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 Interpretation
The Instant Application is the continuation of Application 17/298,744, now issued as U.S. 12,060,751. During the prosecution of the ‘744 Application, Applicant made an express clarification on the record stating that the claimed dielectric layer shall be interpreted according to definition 2) set forth in the Final Office Action of 7 September 2023. (See pg. 13 ¶ 1 of Response of 23 January 2024 in the ‘744 Application and the Notice of Allowance of 17 April 2024, “NoA”). Directly flowing from the plain meaning of the phrase “each dielectric layer comprises one or more layers”, in a stack of three consecutive layers made of respective dielectric materials, under definition 2), only the entirety of the stack of the three consecutive layers can be considered a dielectric layer. This materially differs from the broader definition 1) previously used by Examiner, in which any one of the three layers or a consecutive combination thereof can read on dielectric layer.
In view of continuity and consistency, the same interpretation is utilized during the examination of the Instant Application, and one immediate consequence thereof is that U.S. 2015/0004383 A1 (“D1”), applied under 35 U.S.C. 102(a)(1) during two separated Office Actions, cannot fairly read on present claim 1. This reflects the discussion at ¶ 7 of the NoA.
Should Applicant take a position that aligns with definition 1) at any time during the prosecution of the Instant Application, such a change in position would result in the rejection of relevant claims over D1, and such a rejection would not be deemed as a new ground of rejection.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 and 20-23; and claim 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Each of claims 1 and 24 has the following issue of indefiniteness. There are situations for which opln ≥ opln-1 do not apply. The first opl lacks a corresponding comparative, and opln+1 does not necessarily need to be greater than oplpen. Given these exceptions, the statement opln ≥ opln-1 should be clarified as being applicable only from opl2 to oplpen.
For prior art rejection below, claims 1 and 24 are interpreted in a manner comporting with the disclosure of the specification.
As claims 2-18 and 20-23 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-18 and 20-23 are also held to be rejected.
Duplicate Claims
Applicant is advised that should claim 24 be found allowable (it currently recites allowable subject matter and can be easily be amended to be in allowable form), each of claims 4 and 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Objection
Claims 1 and 24 are objected to, as the last dielectric layer should be referred to as opllast to remove any potential confusion with usage of n + 1 appearing elsewhere in the claims.
Claim 21 should be rephrased as to state that angular dependence for each of a* and b* from 0° to 60 ° is less than or equal to 5.
Allowable Subject Matter
Claims 4, 7, 10-12, 17; and claim 24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 5, 6, 8, 13-16, 18, and 19; and claims 20-23 are rejected as being unpatentable over U.S. 2013/0057951 A1 (“D3”).
Considering claims 1-3, 5, 6, 8, and 13-16; and claims 20, 21, and 23, D3 discloses a low-emissivity coating applied onto a transparent glass substrate, wherein when the coated glass substrate is used as a one of the two glass panes in a double glazing (viz. an IGU), the low-e coating helps the IGU exhibit selectivity of at least 1.90 and low color shift in both a* and b*. (D3 ¶¶ 0088-0090 and Table 2). D3 is analogous art, for it is directed to the same field of endeavor as that of the instant application (IGU having glass panes coated with silver based low-e coatings).
D3 clearly discloses that its silver-based infrared reflective layers increase as a function of distance away from the glass substrate. (Id. ¶ 0068). Furthermore, D3 discloses that thickness ratio of the various dielectric stacks Dn as follows:
-D2 to D1 between 1.25 and 3.1, with sub-range of 2< D2 to D1 ≤3.1 overlapping the claimed range for ratio of opl2 to opl1;
-D3 to D2 between 0.5 and 1.7, with sub-range of 1<D3 to D2 ≤1.7 overlapping the claimed range for ratio of opl3 to opl2;
-D3 to Dfinal between 1.6 and 3, with sub-range of 1.6≤D3 to Dfinal <2 overlapping the claimed range for ratio of opl4 to opl3 (which in this case is also ratio of opllast to oplpen). (Id. ¶ 0068).
It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
D3 particularly discloses that its outermost dielectric stack (the 4th dielectric stack) comprises a lower layer of Zn90Sn10Ox (viz. zinc oxide with minor Sn doping) followed by a layer of Zn2SnO4 (viz. zinc stannate). (D3 ¶ 0084). This reads on the last limitation of claim 1.
Although it is noted that the sections of D3 cited are from broader disclosures of D3, Applicant is reminded that a reference may be relied upon for all that it contains, including broader disclosures and nonpreferred embodiments. (See MPEP § 2123 I). Furthermore, it has long been held that the disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. (See MPEP § 2123 II). While there may be particular additional benefit to a specific proposed solution in D3, the reference does not discredit any of the other solutions proposed, including the solutions proposed by the broad disclosures.
Furthermore, it is readily apparent from the reference that geometric thickness of each silver layer is between 8-22 nm, and that optical thickness of each dielectric stack is at least 60 nm. (Id. Table 1). As such, the claimed thickness values naturally flow from these values in combination with the provisos set forth in ¶ 0068 of the reference. D3 thus renders obvious claims 1-3, 5, 6, 8, and 13-16; and claims 20, 21, and 23.
Considering claims 18 and 19, usage of NiCr for layers located immediately adjacent silver is disclosed in D3. (D3 ¶ 0035).
Considering claim 22, due to the substantially similar low color shift considerations mentioned in D3 and due to substantially similar layer arrangements mentioned in D3, the low color shift property recited is deemed to flow naturally from D3.
Terminal Disclaimer
The terminal disclaimer filed on 24 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. 12,060,751 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In view of amendments to claim 1, the issues of indefiniteness discussed at ¶¶ 3 and 7 of the Non-Final Office Action (“NFOA”) have been resolved. The issue discussed at ¶ 4 of the NFOA remains not completely resolved.
In view of amendments to claim 1, the issue of noncompliance with the written description requirement discussed at ¶ 10 of the NFOA has been resolved.
The issue of Duplicate Claims and the Claim Objection of claim 21 remains not completely resolved.
In view of amendments to claim 1, the 35 U.S.C. 102(a)(1) rejection over D2 has been withdrawn.
In view of amendments to claim 1, the 35 U.S.C. 103 rejection over D3 has been withdrawn, and a new rejection over D3 has been instated above. Portions of Applicant’s contentions relevant to the new rejection are addressed at ¶¶ 18 and 19 above.
Concluding Remarks
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached on M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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