DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/09/2026 has been considered by the examiner.
Accordingly, the information disclosure statement (IDS) submitted on 10/22/2024 has been considered by the examiner, to the extent possible in view of the long list of documents. The Applicants should note that it is desirable to avoid the submission of long lists of documents if it can be avoided. For example, eliminate clearly irrelevant and only marginally pertinent information, and especially cumulative information. If a long list is submitted, a highlight of those documents brought to the Applicants’ attention and/or are known to be of most significance would be helpful to avoid possibly missing such a significant reference. [See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).]
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.
Claims 2-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,681,197 in view of Callahan et al. (US 2005/0200934).
Claim 1 of U.S. Patent No. 11,681,197 discloses an electrochromic (EC) window, comprising: an window having an EC device and an associated localized window controller, the localized window controller being connected with a power source and with an upstream controller or a building management system, wherein the localized window controller is configured to receive power via a conductor, and wherein the localized window controller is configured to receive a voltage of 48 Volts from the conductor.
U.S. Patent No. 11,681,197 does not disclose the electrochromic window is part of a network of electrochromic windows comprising a plurality of EC windows.
In a related endeavor Callahan discloses an electrochromic window (Para. 0008) that is part of a network of electrochromic windows comprising a plurality of EC windows (Para. 0008).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the electrochromic window, as taught by Callahan, with the electrochromic window, as claimed by U.S. Patent No. 11,681,197 for the purpose of providing an electrochromic window that is part of a simple and effective network with reduced lifecycle costs.
Claims 2-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,078,906 in view of Callahan et al. (US 2005/0200934).
Claim 1 of U.S. Patent No. 12,078,906 discloses an electrochromic (EC) window, comprising: an window having an EC device and an associated localized window controller, the localized window controller being connected with a power source and with an upstream controller or a building management system, wherein the localized window controller is configured to receive power via a conductor, and wherein the localized window controller is configured to receive a voltage of 48 Volts from the conductor.
U.S. Patent No. 12,078,906 does not disclose the electrochromic window is part of a network of electrochromic windows comprising a plurality of EC windows.
In a related endeavor Callahan discloses an electrochromic window (Para. 0008) that is part of a network of electrochromic windows comprising a plurality of EC windows (Para. 0008).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the electrochromic window, as taught by Callahan, with the electrochromic window, as claimed by U.S. Patent No. 12,078,906 for the purpose of providing an electrochromic window that is part of a simple and effective network with reduced lifecycle costs.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2-16 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Shrivastava et al. (US 2012/0293855; already of record).
Regarding claim 2, Shrivastava discloses, a network of electrochromic (EC) windows (Figs. 1A-6B), the network comprising:
a plurality of EC windows (Para. 0026 and see 105, 115, 400, 430) each having an EC device (Para. 0030) and an associated localized window controller (140 and 410), each localized window controller being connected with a power source (405a, b and “MASTER CONTROLLER”) and with an upstream controller or a building management system (Para. 0034, 0040 and see 405a, b and “MASTER CONTROLLER”),
wherein the localized window controllers are configured to receive power via a conductor (Para. 0040-0041), and wherein the localized window controllers are configured to receive a voltage of 48 Volts from the conductor (Para. 0040-0041).
Regarding claim 3, Shrivastava discloses, the localized window controllers are configured to communicate with the upstream controller or the building management system via the conductor (Para. 0034 and 0040).
Regarding claim 4, Shrivastava discloses, the localized window controllers are configured to communicate with the upstream controller or building management system via an Ethernet protocol (Para. 0032, 0043 and 0054).
Regarding claim 5, Shrivastava discloses, the localized window controllers are configured to communicate with the upstream controller or building management system via a Power over Ethernet protocol (Para. 0032, 0043 and 0054).
Regarding claim 6, Shrivastava discloses, at least one of the localized window controllers is an onboard window controller (see 140 and 410).
Regarding claim 7, Shrivastava discloses, the onboard window controller positioned in a frame of the EC window associated with the at least one localized window controller (Para. 0043-0044 and see 220).
Regarding claim 8, Shrivastava discloses, the onboard window controller is positioned in a secondary seal zone (105, 110) of the EC window associated with the at least one localized window controller (Para. 0043-0044 and see 220).
Regarding claim 9, Shrivastava discloses, the onboard window controller is positioned between two panes of the EC window associated with the at least one localized window controller (Para. 0043-0044 and see 220).
Regarding claim 10, Shrivastava discloses, for at least one of the localized window controllers, power and communication functions are combined on a single chip (Para. 0044).
Regarding claim 11, Shrivastava discloses, at least one of the localized window controllers comprises a power converter configured to convert the voltage of 48 Volts to a power requirement of the EC device associated with the at least one localized window controller (Para. 0040-0041).
Regarding claim 12, Shrivastava discloses, the power converter is configured to convert the voltage of 48 Volts to a reduced voltage between 2 Volts and 10 Volts (Para. 0014 and 0041).
Regarding claim 13, Shrivastava discloses, the localized window controllers are paired to the EC windows with which they are associated at a manufacturing facility where the EC windows are produced (Para. 0028 and 0040).
Regarding claim 14, Shrivastava discloses, the localized window controllers are connected with one or more sensors (Para. 0014, Claims 2-3 and see 220, “SENSOR 1”, “SENSOR 2”, “SENSOR 3”).
Regarding claim 15, Shrivastava discloses, at least one of the one or more sensors is positioned in one or more of the localized window controllers (Para. 0014, Claims 2-3 and see 220, “SENSOR 1”, “SENSOR 2”, “SENSOR 3”).
Regarding claim 16, Shrivastava discloses, at least one of the one or more sensors is positioned in a frame proximate one of the EC windows (Para. 0014, Claims 2-3 and see 220, “SENSOR 1”, “SENSOR 2”, “SENSOR 3”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 06/09/2026
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