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’s election without traverse of Group I, claims 1-9 and 12-13, in the reply filed on 06 May 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06 May 2026.
Claim Interpretation
Claim 2 recites the limitation "the particle sizes of silica colloidal particles" in line 2. It would appear superficially that there is insufficient antecedent basis for this limitation in the claim; however, a silica sol is necessarily made up of colloidal silica nanoparticles and particles necessarily have a size. Therefore, this limitation is not considered to be indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
Claims 1-3, 6-7, and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ehrensperger et al. (US 2015/0192707, previously cited).
Claim 1: Ehrensperger teaches a layered element such as a glazing made for example based on glass (paragraphs 0001-0002) (i.e. a glass stacking). The layered element has a central layer surrounded by two outer layers, an upper outer layer and lower outer layer (paragraph 0008). The lower external layer may be a transparent substrate that is preferably made of mineral or organic glass (i.e. a glass substrate) (paragraphs 0010-0011). The layered element has a central layer of dielectric or metallic materials (paragraph 0008), such as functional metallic layers having reflection properties in the solar radiation region and/or in the infrared radiation region of long wavelength (i.e. low-emissivity layers; i.e. being part of the central layer, the low-emissivity layers are between the glass substrate and the upper outer layer) (paragraphs 0202-0203). The layered element has an upper outer layer (i.e. an overcoat layer) (paragraph 0008), which is a sol-gel layer based on silica obtained according to a sol-gel process in which the sol-gel solution is deposited on a surface by means of the presence of water in the sol-gel solution leading to colloidal particles forming sols and then gels (i.e. a wet coating of a silica sol) (paragraphs 0063-0064). Ehrensperger does not specify the central layer (i.e. the low-emissivity layer) as being formed by chemical vapor deposition. However, this limitation is considered to be a product-by-process limitation which is not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP § 2113(I). In this respect, Ehrensperger teaches the central layer preferably is deposited by cathodic sputtering (i.e. a type of vapor phase deposition) (paragraph 0219).
Claims 2-3: Ehrensperger teaches does not directly teach the size of the silica colloidal particles. However, Ehrensperger teaches that the thickness of the sol-gel layer may be between 5 nm and 100 µm, obtained by one or more passes (paragraph 0148). This is considered to teach the size of silica colloidal particles of the sol-gel to be 5 nm or less in order to be capable of obtaining a thickness as small as 5 nm. This size lies within the instantly claimed range. See MPEP § 2131.03.
Claim 6: Ehrensperger teaches that the sol-gel solution may comprise at least one solvent chosen from water and organic solvents such as alcohols (paragraphs 0121-0122).
Claim 7: Ehrensperger teaches that alcohols are preferably chosen from C1-C6 alcohols (i.e. C2 alcohol is ethanol) (paragraph 0122).
Claims 12-13: Ehrensperger teaches the layered element (i.e. the glass stacking) may be used for solar protection glazings and/or heat insulation glazings of buildings or vehicles, also a building façade, etc. (paragraphs 0204 and 0243-0245). Use for a building or vehicle and being transparent is considered to be a window assembly of a building or vehicle, which would immediately be envisaged as a door, window, curtain wall, or vehicle window.
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.
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.
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.
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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrensperger et al. (US 2015/0192707, previously cited) as applied to claim 1 above.
Claim 8: The teachings of Ehrensperger regarding claim 1 are outlined above. Ehrensperger further teaches that the thickness of the sol-gel layer may be between 5 nm and 100 µm, obtained by one or more passes (paragraph 0148). This range overlaps the instantly claimed range, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not teaching a singular example of the instantly claimed glass stacking, it would have been obvious to one of ordinary skill in the art before the effective filing date due to the overlapping ranges, which are considered to be prima facie obvious.
Claim 9: Ehrensperger teaches that the device of the invention (i.e. the glass stacking) can obtain variable light transmission as a function of the choice of the central layer and of the thickness of the lower outer layer, a transmission haze of less than 5% and better still less than 1% (paragraphs 0150-0152). These range of haze overlaps the instantly claimed ranges. See MPEP § 2144.05. The limitation reciting “and/or” is considered where either the reflectivity or the haze values can meet the claim (i.e. it is not necessary to meet both conditions). Furthermore, as Ehrensperger discloses substantially identical materials as the instantly claimed glass stacking as outlined above, the visible light reflectivity is also considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrensperger et al. (US 2015/0192707, previously cited) as applied to claim 1 above, and further in view of Inoguchi et al. (US 2005/0003210).
Claim 4: The teachings of Ehrensperger regarding claim 1 are outlined above. Ehrensperger teaches a layered element having an upper outer layer (i.e. an overcoat layer) (paragraph 0008), which is a sol-gel layer based on silica obtained according to a sol-gel process in which the sol-gel solution is deposited on a surface by means of the presence of water in the sol-gel solution leading to colloidal particles forming sols and then gels (i.e. a wet coating of a silica sol) (paragraphs 0063-0064). The device of the invention (i.e. the glass stacking) can obtain variable light transmission as a function of the choice of the central layer and of the thickness of the lower outer layer, a transmission haze of less than 5% and better still less than 1% (paragraphs 0150-0152). However, Ehrensperger does not teach the instantly claimed water glass solution.
In a related field of endeavor, Inoguchi teaches a film that includes a matrix including an alkali metal oxide and a silicon oxide and functional particles dispersed in the matrix, wherein a substrate provided with the film maintains transparency when heated with a haze ratio of less than 1% (paragraphs 0006-0007 and 0012). In particular, the transparency of the substrate with the glass film is an important characteristic of the product when using a transparent substrate and heating of the substrate becomes unavoidable when bending and/or tempering for use as window glass for vehicles (paragraph 0005) (i.e. a window glass for vehicles is considered to be an intended use of the transparent substrate with glassy film). Inoguchi teaches that it is preferable that a liquid composition including a silicate containing an alkali metal, and more specifically an alkali metal silicate for example water glass, is used to form the glassy film (paragraph 0018) and a silicon source such as colloidal silica may be added to the liquid composition (paragraph 0019). The alkali silicate includes Na and at least one selected from K and Li (i.e. a combination of sodium water glass solution and one of a lithium water glass solution and a potassium water glass solution) (paragraph 0020). This inclusion of sodium and at least one or lithium and potassium improves moisture resistance and chemical durability of the film (paragraph 0014).
As Ehrensperger and Inoguchi both teach a silicon oxide based film coated on a substrate (i.e. a glass stacking), they are analogous. Furthermore, both references teach the coated glass as being for use as window glass for vehicles, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the silica sol-gel layer of Ehrensperger to include alkali silicate as taught by Inoguchi because this is considered to be a simple substitution of one known element (i.e. coating) for another to obtain predictable results and also because Inoguchi teaches the sodium and at least one of lithium or potassium improves moisture resistance and chemical durability of the film, and one would have had a reasonable expectation of success.
Claim 5: Inoguchi teaches that typical water glass can be expressed as Na2O∙nSiO2, wherein n is a positive number for example in the range of 2 to 4. The coefficient “n” corresponds to the instantly claimed water glass modulus (consistent with the definition in the paragraph spanning p. 8-9 of the instant specification), and the value of 2 to 4 overlaps the instantly claimed range. See MPEP § 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784
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