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.
Claims 5-6, 9-10, 15, and 17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 5-6, 9-10, 15, and 17 each recite a broad range of values, and the claim also recites one or more narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 5-6, 9-10, 15, and 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim 2 is rejected under 35 U.S.C. 112(d) 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.
Claim 2 recites the limitation wherein the functional coating consists of two metallic layers, which would seemingly exclude all other layers and films recited in base claim 1. In the interest of advancing prosecution, the disputed limitation will be considered to have all of the layers recited in claim 1, and has exactly two of the recited metallic layers (i.e. does not include 3 or more of the recited metallic layers as part of the extra layers allowed by the open language of “comprising”).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3-8, 13-15, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wagner et al. (US 2017/0059753).
Claim 1: Wagner teaches a solar control coating (i.e. a functional coating) having a plurality of phase adjustment layers and a plurality of metal functional layers (para. 0012) and a coated article of a first ply (i.e. a substrate) having a first major surface and an opposed second major surface with a solar control coating on at least one of the major surfaces of the first ply (para. 0015), and is disclosed to be located over at least a portion of the second major surface (para. 0056). The phase adjustment layers are nonmetallic layers such as dielectric or semiconductor materials (para. 0059) (i.e. the phase adjustment layers correspond to dielectric layers). The solar control coating includes a first phase adjustment layer (i.e. a first dielectric layer), a first metal functional layer (i.e. a first metallic layer), an optional first primer layer, a second phase adjustment layer and a third phase adjustment layer (i.e. a second dielectric layer; it is noted that additional layers are not excluded due to the open language of “comprising” and “comprises” recited for the instantly claimed coated article, functional coating, and second dielectric layer), a third metal functional layer (i.e. corresponding to the instantly claimed second metallic layer), an optional third primer layer (i.e. corresponding to the instantly claimed second primer layer), a fourth phase adjustment layer (i.e. corresponding to the instantly claimed third dielectric layer), and an optional protective layer (para. 0056; Fig. 1). As indicated in Fig. 1, these layers are arranged in the instantly claimed positions relative to other layers, and layers necessarily have a thickness (i.e. the first metallic layer comprising a first thickness and the second metallic layer comprising a second thickness). The second phase adjustment layer (i.e. part of the second dielectric layer) can be a multi-film structure, with a first film being a metal oxide such as zinc oxide or doped zinc oxide (para. 0094) and a second film can be an oxide of a metal alloy such as a zinc stannate (para. 0095). The third phase adjustment layer (i.e. part of the second dielectric layer; i.e. indirectly positioned over at least a portion of the second film of the second phase adjustment layer) can be a multi-film structure (para. 0107) with a first and/or third film (i.e. corresponding to the instantly claimed third and fifth films) of a metal oxide or doped metal oxide and a second film (i.e. corresponding to the instantly claimed fourth film) of an oxide of a metal alloy such as a zinc stannate (para. 0109). Wagner teaches that the solar control coating provides a 3 mm reference insulating glass unit (IGU) a solar heat gain coefficient (SHGC) of not greater than 0.3 (para. 0142; abbreviations defined in para. 0013), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 3: Wagner teaches that the solar control coating provides a 3 mm reference insulating glass unit (IGU) a solar heat gain coefficient (SHGC) of not greater than 0.3 (para. 0142; abbreviations defined in para. 0013), which lies within the instantly claimed range. See MPEP § 2131.03.
Claim 4: Wagner teaches the first phase adjustment layer (i.e. the first dielectric layer) may be a multi-film structure having a first film and a second film (para. 0068), wherein the first film can comprise zinc stannate (i.e. also considered to include tin oxide) (para. 0069) and the second film can be a metal oxide or doped metal oxide such as a zinc oxide (para. 0071).
Claim 5: Wagner teaches that the first phase adjustment layer (i.e. the first dielectric layer) may have a geometric thickness in the range of 20 nm to 50 nm, or for example 35-40 nm or 37-38 nm (para. 0067), and these example ranges lie inside of the instantly claimed range (i.e. the range of 22 nm to 41 nm, due to the indefiniteness outlined above). See MPEP § 2131.03.
Claim 6: Wagner teaches that the first metal functional layer (i.e. the first metallic layer) includes an infrared reflective film and an absorptive material (para. 0077) wherein the infrared reflective film may be silver, copper, gold, aluminum, etc. and mixtures or alloys thereof (para. 0081), the absorptive material can be silver, copper, gold, aluminum, etc. and mixtures or alloys thereof (paragraph 0082). The first metal functional layer can have a geometric thickness in the range of 5 to 25 nm, for example 11.5-12.5 nm (para. 0085) and this example range lies inside the instantly claimed range (i.e. the range of 10.5 nm to 16.5 nm due to the indefiniteness outlined above). See MPEP § 2131.03.
Claims 7-8: The films outlined above as corresponding to the first, third, and fifth film of the second dielectric layer are taught by Wagner to be a zinc oxide or doped zinc oxide (i.e. zinc oxide is considered a first material) and the films outlined above as corresponding to the second and fourth film of the second dielectric layer are taught by Wagner to be zinc stannate (i.e. zinc stannate is considered a second material) (see above; Wagner, paras. 0094-0095, and 0109). Zinc oxide and zinc stannate are different materials (i.e. the first material is different from the second material).
Claim 13: Wagner teaches that the primer layers (i.e. the first primer layer and the third primer layer that corresponds to the instantly claimed second primer layer) are deposited as a metal and some or all of the metal primer oxidizes during subsequent processing (para. 0086). The primer layers need not be the same material (i.e. are each independently selected from the materials) (para. 0086), where examples of materials include titanium, silicon, aluminum, vanadium, tungsten, tantalum, niobium, zirconium, manganese, chromium, nickel, indium, molybdenum, tin zinc (i.e. zinc tin), etc. and mixtures or alloys thereof (para. 0087).
Claim 14: Wagner teaches that the fourth phase adjustment layer (i.e. corresponding to the instantly claimed third dielectric layer as outlined above) can have a first film and a second film (para. 0125) (as indicated in Fig. 2, the first film is on the underlying primer layer outlined above as the instantly claimed second primer layer and the second film is on the first film) wherein the first film may be zinc oxide or doped zinc oxide and the second film may be zinc stannate (para. 0126).
Claim 15: Wagner teaches the fourth phase adjustment layer (i.e. corresponding to the instantly claimed third dielectric layer as outlined above) can have a geometric thickness in the range of 15 nm to 50 nm, for example 29 nm to 30 nm (para. 0124). This example range lies within the instantly claimed range. See MPEP § 2131.03.
Claim 19: Wagner teaches that the coated article of Fig. 2 (i.e. the solar control coating outlined above regarding claim 1) can be incorporated into an insulating glass unit (IGU) (i.e. a transparency as outlined by Wagner in para. 0054, hence a coated transparency) wherein a first major surface faces the building exterior and the second major surface faces the interior, and having a second ply having an outwardly facing major surface (No. 3 surface) and inwardly facing major surface (No. 4 surface) in keeping with conventional practice (i.e. the No. 3 surface faces the No. 2 surface as depicted in Fig. 3) (para. 0138). The second ply (i.e. second substrate) is spaced from the first ply (i.e. the first substrate) and can be connected in any suitable manner (i.e. are connected together) (para. 0139). The solar control coating (i.e. the functional coating) is depicted on the No. 2 surface in Fig. 3 but could be located on any of the other surfaces, for example the No. 3 surface (para. 0139). The remaining limitations recited in instant claim 19 pertain to the functional coating and are recited in instant claim 1, outlined above as the solar control coating taught by Wagner.
Claim 20: As Wagner teaches a substantially identical insulating glass unit and solar control coating (i.e. functional coating) as outlined above regarding instant claims 1 and 19, the method as recited in instant claim 20 is considered to also be taught by Wagner.
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.
Claims 9-12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 2017/0059753) as applied to claim 1 above.
Claim 9: The teachings of Wagner regarding claim 1 are outlined above. Wagner teaches a solar control coating having a plurality of phase adjustment layers and a plurality of metal functional layers (para. 0012). Wagner teaches the second phase adjustment layer (i.e. part of the second dielectric layer) can be a multi-film structure, with a first film being a metal oxide such as zinc oxide or doped zinc oxide (para. 0094) and a second film can be an oxide of a metal alloy such as a zinc stannate (para. 0095). The third phase adjustment layer (i.e. part of the second dielectric layer; i.e. indirectly positioned over at least a portion of the second film of the second phase adjustment layer) can be a multi-film structure (para. 0107) with a first and/or third film (i.e. corresponding to the instantly claimed third and fifth films) of a metal oxide or doped metal oxide and a second film (i.e. corresponding to the instantly claimed fourth film) of an oxide of a metal alloy such as a zinc stannate (para. 0109). As interpreted, the second phase adjustment layer and third phase adjustment layer (and any intervening layers) is considered to correspond to the instantly claimed second dielectric layer. Wagner teaches the second phase adjustment layer as having a thickness of 40-100 nm (para. 0092), a second functional layer including an infrared reflective film having a geometric thickness of 5-25 nm (paras. 0100 and 0102) and an absorptive film having a thickness of 0-2 nm (paras. 0100 and 0104), an optional second primer layer having a geometric thickness of 0.5-10 nm, and the third phase adjustment layer has a thickness of 45-100 nm (para. 0109). The sum of these layers equates to about 90.5-237 nm (based on the sum of all lower-end of ranges to the sum of all upper-end of ranges). 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 no demonstration of a criticality to the claimed ranges has been presented.
While not reciting specifically the instantly claimed range of total thickness for the instantly claimed second dielectric layer, it would have been obvious to one of ordinary skill in the art before the effective filing date because the sum of all layer thicknesses corresponding to the instantly claimed second dielectric layer overlaps the instantly claimed range, which is held to be prima facie obvious.
Claim 10: Wagner teaches the third metal functional layer (i.e. corresponding to the instantly claimed second metallic layer as outlined above) can be a single film or multi-film structure of an absorptive film and an infrared reflective film (para. 0115). The absorptive film can include silver, copper, gold, aluminum, etc. and combinations thereof (para. 0116) and the infrared reflective film may be a metallic silver film (para. 0118). The absorptive film can have a thickness of 1-10 nm, for example 2.5-4 nm (para. 0117) and the infrared reflective film can have a geometric thickness of 5-30 nm (para. 0119). A sum of these films making up the third metal functional layer is about 6-40 nm (calculated as a sum of the lower-end of the ranges to a sum of the upper-end of the ranges), which overlaps the instantly claimed range (i.e. the range of 11 nm to 18 nm due to the indefiniteness outlined above). See MPEP § 2144.05.
Claim 11: Wagner teaches that the first metal functional layer can have a geometric thickness (i.e. the first thickness) in the range of 5 to 25 nm, for example 11.5-12.5 nm (para. 0085). As outlined above regarding instant claim 10, the third metal functional layer (i.e. corresponding to the instantly claimed second metallic layer) is calculated to have a thickness (i.e. the second thickness) of about 6-40 nm (i.e. by summing the thicknesses of individual films of the layer). It would be obvious to one of ordinary skill in the art that the second thickness may be greater than the first thickness based on a comparison of the lower end of the ranges and the upper end of the ranges because the second thickness is higher in both comparisons.
Claim 12: Wagner teaches that the first metal functional layer can have a geometric thickness (i.e. the first thickness) in the range of 5 to 25 nm, for example 11.5-12.5 nm (para. 0085). As outlined above regarding instant claim 10, the third metal functional layer (i.e. corresponding to the instantly claimed second metallic layer) is calculated to have a thickness (i.e. the second thickness) of about 6-40 nm (i.e. by summing the thicknesses of individual films of the layer). Based on the substantial overlap of the two ranges but with the first range being lower than the second range, a ratio of the first thickness to the second thickness would overlap the instantly claimed ratio (for example, using just the lower-end of each range, a ratio of 5:6 is about 0.83:1). See MPEP § 2144.05.
Claim 16: Wagner teaches a first phase adjustment layer (i.e. the first dielectric layer), second and third phase adjustment layers along with intervening layers (i.e. the second dielectric layer), and a fourth phase adjustment layer (para. 0056), and phase adjustment layers are nonmetallic layers (para. 0059). The layer corresponding the instantly claimed first dielectric layer is the first phase adjustment layer, which may be a metal oxide, a mixture of metal oxides, or a metal alloy oxide (para. 0065). Being an oxide, the layer is considered to be substantially free of silicon nitride. Being a nonmetallic layer, the layer is considered to be substantially free of metallic zinc. The layers corresponding to the instantly claimed second dielectric layer include the second and third phase adjustment layers (i.e. oxides as outlined above regarding claim 1 and nonmetallic, and therefore considered to be free of silicon nitride and metallic zinc) and also include the second metal functional layer and second primer layer taught by Wagner and none of these layers require silicon nitride or metallic zinc (paras. 0100-0106). While not teaching explicitly that these layers are free of silicon nitride or metallic zinc, it would have been obvious to one of ordinary skill in the art before the effective filing date because silicon nitride and metallic zinc are not required materials for these layers, and one would have had a reasonable expectation of success.
Claim 17: Wagner teaches the solar control coating provides a 3 mm reference IGU visible light transmittance of not greater than 70% (para. 0144) which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 18: Wagner teaches examples have a UV transmittance varying from about 3.5% to about 8.1% (Table 2; UV(T) defined in para. 0171). The ultraviolet radiation (i.e. and thereby transmittance thereof) is over a range of wavelengths from 100 to 380 nm (para. 0028). The percent transmittance (i.e. transmission) and the range of wavelengths overlaps the instantly claimed ranges (i.e. for the limitation preceding “or”). See MPEP § 2144.05.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wagner et al. (US 2017/0059753) as applied to claim 1 above, and further in view of Medwick et al. (US 2002/0136905, previously cited).
Claim 2: The teachings of Wagner regarding claim 1 are outlined above. Wagner teaches a solar control coating having a plurality of phase adjustment layers and a plurality of metal functional layers (para. 0012). Each phase adjustment layer is formed of a plurality of films with one film being a zinc oxide or doped zinc oxide and another film being a zinc stannate. However, Wagner does not teach having exactly two metal functional layers (i.e. consists of two metallic layers, see claim interpretation of claim 2 above regarding 35 U.S.C. 112(d)).
In a related field of endeavor, Medwick teaches heat-reflective and solar-control glazing materials such as multilayered coatings and to articles such as windows and insulating glass units incorporating such coatings (para. 0002). Medwick teaches the coating includes a first anti-reflective layer (i.e. first dielectric layer) that preferably comprises one or more oxides of zinc and tin and may be a multifilm structure such as a zinc stannate film followed by a zinc oxide film (para. 0026). A first IR reflective layer is deposited of a metal such as silver, copper, gold, etc. (para. 0028). Optionally a first primer layer is deposited over the first IR reflective layer (para. 0030). A second antireflective layer is deposited having a first film of zinc oxide, a zinc stannate film, and another film of zinc oxide (paras. 0031-0032). A second IR reflective layer is deposited of the second antireflective layer (para. 0034). An optional second primer layer can be deposited over the second IR reflective layer (para. 0035). A third antireflective layer is deposited over the second primer layer and having a zinc oxide film and a zinc stannate film (para. 0036). An optional protective overcoat is deposited over the third antireflective layer (para. 0037). Medwick teaches the IG unit having the coating provides a visible light transmittance of less than 70% and a solar heat gain coefficient of less than 0.38 (para. 0039).
As Wagner and Medwick both teach solar control coatings having films of zinc oxide and zinc stannate surrounding and between metal IR reflective layers, they are analogous. Furthermore, Wagner and Medwick teach substantially identical visible light transmittance and solar heat gain coefficient for their respective coatings. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the solar control coating of Wagner to omit one of the metallic layers because Medwick teaches a substantially identical coating with only two metallic IR reflective layers while still providing substantially identical properties of visible light transmittance and solar heat gain coefficient, and one would have had a reasonable expectation of success. Furthermore, as Medwick teaches that the second antireflective layer allows some control over the aesthetics and solar-control performance of the coated article (para. 0031), it would have been obvious to one of ordinary skill in the art before the effective filing date as an obvious to try variation of reducing the number of IR reflective layers to two (i.e. two metallic layers) as taught by Medwick but with additional films of zinc oxide and zinc stannate in the second antireflective layer as Wagner teaches more of these layers overall in the coating (i.e. and specifically within the second antireflective layer would be a mere duplication of parts, see MPEP § 2144.04-VI-B) while Medwick teaches the second antireflective layer allows some control over the aesthetics and solar-control performance, and one would have had a reasonable expectation of success.
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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/KIM S. HORGER/Examiner, Art Unit 1784
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