed so that it can be treated as required by the disclosed method”. Examiner respectfully disagrees, Broos discloses that improving an antiballistic property of a window in an existing object, particularly a window is possible by in situ applying a layer of a specific material to the window, (Abstract, Par 0009). The term "in situ" means: in the original or natural place or site, thus, Broos discloses the window being in the original or natural place or site in a building. Further, Examiner notes that Broos discloses a hole in the lower frame side and that "the window was placed with the lower frame side in the mixture," (Par 0099) this indicates that "the window was placed" with the hole in the lower frame side and it refers to the contact between the mixture and the lower side of the frame, it has nothing to do with the removal or uninstallation of the window because Broos is expressly concerned with existing windows in buildings and in situ application.
Conclusion
13. 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 ADRIANA FIGUEROA whose telephone number is (571)272-8281. The examiner can normally be reached 8:30AM-5PM MONDAY-FRIDAY.
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/ADRIANA FIGUEROA/
Primary Examiner
Art Unit 3633
05/14/2026
Prosecution Insights