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 .
Introduction
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn. The amendments to the claims have overcome the rejections under 35 U.S.C. § 112(b) that were made in the previous action with the exception of the rejection of claim 42 (see below).
The rejection of the claims as anticipated by Kajihara et al. (US 2024/0116800 A1) has been overcome by applicants’ arguments. The rejection in the previous Office action was based upon Example 11 of Kajihara et al. having amounts of components that fall within the ranges recited in claim 33 for the outer layer. Example 11 contains 1.0 mol% Al2O3, which is outside the claim 33 range.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 34 is objected to because of the following informalities:
In line 2, claim 34 recites “-0ppglass” instead of “glass.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 42 is 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.
In claim 42 (two occurrences), “an article” is indefinite because the claim is unclear as to which article (i.e., the substrate or the solar module) has the recited transmittance. Perhaps “an article” should be amended to “the outer ply.”
Claim Rejections - 35 USC § 103
Claims 33, 34, 37-43, 45 and 51-54 are rejected under 35 U.S.C. 103 as being unpatentable over Kajihara et al. (US 2024/0116800 A1).
Kajihara et al. is prior art for subject matter present disclosed in its foreign priority document, JP2021-109448. See MPEP 2154.01(b). JP2021-109448 was filed 30 June 2021, which is before the US effective filing date of the instant application of 15 June 2022.
A machine generated translation of JP2021-109448 accompanies this Office action. The rejection below cites to US 2024/0116800 A1 (‘800) and the translation of JP2021-109448 (‘448).
Kajihara et al. discloses a glass laminate comprising glass layers 11 (corresponding to the claimed outer layer) and 12 (corresponding to the claimed inner layer); the glass layers are joined and bonded with interlayer 13. See Figure 1 and paragraphs [0213]-[0214] of ‘800, and [0100] of ‘448. Either glass layer 11 or 12 may be the inventive glass of Kajihara et al. The other glass layer may be the same or different composition. See paragraph [0173] of ‘800 and [0087] of ‘448.
Kajihara et al. discloses the inventive glass has a composition in accordance with Example 11, which anticipates the glass composition limitations of claims 33 and 37 with the exception of the Al2O3 content. Example 11 contains 1 mol% Al2O3 whereas claims 33 and 37 recite a lower limit of 2 mol% Al2O3.
However, Kajihara et al. teaches the inventive glass composition may have 0 to 10 mol% Al2O3, and otherwise teaches a glass composition having overlapping ranges of components with the glass recited in instant claims 33 and 37. See the abstract of ‘800 and paragraph [0008] of ‘448. Kajihara et al. teaches the sum of SiO2, Al2O3 and B2O3 is 70 to 95 mol%. See paragraph [0093] of ‘800 and [0045] of ‘448. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Kajihara et al. does not specifically disclose (R2O+R’O) ≥ Al2O3 or the ratio (R2O + R'O) >Al2O3 0.80 < (1 - [(2R2O + 2R'O)/(SiO2 + 2A12O3 + 2B2O3)]) < 0.93. However, the general ranges of Kajihara et al. encompass glasses which both have and do not satisfy these formulas. It would have been prima facie obvious to have formed any of these glass compositions working within the general composition taught by Kajihara et al., including glasses which satisfy and do not satisfy the formulas, lacking a showing of secondary considerations associated with the claimed formulas.
The other glass layer may have a glass composition of traditional glasses such as an alkali aluminosilicate or soda lime glass. See paragraph [0174] of the ‘800 and paragraph [0088] of ‘488. The other glass will inherently stiffen the other glass ply to bending forces applied thereto.
The interlayer is polymeric (paragraph [0215] of ‘800 and [0100] of ‘448) and will inherently dampen “transmission of cracks from the outer ply to the inner ply,” because the structure of the laminate is identical to the presently claimed structure.
Kajihara et al. does not teach the laminate is a “solar module substrate.” However, the article of the Kajihara et al. is deemed to be capable of use in a solar module because there is no structural difference between the articles.
One of ordinary skill in the art would have expected the glass of Kajihara et al. to possess the properties recited in instant claims 34 and 43 because the glasses have overlapping ranges of components with the instant claims.
As to claim 38, Kajihara et al. teaches each glass layer may have the same or different thickness, and that either glass ply may be ion exchange strengthened. See paragraph [0175] and [0207] or ‘800 and [0094] and [0097]-[0098].
Kajihara et al. differs from claim 38 by failing to expressly teach the combination of a thicker outer ply and an inner ply that is ion exchange strengthened.
It would have been obvious to one of ordinary skill in the art to have employed any combination of thicker and thinner glasses, and ion exchange and non-exchange glasses in accordance with the teachings of Kajihara et al. The rationale for doing so is the simple substitution of one element for another element to achieve predicable results. See MPEP 2143 I.B.
As to claims 39-41, Kajihara et al. teaches the first and second glass plies may have a thickness of 0.5 to 3.70 mm. See paragraphs [0205]-[0206] of ‘800 and [0093]-[0094]. This range of thicknesses overlaps the ranges of thickness recited in instant claims 39-41. Kajihara et al. teaches that each glass layer may have the same or different thickness. See paragraph [0175] and [0207] or ‘800 and [0094] and [0097]-[0098].
Kajihara et al. differs from claims 39-41 by failing to expressly teach the specifically claimed combination of a thicker and thinner plies. However, the general ranges of Kajihara et al. overlap the recited thickness, and the thicknesses may be the same or different. It would have been obvious to one of ordinary skill in the art to have employed any combination of thicker and thinner glass plies as suggested by Kajihara et al. The rationale for doing so is the simple substitution of one element for another element to achieve predicable results. See MPEP 2143 I.B.
The limitations of claim 42 can be found in claims 16 and 17 of ‘800 and claims 14 and 15 of ‘448 of Kajihara et al.
As to claims 45-46, Kajihara et al. teaches the glass may be curved (paragraph [0213] of ‘800 and paragraph [0099] of ‘448) but fails to disclose the specific curvatures recited in claim 45.
However, it has been held to have been within the level of ordinary skill in the art at the time of filing to have changed the shape of a prior art product. See MPEP 2144.04 IV.B. Therefore, it would have bene obvious to one of ordinary skill in the art at the time of filing to have curved the glass laminate of Kajihara et al. to a depth of at least 2 mm because it has been held to be within the level or ordinary skill in the art to have changed the shape of a prior art product.
As to claims 51-52, the example relied upon for anticipation do not have the amounts of Al2O3 or Na2O recited in the claims. However, Kajihara et al. teaches general ranges of Al2O3 or Na2O that overlap the claimed ranges. See the abstract in ‘800 and paragraph [0008] of ‘448.
Therefore, it would have been obvious at the time of filing to have selected from the overlapping portion of the ranges taught by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As to claim 53, Kajihara et al. teaches a range for Fe2O3 of 0.01 to 1.0 mol% (abstract of ‘800 and paragraph [0008] of ‘448), a laminate thickness of 2.30 to 5.30 mm (paragraphs [0206-0208] of ‘800 and [0095]-[0096]) and an inventive glass transmittance of greater than 75% or more (claim 7 of ‘800 and claim 7 of ‘448). Each of these ranges overlap the claimed ranges, and overlapping ranges have been held to establish prima facie obviousness.
As to claim 54, Kajihara et al. does not teach additional layers in the outer layer of the laminate. See Figure 1.
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Kajihara et al. (US 2024/0116800 A1) as applied to claim 33 above and further in view of Dohn et al. (US 2018/0154615 A1).
Kajihara et al. anticipates claim 33 for the reasons recited above. Kajihara et al. teaches the laminate may be curved but differs from claim 43 by failing to disclose a curvature depth of at least 2 mm and the inner ply has stress from being cold formed.
Dohn discloses a glass laminate having a 3D shape can be formed using a cold forming process. See paragraph [0086]. Additionally, the reference discloses that such a cold forming process can provide a high CS on an opposing surface of a glass sheet remote from interlayer 16, which can make this surface more resistant to fracture from abrasion. Id.
It would have been obvious to one of ordinary skill in the art at the time of filing to have formed the laminate of Bressler using a cold forming process in order to make the surface more resistant to fracture from abrasion.
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 33-34, 37-42, 45-46 and 51-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,951,713 (‘713). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-22 of the ‘713 completely encompasses all of the limitations of claim 33 except for the preamble limitations. In the preamble, claim 1 of the’713 patent recites an “article” whereas instant claim 33 recites a “solar module substrate.” The article of the ‘713 is deemed to be a substrate because the article has two plies connected by an interlayer. Moreover, the article of the ‘713 patent is deemed to be capable of use in a solar module because there is no structural difference between the article described by the ‘713 claims and the substrate recited in claim 33.
The limitations of instant claim 34 can be found in claim 2 of the ‘713 patent.
The limitations of instant claim 37 can be found in claim 5 of the ‘713 patent.
The limitations of instant claim 38 can be found in claim 6 of the ‘713 patent.
The limitations of instant claim 39 can be found in claim 7 of the ‘713 patent.
The limitations of instant claim 40 can be found in claim 8 of the ‘713 patent.
The limitations of instant claim 41 can be found in claim 9 of the ‘713 patent.
The limitations of instant claim 42 can be found in claim 10 of the ‘713 patent.
The limitations of instant claim 45 can be found in claim 11 of the ‘713 patent.
The limitations of instant claim 46 can be found in claim 12 of the ‘713 patent.
The limitations of instant claim 51 can be found in claim 12 of the ‘713 patent.
Claim 1 of the ‘713 patent teaches overlapping ranges of Al2O3 and B2O3 with the glass recited in claim 52. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claim 1 of the ‘713 patent teaches overlapping ranges of Fe2O3 with Fe2O3 range recited in claim 53, and claims 7 and 10 of the ‘713 teaches overlapping ranges of thickness and transmittance of the outer ply.
As to instant claim 54, claim 1 of the ‘713 does not suggest other glass layers or plies in the outer play, and therefore teaches the outer ply consists of the borosilicate glass.
Response to Arguments
Applicant’s arguments filed 20 March 2026 with respect to the rejection of claim 33 under 35 U.S.C. 102(a)(2) over Kajihara et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made above.
Conclusion
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/David Sample/Primary Examiner, Art Unit 1784