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 .
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.
Claim 7 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.
Initially, the terms “relatively high” and “relatively low” in claim 7 are relative terms which renders the claim indefinite. The terms “relatively high” and “relatively low” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, it is unclear how high or how low an index in the art would have to be in order to be considered “relatively high” or “relatively low”.
The claim is also rejected for being unclear because it is unclear how the dielectric multi-layer can comprise the light absorbing film (as a high refractive index film) as required by claim 7 when claim 6, from which claim 7 depends, requires the dielectric multilayer to be provided “on” the light absorbing film. How can the light absorbing film be forming the dielectric multi-layer as required by claim 7 and yet be a separate film under the dielectric multi-layer as required by claim 6 at the same time? Is there an additional light-absorbing film?
Based on the clarity of the claim, prior art cannot yet be applied as the scope and structure of the films in the claim are uncertain.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miyauchi et al. (US PN 5,942,331).
Regarding claim 1: Miyauchi et al. teach a film covered transparent base plate comprising a transparent base plate and a light-absorbing film on a principal surface of the plate (see abstract, Col. 1, lines 4-8 and Examples). The film includes a metal oxide phase and a metallic phase (see abstract, Examples).
Miyauchi’s metal oxide phase can be Fe2O3 and the metallic phase can be Au, Ag, etc. (see abstract and Examples) with Miyauchi even providing an Example of Fe2O3 with Au (See Example 26 for instance). Given that these are the same metal oxides and metallics disclosed by Applicants’ (see for instance Applicants’ par. 0032-0033), one having ordinary skill would reasonably conclude the same standard Gibbs energy relationship between the metal elements to be present (MPEP 2112).
Alternatively, it is additionally noted that Applicants appear to suggest that a combination of Fe2O3 with Ag is a preferred combination in obtaining a standard Gibb’s energy relationship as claimed (see Applicants’ par 0045-0047), and as Miyauchi allows for such a combination as shown above, again one having ordinary skill would reasonably conclude the same relationship to be present, or at the very least, for such a combination to be obvious.
Regarding claims 2-5: As mentioned, Miyauchi’s metal oxide can be Fe2O3 and Miyauchi’s metallic phase can be Au, Ag, etc. (see abstract and Examples).
Given that the above materials are the same as that disclosed by Applicants’ (see for instance Applicants’ par. 0032-0033 disclosing suitable oxides and metallics), one having ordinary skill would reasonably conclude the same resulting properties to be present (MPEP 2112).
Additionally, note that Applicants film is disclosed as having a metallic content of preferably 5-80mol% (see Applicants’ par 0054) and a ratio of metal/metal+oxide preferably being 0.3 to 0.8 (0049, 0054). Miyauchi teaches their metal oxide of Fe2O3 being at a content of 5-95wt% with their Au, Ag, etc. metallic content being 5-30wt% which allows for amounts and ratios overlapping with that disclosed by Applicants’ (see for instance abstract and Examples).
For instance, but not limited to, see Miyauchi’s Examples demonstrating contents allowed for by Miyauchi’s disclosed ranges such as that showing a Fe2O3 metal oxide phase being at 84.9wt% with a metallic Au phase being at 16.1wt% (see Example 26 in Table 1 for instance) which converts to (approx.) 87mol% oxide and 13mol% metallic (see calculation below).
84.9g Fe2O3 (1mol/159.69g FW of Fe2O3) =0.53 mol
16.1g Au (1mol/ 196.97g FW of Au) = 0.08mol
0.53mol Fe2O3 + 0.08mol Au = 0.61 total mol
0.53mol Fe2O3/ 0.61 total mol = 0.87 x 100 = 87mol%
0.08mol Au / 0.61 total mol = 0.13 x 100 = 13mol%
Given that Miyauch’s oxide and metallic materials are the same as disclosed by Applicants’ and Miyauchi’s amounts allow for overlap and can even fall within that disclosed by Applicants, one having ordinary skill would reasonably conclude the same properties to result (MPEP 2112).
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.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as obvious over Miyauchi et al. (US PN 5,942,331) as applied to claim 1 above in view of Nakamura (USPN6686049) in further view of any one of US20070292659, US7833629 or US6924037
As discussed above, Miyauchi teaches the invention of claim 1. While Miyauchi may not disclose a dielectric multi-layer provided on their light absorbing film as required by claim 6 or a dielectric multilayer on the plate as required by claim 8, they do not exclude this either. Instead, Miyauchi only generally teaches a colored light absorbing film with a high refractive index on glass.
As Nakamura, who similarly teaches a colored light absorbing film with a high refractive index on glass, discloses the desire to provide a low index dielectric thereon for antireflection purposes (see entire disclosure), it would have been obvious to one having ordinary skill at the time of invention to modify Miyauchi to include a low index dielectric on their high index film for antireflection purposes.
While the above may only be providing a dielectric single layer instead of a dielectric multi-layer on the colored absorbing film as required by claim 8 and may only be providing for a multilayer having one low index layer on a high index absorbing film and not necessarily alternating as required by claim 7, a recitation of a multi-layer and alternation is considered nothing more than a result of duplication of parts, and more specifically of duplicating/repeating the high index/low index sequence within Miyauchi, and it has been held by the courts that duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04).
In the instant case, the previous modification provides for a high index color absorbing dielectric layer/ low index dielectric sequence for antireflection and it is well known and conventional in the art of antireflection technology to repeat alternating high and low index layers for antireflection as desired (for instance see ‘ par 0002 in ‘659; see ‘037, and see ‘629 as a few examples of the general knowledge of repeating HI/LI sequences in the AR art). As such, it would have been obvious to one having ordinary skill in the art to further modify Miyauchi to duplicate/repeat their HI/LI sequence as desired for antireflection.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and upon filing an eTD to get over the Double Patenting below.
The following is a statement of reasons for the indication of allowable subject matter: While the closest prior art of Miyauchi teaches a film-covered transparent base plate having a transparent base plate and light-absorbing film meeting claim 1, the art fails to teach or render obvious a top plate for a cooking device comprising the film-covered transparent base plate wherein the film is on the underside surface. In contrast, Miyauchi’s film-covered transparent base plate is that of architectural and vehicle windows.
Additionally note that although Miyauchi’s film-covered transparent base plate is a colored film on glass and one may attempt to argue that given that there is prior art (see notice of references cited) directed to top plates for a cooking device comprising a colored film on an underside surface then such an application would have been obvious, this would be unreasonable.
Initially as mentioned above, Miyauchi’s film-covered transparent base plate is that of architectural and vehicle windows and gives no indication of using their film on top plates for cooking devices. Additionally, while the Examiner acknowledges that there may be prior art (see notice of references cited) directed to top plates for a cooking device comprising a colored film on an underside surface, it is initially noted that the films used in those references not only do not meet the requirements of claim 1 but the films taught therein are disclosed as requiring not just color but additional insulation properties, heat resistance, etc. required for cook top applications. As there is nothing in Miyauchi to indicate that their color film will have the properties required in cooking top plate applications nor any indication at all that their film would even be capable of the heat known to be generated by cooking devices, it would be unreasonable to assert it would have been obvious to take Miyauchi’s film used for architectural and vehicle glass and place it on the underside of a cooking top which is a completely different application, exposed to completely different conditions.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,151,966. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-18 of copending Application No. 18/721258 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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