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 with traverse of Group I, claims 1-19, in the reply filed on 27 March 2026 is acknowledged. The traversal is on the ground(s) that the two Groups overlap in scope and a search of both would not pose an undue search and/or examination burden. This is not found persuasive because for purposes of the initial requirement, a serious burden on the Examiner may be prima facie shown if the Examiner shows by appropriate explanation of separate classification, or separate status in the art, or a different field of search (as defined in MPEP § 808.02). The restriction requirement meets this requirement. While that prima facie showing may be rebutted by appropriate showings or evidence by the Applicant, an unsupported statement by Applicant that no serious burden would exist in the examination of all pending claims does not qualify as an “appropriate showing” or “evidence”. See MPEP § 803.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 14 is objected to because of the following informalities: Claim 14 recites, “wherein the base layer comprises s first film…” and should be “comprises a first film”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-13 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Canova et al. (US 2016/0229741).
Considering claim 1, Canova teaches a glass or glass ceramic coated with a stack of thin layers (abstract). Examples are taught of a layering system including an example of glass substrate/SiNx/SiOx/ITO/SiOx/SiNx/SiOx/Ti (Paragraph 58) which anticipates the instant coating where the first SiNx is considered the claimed base layer, the first SiOx is considered the claimed first protective layer, the ITO layer is the claimed transparent oxide layer, and the second and further SiOx and SiNx layers may be considered the claimed second protective layer (Paragraphs 19 and 58). As such, Canova anticipates that which is claimed.
Considering claims 2-3, Canova teaches SiOx for the 2nd and 5th layers (Paragraph 58) and where SiOx (i.e. silica) also comprises aluminum (Paragraph 117) (e.g. silicon aluminum oxide).
Considering claims 4-11, Canova is considered to meet the instant claims as the recitation of first and second stabilizing layers is recited as optional and therefore not required.
Considering claims 12-13, Canova teaches where the conductive oxide is indium tin oxide (e.g. tin-doped indium oxide) as well as where it may be gallium-doped zinc oxide, fluorine-doped tin oxide, aluminum-doped zinc oxide, etc. (Paragraph 19).
Considering claim 15, Canova teaches a glass or glass ceramic coated with a stack of thin layers (abstract). Examples are taught of a layering system including an example of glass substrate/SiNx/SiOx/ITO/SiOx/SiNx/SiOx/Ti (Paragraph 58) which anticipates the instant coating where the first SiNx is considered the claimed base layer, the first SiOx is considered the claimed first protective layer, the ITO layer is the claimed transparent oxide layer, and the second and further SiOx and SiNx layers may be considered the claimed second protective layer which comprise silica (Paragraphs 19 and 58). As such, Canova anticipates that which is claimed.
Considering claims 16-17, Canova is considered to meet the instant claims as the recitation of first and second stabilizing layers is recited as optional and therefore not required.
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.
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 14 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Canova et al. (US 2016/0229741) as applied to claims 1 and 15 above.
Considering claims 14 and 18, the teachings of Canova as applied to claims 1 and 15 are outlined above. In addition, Canova teaches where the first layer adjacent to the substrate is a thin homogenizing layer (e.g. base layer) which comprises tin, titanium, etc. and alloys thereof (paragraph 35) which at least partially oxidizes (Paragraph 31).
While not expressly teaching a singular example of the claimed coated article with a base layer of a tin oxide this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Canova as this is considered a combination of a conventionally known oxidized thin homogenizing layer material with a layer stack known to afford a low-e coating and one would have had a reasonable expectation of success.
Considering claim 19, Canova is considered to meet the instant claims as the recitation of first and second stabilizing layers is recited as optional and therefore not required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xu et al. (US 2020/0109082) and Ma et al. (US 2020/0309997) teach coatings similar to that which are claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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