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 .
Election/Restrictions
Applicant elected with traverse Group I, claims 21-28, in the response filed 7/1/2026. The restriction requirement between Group I and Group II, claims 29-36, is withdrawn to advance compact prosecution as no serious search burden for Group II was encountered during a search for Group I. Claims 37-38 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/1/2026 on the following grounds:
A search for inventions I and III would overlap because both are directed to a coated article including a transparent conductive oxide. This argument is not persuasive. The only thing common to both inventions I and III is the inclusion of a transparent conductive oxide layer. Invention III can be used to make an entirely different product from Invention I, and Invention I can be made by an entirely different process from Invention III.
The restriction requirement between I and III is considered proper and hereby made FINAL.
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 21-36 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.
Claim 21 recites: “an oxide of titania and alumina” and “an oxide of alumina and silica”. It is unclear what oxide of titania, alumina, or silica refers to. Titania, alumina, and silica are already oxides; does oxide of titania, alumina, and silica refer to further oxidized species of these oxides, or to titania, alumina, and silica as they are? For purposes of examination, “oxide of” will be ignored. Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
Claim 24 recites: “wherein a composition of the first film is different than a composition of the second film”. This limitation is indefinite because the claim does not specify which first film is being compared with which second film (e.g., first film of the first dielectric layer and second film of the first dielectric layer or first film of the first dielectric layer and second film of the second dielectric layer). For purposes of examination, it is presumed the first and second films of each dielectric layer are being compared.
Claim 29 recites: “the first metal functional layer”. There is insufficient antecedent basis for this limitation. For purposes of examination, it is presumed to refer to the first metal layer.
Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
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.
Claims 28 and 36 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 28 and 36 recite: “further comprising a third protective film that is an outermost film positioned over and in direct contact with the second protective film”. However, claim 21, which claim 28 depends from, recites: “the second protective film is an outermost film”. Claim 29, which claim 36 depends from, recites the same language.
Claims 28 and 36 therefore fail to include all the limitations of the independent claim they depend from because the second protective film is no longer the outermost film, which is required by the independent claim. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 21-36 are rejected under 35 U.S.C. 103 as being unpatentable over Finley (US 2004/0241490) in view of Wu et al. (US 2015/0033988).
Regarding claims 21, 25 and 27, Finley teaches a coating stack of multiple layers on a substrate (¶ 43). The layers of the coating stack can be considered dielectric, primer, and/or protective layers (¶ 44). Finley teaches layers 58, 60, 46, 48, 62, 64, 66, 52, 54,
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68, 70, and 16, in that order, on a substrate (see Fig. 1). These layers may be considered the claimed dielectric and protective layers. For example, layers 58 and 64 are a zinc-stannate film and layers 60 and 62 are a zinc oxide film, either of which can be considered dielectric (¶ 67). Layer 16 contains titanium and aluminum as a protective layer (¶¶ 62, 68). Finley teaches the titanium and aluminum containing layers may contain oxides of titanium and aluminum or oxides of silicon and aluminum (¶ 71). Finley further teaches this protective layer may replace layer 56 (which encompasses 68 & 70 and is positioned directly under layer 16) (¶ 69). As such, layer 56 can be considered a first protective film and layer 16 can be considered a second protective film.
Finley does not expressly teach a first protective layer comprising alumina and silica, and a second protective layer comprising titania and alumina, Finley teaches that selection of the composition of the layer allows for choosing color and reflectance properties (¶ 72). In addition, Wu teaches a weather resistant coating which is the outermost coating (¶ 6) (and corresponds to the protective coating of Finley) comprises two oxide layers formed of hybrid oxides of at least two oxides chosen from silica, alumina, zirconia, titania, and ceria (¶ 7). Thus, it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to select a protective coating composition from oxides known to be suitable in the art for a protective coating based on the desired properties.
Finley does not expressly teach a function layer of the coating stack which includes a transparent conductive oxide. Finley teaches tuning the absorption properties of the coating stack by choosing between various materials for different layers (¶ 216). Wu teaches a multilayer thin film comprising an absorbing layer (¶ 57), including a layer of indium tin oxide, which is a conductive oxide, in the multilayer coating as a refractive index material or absorption layer (¶ 122, Table 2). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to include a layer of a transparent conductive oxide such as indium tin oxide, as taught by Wu, in the coating stack of Finley as an absorbing layer.
Regarding claims 22-24, layers 58 and 60 can be considered the first dielectric layer, and layers 62 and 64 can be considered the second dielectric layer (see Fig. 1). As Finley teaches layers 58 and 64 are a zinc-stannate film and layers 60 and 62 are a zinc oxide film, the first and second films are different from each other.
Regarding claim 26, Finley teaches the inclusion of a primer layer to protect the underlaying layers from further oxidation during the deposition process of an overlaying dielectric layer (¶ 17).
Regarding claim 28, Wu teaches a weather resistant coating which is the outermost coating (¶ 6) and can comprise zirconia (¶ 7).
Regarding claims 29, 33 and 35, Finley teaches a coating stack of multiple layers on a substrate (¶ 43). The layers of the coating stack can be considered dielectric, primer, and/or protective layers (¶ 44). Finley teaches layers 58, 60, 46, 48, 62, 64, 66, 52, 54, 68, 70, and 16, in that order, on a substrate (see Fig. 1). These layers may be considered the claimed dielectric and protective layers. For example, layers 58 and 64 are a zinc-stannate film and layers 60 and 62 are a zinc oxide film, either of which can be considered dielectric (¶ 67). Layer 46 is between the dielectric layers and is a metal film such as silver (¶ 67). Layer 16 contains titanium and aluminum as a protective layer (¶¶ 62, 68). Finley teaches the titanium and aluminum containing layers may contain oxides of titanium and aluminum or oxides of silicon and aluminum (¶ 71). Finley further teaches this protective layer may replace layer 56 (which encompasses 68 & 70 and is positioned directly under layer 16) (¶ 69). As such, layer 56 can be considered a first protective film and layer 16 can be considered a second protective film.
Finley does not expressly teach a first protective layer comprising alumina and silica, and a second protective layer comprising titania and alumina, Finley teaches that selection of the composition of the layer allows for choosing color and reflectance properties (¶ 72). In addition, Wu teaches a weather resistant coating which is the outermost coating (¶ 6) (and corresponds to the protective coating of Finley) comprises two oxide layers formed of hybrid oxides of at least two oxides chosen from silica, alumina, zirconia, titania, and ceria (¶ 7). Thus, it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to select a protective coating composition from oxides known to be suitable in the art for a protective coating based on the desired properties.
Regarding claims 30-32, layers 58 and 60 can be considered the first dielectric layer, and layers 62 and 64 can be considered the second dielectric layer (see Fig. 1). As Finley teaches layers 58 and 64 are a zinc-stannate film and layers 60 and 62 are a zinc oxide film, the first and second films are different from each other.
Regarding claim 34, Finley teaches the inclusion of a primer layer to protect the underlaying metal layer from oxidation during the deposition process of an overlaying dielectric layer (¶ 17).
Regarding claim 36, Wu teaches a weather resistant coating which is the outermost coating (¶ 6) and can comprise zirconia (¶ 7).
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Claims 21-25 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sternchuss et al. (US 2016/0002098) in view of Wu et al. (US 2015/0033988).
Regarding claims 21-22 and 27, Sternchuss teaches a multi-layer coating on a substrate (¶ 9). Finley teaches substrate 1 has two silica layers 8, 9 formed thereon (corresponding to the first dielectric layer), a transparent conductive oxide film 3, an intermediate film 4 which is made of silica, silicon nitride, or zinc tin oxide and corresponds to the second dielectric layer (¶¶ 113-115). Alternatively, intermediate layer 4 may correspond to the first dielectric layer, film 2 may correspond to a transparent conductive oxide layer, and film 6 (silicon nitride) and film 7 (silica) correspond to the second dielectric layer (¶¶ 113-115). Protective layer 10 forms the outermost layer and typically includes titanium oxide (¶ 115). Sternchuss does not expressly teach the claimed first and second protective layers and their compositions (¶ 72).
Wu teaches a multilayer thin film comprising an absorbing layer (¶ 57), including a layer of indium tin oxide, which is a conductive oxide, and a dual-layered protective coating (¶ 61). Wu teaches the coating (¶ 6) comprises two oxide layers formed of hybrid oxides of at least two oxides chosen from silica, alumina, zirconia, titania, and ceria (¶¶ 7, 126). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to modify the multilayer coating of Sternchuss to have the dual-layered protective coating disclosed in Wu because there is an expectation of success in using compositions known in the art for protective coatings over layers containing a transparent conductive oxide film.
Regarding claims 23-24, Sternchuss teaches films 8, 9, 4 and 6 may contain various materials not limited to silica, such as silicon nitride, zinc tin oxide (i.e., zinc stannate), and silicon aluminum nitride (¶¶ 32, 58-59), and the films are not necessarily the same material.
Regarding claim 25, Sternchuss teaches the transparent conductive oxide is an oxide such as indium tin oxide, aluminum-doped zinc oxide, or gallium-doped zinc oxide (¶ 16).
Regarding claim 28, Wu teaches a weather resistant coating which is the outermost coating (¶ 6) and can comprise zirconia (¶ 7).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Sternchuss et al. (US 2016/0002098) in view of Wu et al. (US 2015/0033988), as applied to claim 21, further in view of Finley (US 2004/0241490).
Regarding claim 26, the limitations of claim 21 have been addressed above. Sternchuss in view of Wu does not expressly teach the claimed primer layer. Finley teaches the inclusion of a primer layer to protect the underlaying layers from further oxidation during the deposition process of an overlaying dielectric layer (¶ 17).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jun (2015/0158763) discloses a multilayer coating of dielectric layers and an electroconductive layer in between the dielectric layers, where the electroconductive layer is a metal film or a doped oxide. Jun does not teach the claimed protective layer. Medwick (US 2016/0223729) discloses a coating stack similar to that disclosed by Finley.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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