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 .
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.
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Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-32 of U.S. Patent No. 12377640. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-32 of U.S. Patent No. 12377640 teach all of the instant limitations.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-35 of U.S. Patent No. 12377640. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-35 of U.S. Patent No. 12377640 teach all of the instant limitations.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18 of U.S. Patent No. 12715199. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-18 of U.S. Patent No. 12715199 teach all of the instant limitations.
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under the doctrine of double patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to independent Claims 1 is Maloney et al (PGPub 2013/0111953 cited in IDS).
Maloney teaches a method of making a vacuum insulating panel (Abstract), the vacuum insulating panel comprising a first glass substrate (Figs. 3A-C- top substrate 110), a second glass substrate (Figs. 3A-C- bottom substrate 140), a plurality of spacers provided in a gap between at least the first and second glass substrates (Figs. 3A-C- enamels 120 and 150; [0014]), and a seal provided at least partially between at least the first and second glass substrates (Figs. 3A-C; [0046]), the seal comprising a first seal layer and a second seal layer (Figs. 3A-C; [0046]); [0024]- discussing a plurality of individually hermetically sealed cells); wherein the method comprises:
firing and/or sintering second seal material to form the second seal layer ([0024]- discussing a plurality of individually hermetically sealed cells);
providing first seal material for the first seal layer in a location contacting the second seal layer ([0024]- discussing a plurality of individually hermetically sealed cells);
heating the first seal material in order to form the first seal layer (Fig. 3B- laser energy 190; [0059]-[0060]); and
after forming the first seal layer, evacuating the gap to a pressure less than atmospheric pressure [0058].
The instant specification discloses the induced transient thermal stress in the glass substrate is achieved by this method is correlated to the laser speed (Fig. 17 of the instant specification), main seal layer width (Fig. 18 of the instant specification), laser beam size (Fig. 19 of the instant specification), and/or preheat temperature (Fig. 20 of the instant specification). Because the method disclosed by the art is substantially the same as that disclosed in the instant specification, the product necessarily and inherently achieves these properties, as evidenced by Figs. 17-20 of the instant specification thus meeting the instant limitation of said heating causes formation of the first seal layer so that induced transient thermal stress in the first seal layer does not exceed about 25 MPa.
The instant specification also discloses a seal layer having a density of from about 2.8-4.0 g/cm3 is achieved by this method with lead-free ceramic material in combination with high processing temperature (Paragraph [0102] of the instant published specification). Because the method disclosed by the art is substantially the same as that disclosed in the instant specification (See above; [0038]- discussing processing temperature; [0074]- discussing lead-free enamel compositions), the product necessarily and inherently achieves these properties, as evidenced by Paragraph [0102] of the instant published specification thus meeting the instant limitation of forming the first seal layer, in a manner so that (ii) the first seal layer has a density of from about 2.8-4.0 g/cm3.
Maloney does not specify after said heating, the first seal layer comprises from about 20-70 wt.% tellurium oxide and the second seal layer comprises bismuth oxide and/or boron oxide. Further, there is no teaching or suggestion to modify the method of Maloney to include after said heating, the first seal layer comprises from about 20-70 wt.% tellurium oxide and the second seal layer comprises bismuth oxide and/or boron oxide. Thus, the prior art does not teach or suggest the claimed invention.
Claims 2-8 would be allowable by virtue of the dependency on Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 9/21/26
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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