DETAILED ACTION
Summary
This is the first action on the merits for application 18/786,934, filed July 29, 2024.
This application is a continuation of application 17/503,993 (now patent 12,088,245), a continuation of application 15/069,373 (now patent 11,177,766) and provisional application filed March 13, 2015.
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-19 in the reply filed on October 15, 2025 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 15, 2025.
Claims 1-19 are considered on the merits herein.
Claim Objections
Claims 2 and 13 are objected to because of the following informalities:
Claim 2 refers to “parallel to the large area faces”, yet this would be clearer if stating “parallel to large area faces”. While this may be discernable in light of the specification, the claim is clearer and removes any possible antecedent considerations upon removal of the term “the”.
Claim 13 refers to “the polymeric resin or thermoplastic”. These terms are introduced in claim 12, not claim 11. For this reason, please correct the dependency of claim 13 to refer to claim 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BICKMORE (US PG PUB 2014/0174534A1), in view of ZHANG et al (US PG PUB 2015/0194555).
Regarding claims 1 and 12-14, BICKMORE teaches a photovoltaic system (abstract), comprising:
a first glass sheet (234) and a second glass sheet (235), and
a combined nanoparticle polymer layer (240, NP material layer) sandwiched between and in contact with the first and second glass sheets to produce a waveguide (paragraph [0072] discusses “sandwiched” nanoparticle layer),
the combined nanoparticle polymer layer comprising a transparent polymer layer (“transparent polymer web substrate with gelatin” per paragraph [0020], made of polyurethane in paragraph [0024], or as described in paragraph [0048]) having a multiplicity of metal nanoparticles (“substantially spherical nanoparticles”, NP, paragraph [0020] and metal nanoparticles, paragraphs [0041] and [0042]) dispersed on or within the transparent polymer layer (paragraph [0048]),
the transparent polymer (polymer of paragraphs [0024] or [0048]) having transmittance in at least visible and near-infrared regions of an electromagnetic spectrum (taught in the above citations to be polyurethane, consistent with the polymer of the instant invention and claims 12 and 13 (consistent with dependency of claim 13 being on claim 12 as detailed in the objection above), moreover, the use of a transparent polymer would be necessary per the structure of figure 17 which would require the light to penetrate the glass/NP/glass sandwich to reach the PV (224)), and
a frame (“frame”, 222) comprising at least one photovoltaic cell (“PV cell”, 224) configured to harvest from the near- infrared and/or the near-ultraviolet regions of the electromagnetic spectrum (instant spec teaches silicon is near-infrared harvesting, as is also consistent with instant claim 14) the at least one photovoltaic cell (224) residing in the frame (222).
While BICKMORE teaches a stacked, frame photovoltaic unit with the photovoltaic cell parallel to the light receiving side (see figure 17) wherein the polymer/nanoparticle layer redirects the light within the layer, mirroring a waveguide (as discussed above), BICKMORE fails to address the use of the photovoltaic panel within a window or the photovoltaic device to be arranged perpendicular to the light receiving surface.
ZHANG et al teaches a waveguide comprising a pair of glass layers (111) and a wavelength dispersion layer or light direction layer (108) of nanoparticles and polymer (paragraph [0023] and nanometals and nanoparticles of paragraph [0138]) therebetween to direct light to a photovoltaic (103), just as in the glass and nanoparticle layer directing light to the photovoltaic layer of BICKMORE, as shown in see figures 7-10. ZHANG et al further teaches the stack of glass/polymer and nanoparticle/glass layering to function as a window in the abstract, utilizing a structure already present and exposed to light to generate low cost power harvesting. Moreover, figures 7-10 show an array of arrangements of the stack of glass (111)/polymer and nanoparticle (108)/glass (111) relative to the photovoltaic cells (103) with paragraphs [0114]-[0117] all teaching any location of the photovoltaic cell can be utilized to generate power. Moreover, the presence of the photovoltaic cell within the frame allows for encapsulation or protection of the photovoltaic cells, as discussed in paragraph [0077].
At the time of filing, it would have been obvious to one of ordinary skill in the art to utilize the structure of BICKMORE to function as a window, as shown in ZHANG et al, as the same structural pieces organized in the same way will obviously and predictably render a functional window, wherein the use of light impinging on a panel as in BICKMORE or a window of ZHANG et al, will still enable the same generation of power while enable capitalizing on light exposure already present on a window. To be clear, the use of the claimed structure as a window is interpreted as intended use at this juncture, wherein the intended use would not be given patentable weight (apparatus claim, per MPEP section 2114) as no portion of the structure differentiates the stack for a panel from the stack for a window. However, in the interest of compact prosecution, the above combination is submitted to show the use of the stack of BICKMORE as a window, as shown in ZHANG et al, is further obvious. Moreover, it would have been obvious to one of ordinary skill in the either shift the photovoltaic cells of BICKMORE within the frame, as shown in ZHANG et al, or utilize additional cells within the frame, as in ZHANG, as the location of the photovoltaic cells within the frame enable protection of the cells. The addition of photovoltaic cells in the frame, as in modified BICKMORE, will read on “the at least one photovoltaic cell residing in the frame perpendicular to a light receiving face of the window”.
Regarding claim 2, BICKMORE teaches a coating of polymer and nanoparticles mix (figure 13a/b, paragraph [0064] for example), but ZHANG et al teaches the metal nanoparticles decorate at least one surface of the combined nanoparticle polymer layer on a plane parallel to the large area faces of the window (paragraph [0109] teaching the nanoparticle (chromophore) layer on the polymer layer). It would have been obvious to orient the nanoparticles on the surface of the polymer layer of modified BICKMORE, as opposed to mixing therein (as in ZHANG et al and BICKMORE) as either orientation renders the same predictable result of light redirection.
Regarding claims 3 and 4, BICKMORE teaches a coating of polymer and nanoparticles mix (figure 13a/b, paragraph [0064] for example), but ZHANG et al teaches the metal nanoparticles decorate at least one surface of the combined nanoparticle polymer layer on a plane parallel to the large area faces of the window (paragraph [0109] teaching the nanoparticle (chromophore) layer on the polymer layer). It would have been obvious to orient the nanoparticles on the surface of the polymer layer of modified BICKMORE, as opposed to mixing therein (as in ZHANG et al and BICKMORE) as either orientation renders the same predictable result of light redirection. Upon the orientation of the nanoparticle layer on the surface of the polymer layer, the structure of a stack of glass/nanoparticle layer/polymer layer/glass layer is formed. This orientation is consistent with that of the structure of claims 3 and 4. Furthermore, claims 3 and 4 is/are considered product-by-process claims. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product -by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). However, ZHANG et al also teaches the application of the nanoparticles to a glass or polymer layer via spin coating (reading on direct deposition) in paragraph [0109], further reading on the method, in the interest of compact prosecution only.
Regarding claim 5, BICKMORE teaches a coating of polymer and nanoparticles mix (figure 13a/b, paragraph [0064] for example), but ZHANG et al teaches the metal nanoparticles decorate at least one surface of the combined nanoparticle polymer layer on a plane parallel to the large area faces of the window (paragraph [0109] teaching the nanoparticle (chromophore) layer on the polymer layer). It would have been obvious to orient the nanoparticles on the surface of the polymer layer of modified BICKMORE, as opposed to mixing therein (as in ZHANG et al and BICKMORE) as either orientation renders the same predictable result of light redirection. Upon the orientation of the nanoparticle layer on the surface of the polymer layer, the structure of a stack of glass/nanoparticle layer/polymer layer/glass layer is formed. This orientation is consistent with that of the structure of claim 5. The method step of “depositing the metal nanoparticles on the first glass sheet and applying a polymer or polymer precursor to at least one of the first glass sheet or the second glass sheet” is/are considered product-by-process claim limitations. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product -by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 6, BICKMORE teaches the multiplicity of metal nanoparticles (NP) are of a plurality of sizes and shapes (paragraph [0070]), wherein a majority of the metal nanoparticles are isolated from each other (figures 3a/b and 12 show the particles to be distinct and non-aggregated, reading on isolation from each other).
Regarding claim 7, modified BICKMORE teaches a fraction of the metal nanoparticles in contact is 0.1 or less (figure 13A of BICKMORE and figures 7-10 of ZHANG et al show the dispersion of components within the polymer matrix to not contact each other) .
Regarding claim 8, BICKMORE teaches each metal nanoparticle of the multiplicity of metal nanoparticles has a cross-sectional width (interpreted to be equivalent to the diameter of BICKMORE) of 10 to 200 nm (10-250 nm, paragraph [0042], wherein the substantially overlapping range of BICKMORE renders obvious the instant range).
Regarding claim 9, BICKMORE teaches the use of metal nanoparticles (NPs) comprising a metal selected from: gold, silver, and copper in paragraph [0009].
Regarding claims 10 and 11, BICKMORE teaches the metal nanoparticles comprise a core-shell structure (paragraph [0009]), and wherein the core comprises the metal (metallic core, paragraph [0009]) and the shell is a glass or ceramic (paragraph [0009] teaches the shell to be silica or SiO2, consistent with instant claim 11).
Regarding claim 15, BICKMORE teaches the use of spherical or ellipsoidal (paragraph [0045]) or nano rod (paragraph [0082]) geometries, reading on at least shaping including are spheres, rods, prisms and rice-shaped.
Regarding claim 16, modified BICKMORE teaches the use of copper, gold or silver nanoparticles in a plurality of shapes (including nanospheres and prisms made of gold) per paragraphs [0009], [0045] and [0082]. The instant application teaches the use of a plurality of metal nanoparticles (including gold nanorods/nanosphere/nanoprisms) to impart the claimed tint, color-neutrality, or variable light transmittance in the visible spectrum over portions of the window, in the paragraph bridging pages 5 and 6 of the instant specification as filed. While not directly taught, the nanoparticle components of BICKMORE will render the claimed properties based on the inclusion of the discussed nanoparticles.
Regarding claim 17, BICKMORE teaches the nanoparticles to scatter near-infrared, near-UV and visible light in paragraph [0016], reading on in addition to the portion of the near-infrared spectrum, at least one of a portion of the near ultraviolet spectrum and a portion of the visible spectrum that enters the combined nanoparticle polymer sheet is directed to an edge of the waveguide to be received by the at least one photovoltaic cell (based on the use of the scattering nanoparticles to redirect the light to the photovoltaic cells as in BICKMORE and ZHANG et al (specifically in ZHANG et al paragraph [0138] wherein nanometals are taught to direct light to the photovoltaic per figures 7-10).
Regarding claim 18, modified BICKMORE teaches a portion of near ultraviolet and/or a portion of near-infrared spectrum that enters the combined nanoparticle polymer sheet (paragraph [0138] of ZHANG et al) is directed to an edge of the waveguide to be received by the at least one photovoltaic cell (paragraph [0138] of ZHANG et al which teaches the use of nanometal components to redirect the light to the edges as shown in figures 7-10).
Regarding claim 19, modified BICKMORE teaches the metal nanoparticles are configured to scatter selected regions of the electromagnetic spectrum (same materials such as gold, silver, copper, BICKMORE, paragraph [0009]) to the frame (conduction via the polymer layer of BICKMORE, as shown in structure of paragraphs 7-10 based on the use of the layers as a waveguide), and the metal nanoparticles are of sizes and shapes (paragraphs [0009], [0045] and [0082]) that have a peak surface plasmon resonance frequency in near-infrared to near-ultraviolet regions of an electromagnetic spectrum (use of gold or silver or copper, reads on the surface plasmon resonance within this spectrum, per the disclosure of paragraph [0054] of BICKMORE).
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 1, and 6-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,177,766 (herein ‘766). Although the claims at issue are not identical, they are not patentably distinct from each other. ‘766 meets the claim limitations of instant claim 1 in claim 1 of ‘766. Instant claims 6-9 are taught in claim 1 of ‘766. Instant claim 10 is taught by claim 2 of ‘766. Instant claim 11 is taught by claim 3 of ‘766. Instant claim 12 is taught by claim 4 of ‘766. Instant claim 13 is taught by claim 5 of ‘766. Instant claim 14 is taught by claim 7 of ‘766. Instant claim 15 is taught by claim 8 of ‘766. Instant claim 16 is taught by claim 9 of ‘766. Instant claim 17 is taught by claim 11 of ‘766. Instant claim 18 is taught by claim 11 of ‘766. Instant claim 19 is taught by claim 1 of ‘766. All claims listed are therefore met by ‘766 in an anticipatory manner.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,088,245 (herein ‘245). Although the claims at issue are not identical, they are not patentably distinct from each other. ‘245 meets the claim limitations of instant claim 1 in claim 1 of ‘245. Instant claim 2 is taught in claim 2 of ‘245. Instant claim 3 is taught in claim 3 of ‘245. Instant claim 4 is taught in claim 4 of ‘245. Instant claim 5 is taught in claim 5 of ‘245. Instant claim 6 is taught in claim 6 of ‘245. Instant claim 7 is taught in claim 7 of ‘245. Instant claim 8 is taught in claim 8 of ‘245. Instant claim 9 is taught in claim 9 of ‘245. Instant claim 10 is taught in claim 10 of ‘245. Instant claim 11 is taught in claim 11 of ‘245. Instant claim 12 is taught in claim 12 of ‘245. Instant claim 13 is taught in claim 13 of ‘245. Instant claim 14 is taught in claim 14 of ‘245. Instant claim 15 is taught in claim 15 of ‘245. Instant claim 16 is taught in claim 16 of ‘245. Instant claim 17 is taught in claim 17 of ‘245. Instant claim 18 is taught in claim 1 of ‘245. Instant claim 19 is taught by claim 1 of ‘245. Instant claim 20 is taught in claim 18 of ‘245. All claims listed are therefore met by ‘245 in an anticipatory manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TOPPARI (WO2015044525), as supplied by the Applicant, also renders obvious instant claim 1 for example and is directed to the state of the art.
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/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 12/10/2025