DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 17-18 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only (see claim 17, lines 8 and 15). See MPEP § 608.01(n). Accordingly, claim 17 as well as claim 18 (which depends on claim 17) have not been further treated on the merits.
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.
Claims 1-16 are 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. It is first noted that the phrase "preferably" as recited in claim 1 (at line 3), claim 5 (at line 3), claim 8 (at line 3), claim 9 (at line 6), and claim 10 (at line 10) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention, particularly given that in the case of claims 1 and 9, the “preferably” statement is a narrow range or limitation that falls within a broad range or limitation in the same claim. See MPEP § 2173.05(d) and (c), respectively.
It is also noted that in claim 1, “the optical characteristics” on lines 2-3, as well as “the % visible light transmission” and “the % transmission modulation” lack clear antecedent, particularly given that such optical properties may be determined by different methods.
Dependent claims 2-16 do not remedy the above and hence are indefinite for the same reasons. Further, dependent claim 9 recites the limitation "the solid binder" in line 5. There is insufficient antecedent basis for this limitation in the claim; while dependent claim 12 does not include a period indicating the end of claim and hence it is unclear as to what is meant to be fully encompassed by the claim.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 22 recites, “The liquid coating composition according to claim 19, wherein the thermochromic precursor component comprises a vanadium organometallic complex” (emphasis added), however, claim 19 recites, “A liquid coating composition comprising…a thermochromic precursor component, a binder component, and nanoparticles, wherein the thermochromic precursor component is a vanadium organometallic complex” (emphasis added). Hence, claim 22 does not further limit claim 19. 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.
For examination purposes with respect to prior art, the limitations following the phrase “preferably” in the claims have been interpreted as optional and hence have not been considered.
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.
(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.
Claims 8, 10, 12, 14, and 19-22 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as anticipated by Buskens (WO2020/242314A1, also printed as US2022/0306526A1, please refer to the US PG Pub document for the below cited sections). Buskens discloses a thermochromic material comprising vanadium (IV) oxide (VO2) and a solid component obtained from a precursor having film-forming properties (Abstract), wherein the thermochromic material exhibits a transmission increase in infrared (800-2400 nm) from above the switching temperature to below the switching temperature in comparison to a reference material that does not include said solid material (Paragraph 0006, thus comprising “monoclinic” VO2). Buskens discloses that the solid component comprises SiO2, ZrO2, TiO2, Al2O3, HfO2, MgF2, CaF2, an organosiloxane compound, or a mixture thereof, preferably SiO2 (Paragraph 0009), obtained from a precursor having film-forming properties such as a colloidal suspension of particles in a liquid medium (Paragraph 0012), or more specifically may comprise an organically modified silica material prepared by adding a silane compound to a silica-derived gel, for instance using an organosilane and alkoxysilane during a process wherein a sol is formed (Paragraph 0019). Buskens discloses that “transformation of a precursor in the form of a sol into (a part of) the thermochromic material may in some embodiments proceed through a stage wherein the precursor is or is comprised a gel” and that in “some embodiments a sol precursor for the solid component is transformed into a part of the thermochromic material without passing through a gel stage” (Paragraph 0012). Buskens discloses that the material comprises for instance at least 50 wt.% or at least 60 wt.% VO2, relative to total weight of the material, and at least 1.0 wt.% and/or less than 50 wt.% of one or more of SiO2, ZrO2, TiO2, Al2O3, HfO2, MgF2, CaF2, and organosiloxane compounds (Paragraph 0024), and that the material comprises for instance a ratio of V:Si atoms of at least 1.0 and preferably less than 20 (Paragraph 0025).
Buskens also discloses that a method of preparing a thermochromic material “comprises a step of thermally treating a precursor mixture under an atmosphere comprising oxygen at a level of less than 1000 ppm by volume and at a temperature of at least 350°C for a period of less than 60 minutes” wherein the “precursor mixture comprises a precursor for VO2 and the solid component or a precursor for the solid component,” for example, “if the solid component comprises silica, the precursor mixture comprises for instance silica, for instance in the form of silica nanoparticles” and the “precursor for VO2 comprises for instance an organometallic vanadium complex” (Paragraph 0035). Buskens discloses that the “precursor mixture comprises for instance less than 10 wt. % liquid components at room temperature at the initiation of the thermal treatment step, relative to total precursor mixture” and that the “precursor mixture is for instance prepared with a method comprising a step of drying a liquid precursor mixture so as to remove a liquid medium which is used e.g. as solvent and/or for suspending nanoparticles” (Paragraph 0035). Buskens specifically discloses an example wherein a vanadyl oxalate (as in instant claims 10, 19, and 22) solution (A) alone or premixed with a dopant solution (C) of tungsten hexachloride (optionally doped with a dopant as in instant claim 8) is mixed with a silica colloidal sol (B) prepared from a tetraethoxylsilane (TEOS, an alkoxysilane) sol-gel solution that has been aged for 24 h at room temperature, such that solution (B) comprising silica nanoparticles as well as an oligomerized alkoxysilane (as the claimed “binder component”, particularly as in instant claims 12 and 20) and thus the coating mixture contains a thermochromic precursor comprising a vanadium organometallic complex, a binder component, and a component containing or consisting of non-thermochromic nanoparticles (as in instant claims 8 and 10), wherein the liquid coating mixture is applied onto a glass substrate and then dried and subjected to a curing/thermal treatment step resulting in a coated substrate comprising a coating having thermochromic properties and comprising monoclinic VO2 and silica nanoparticles held together by an inorganic matrix/binder (Examples). Hence, given the working examples of Buskens and/or that Buskens clearly discloses that the solid component may be a mixture of SiO2 and an organosiloxane compound as noted above, with specific reference to an organically modified silica material prepared by adding a silane compound to a silica-derived gel using an organosilane and an alkoxysilane in the sol-gel process, the Examiner takes the position that Buskens discloses the claimed invention with sufficient specificity to anticipate instant claims 8, 10, 12, 14, 19-20, and 22.
With respect to instant claim 21, given the sol-gel composition of Solution B of the working examples of Buskens, particularly comprising 156.3 g TEOS, 347.3 g of isopropanol, 135 g of demineralized water, with 4.5 g of glacial acetic acid, and that the composition is aged for 24 hours at room temperature, the Examiner takes the position that the resulting silica nanoparticles present in the colloidal silica sol would inherently have an average particle size of at least 15 nm as recited in instant claim 21. Hence, absent any evidence to the contrary, instant claim 21 is anticipated by Buskens.
Claim Rejections - 35 USC § 102/103
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.
Claims 1-6, 8-16, and 19-23 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen (The preparation and characterization of transparent nano-sized thermochromic VO2-SiO2 films from the sol-gel process). Chen discloses a transparent thermochromic coating film provided as a single layer on a glass substrate produced from a sol-gel composition utilizing organic-metal precursors, VO(OC2H5)3 (vanadium oxy-triethoxide, i.e., a vanadium organometallic complex as in instant claims 10, 19, and 22) and Si(OC2H5)4 (tetraethylorthosilicate; TEOS) as starting materials as detailed in Section 2.1, wherein TEOS is first mixed with a solvent of equal amounts of CH3COOH and isopropanol, in a volumetric ratio of 20 to 1, blended for 30 mins, and then mixed in various volumetric proportions with a VO(OC2H5)3 solution in ratios ranging from 0 to 1 (reading upon the V:Si ratios of instant claims 13, 15, and 23), wherein after stirring for 24h (e.g., aging or curing of the sol-gel solution), a gel solution/suspension was obtained that was then spin-coated on the glass substrate, followed by drying and heat-treating to produce the thermochromic coating films (Entire document, particularly Abstract, Experimental Procedure). Chen discloses that the resulting thermochromic films contain VO2 nanoparticles (i.e., thermochromic monoclinic VO2 as in instant claims 1, 5, 8, and 16) and SiO2 nanoparticles (“nanoparticles” and/or “non-thermochromic nanoparticles” as in instant claims 1, 6, 8, 9, 10, 12, 15, 19, and 21) in a silica matrix (i.e., “binder component is converted during step D into a solid binder which holds together the nanoparticles and the monoclinic VO2 in the thermochromic material” as in instant claim 16 as well as instant claim 9, and also reading upon all thermochromic VO2 is formed in situ as in instant claim 2; the claimed wt% ranges of instant claims 3, 4, 9, and 11; that the binder component comprises an alkoxysilane or an oligomerized alkoxysilane as in instant claims 12 and 19-20, and that the binder component and the nanoparticles both contain Si atoms as in instant claim 14), with the mean particle size of the VO2 nanoparticles varying considerably with the Si/V mixing ratio as shown in Table 1, i.e., from 1500 nm to 30 nm for a Si/V mixing ratio of 0 to 1.0, respectively, while the SiO2 nanoparticles maintain a mean particle size of 40 nm for the Si/V ratios of 0.01, 0.05, 0.1, and 0.2, and is 30 nm for the Si/V ratios of 0.5 and 1 (as in instant claims 4, 6, 9, 11, and 21), wherein in combination with the increase in film thickness as shown in Table 1, implying that the addition of SiO2 sols in VO2 sols inhibits the agglomeration of VO2 particles during the gel formation stage (Results and Discussion sections); and given the transmission properties disclosed by Chen and that both the product and the process disclosed by Chen appear to be essentially the same as the instantly claimed invention given that the coating suspension disclosed by Chen includes a thermochromic precursor comprising a vanadium organometallic complex, a binder component provided by the silica sol, and silica nanoparticles present in the aged composition as evident from the Results and Discussion sections, the Examiner takes the position that the coating film(s) disclosed by Chen would exhibit properties as recited in instant claim 1, especially given that the claim does not clearly specify how said transmission properties are determined, and thus Chen anticipates instant claims 1-6, 8-16, and 19-23.
Alternatively, with respect to instant claim 1 as well as dependent claims 2-6 and 8-16 as they may depend upon instant claim 1, the Examiner takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the coating film(s) disclosed by Chen to exhibit transmission properties as recited in instant claim 1 such that alternatively, claims 1-6 and 8-16 would have been obvious over the teachings of Chen.
Claim Rejections - 35 USC § 103
Claims 8, 10, 12, 14, 19-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over DeLuca (US2009/0163647A1). DeLuca teaches hybrid metal oxides that are the condensation product of a silicon peroxide and a transition metal peroxide prepared by the procedure depicted in Fig. 1, wherein a metal oxide coating composition for forming the hybrid metal oxides includes, in a single liquid phase, organometallic compounds such as metal alkoxides of vanadium and/or silicon added at step 104 and/or step 112 and/or step 124, and organofunctional silanes added at step 112 and/or step 124 (Abstract, Fig. 1, Paragraphs 0004-0013, 0025-0034, 0066, 0129, 0130, and 0158), wherein the composition may further include nano-sized particles of metal oxide (Abstract), at least some of which are less than about 10 nm in diameter (Paragraphs 0005-0008) as part of the condensation product as well as nanoparticles such as silica nanoparticles as additives or other particles ranging in size from nanometers to microns (Paragraphs 0056-0057, 0066, and 0136) added at steps 112 and/or step 124; and given that DeLuca clearly teaches that the selection of the precursor components such as metal alkoxides of vanadium and/or silicon, as well as additives such as silica nanoparticles can be determined based upon the desired properties and particular end use with general reference to a film comprising a thermochromic effect (Entire document, particularly Paragraphs 0028, 0033, 0063, and 0086-0159), and that one having ordinary skill in the art before the effective filing date of the claimed invention would reasonably expect the vanadium peroxides, vanadium alkoxides and/or organometallic compounds of vanadium to provide a coating comprising monoclinic VO2 and having thermochromic properties, the Examiner takes the position that the claimed invention as recited in instant claims 8, 10, 12, 14, 19-20, and 22 would have been obvious over the teachings of DeLuca given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claims 1-6, 8-16, and 19-23 as well as claim 7 are (further) rejected under 35 U.S.C. 103 as being unpatentable over Chen, as applied above to claims 1-6, 8-16, and 19-23 and in further view of Zhao (Solution-Processed VO2-SiO2 Composite Films with Simultaneously Enhanced Luminous Transmittance, Solar Modulation Ability and Anti-Oxidation property) and/or Schläefer (Thermochromic VO2-SiO2 nanocomposite smart window coatings with narrow phase transition hysteresis and transition gradient width, cited on IDS filed 2/24/2025.)
The teachings of Chen are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory as discussed in detail above, particularly with respect to instant claims 8-16 and 19-23 that do not require the transmission properties as recited in instant claim 1, given that the coating composition would include silica nanoparticles as well as an alkoxysilane or an oligomerized alkoxysilane as a binder component as instantly claimed, the Examiner further notes that Chen clearly teaches that the transmission and thermochromic properties of the coating can be varied based upon the Si/V ratio and the resulting particle sizes in the coating film and that an increase in coating viscosity provides an increased film thickness (Results and Discussion sections), and further given that each of Zhao and Schläefer (Entire documents) teaches similar thermochromic VO2-SiO2 composite film wherein similar to Chen, the properties thereof including thickness may be varied by varying the starting materials including the Si/V ratio, with Zhao providing a clear teaching and/or suggestion that composite films may be tailored to provide desired light transmission and solar modulation ability with examples providing similar results to the claimed transmission modulation properties as recited in instant claim 1 (Results and Discussion sections), while Schläefer provides a clear teaching and/or suggestion that different silica sol compositions produced from TEOS with one specifically formulated to include silica nanoparticles therein, e.g., larger and/or more than those that may be inherently present an acid-catalyzed silica sol aged for 24hr as detailed in Section 2, can be utilized to provide different coating film properties (Entire document, particularly Sections 2-3). Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize routine experimentation as in Zhao and/or Schläefer in combination with Chen, to provide a thermochromic VO2-SiO2 composite film having the desired properties including desired coating thickness for a particular end use such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-16 and 19-23 would have been obvious over the teachings of Chen in view of Zhao and/or Schläefer, particularly given that each of Chen, Zhao, and Schläefer provide thicknesses on the same order of magnitude as instantly claimed and thus would have been obvious to one skilled in the art.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Harvey (US2019/0309421A1) discloses a self-curing mixed-metal oxides, a coating formed from the oxides, and a precursor composition for forming the coating, and a method of forming a mixed-metal oxide coating on a substrate by forming a precursor composition comprising at least two metal or metalloid-containing compounds provided as a liquid solution, allowing the compounds to at least partially react by hydrolysis and/or condensation, wherein the metal or metalloid compounds may be alkoxides, and the metal or metalloids thereof may be selected from a list including silicon, vanadium, and combinations thereof based upon the intended end use of the coating, wherein to further adjust the properties thereof, a dopant or additive such as nano-scale particles or scattering particles may be incorporated into the coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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