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.
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 113-115, 118-126, 128, 129, 131 and 132 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 17-19, 22-24, 34, 36, 43, 45 and 52 of copending Application No. 18/632,364. Although the claims at issue are not identical, they are not patentably distinct from each other because current claim 113 corresponds to a combination of claims 1, 7, 19, 23 and 36 of ‘364 where a vacuum insulating panel comprising: a first substrate; a second substrate; at least one spacer provided in a gap between at least the first and second substrates, wherein the gap is at pressure less than atmospheric pressure; a seal comprising a first seal layer and a second seal layer, wherein the first and second seal layers at least partially overlap each other as viewed in a direction normal to a plane of the first substrate; wherein the first seal layer comprises from about 40-80 wt.% tellurium oxide; wherein the second seal layer comprises boron oxide and/or bismuth oxide, and has a melting point at least 100 degrees higher than a melting point of the first seal layer; wherein a thermal conductivity of the first substrate is less than a thermal conductivity of the second seal layer; and wherein the first seal layer has a density of from about 2.8-4.0 g/cm³, the second seal layer has a density of from about 3.0-4.2 g/cm³, and the density of the second seal layer is greater than the density of the first seal layer.
Current claims 114 and 115 correspond to claim 17 of ‘364 where the second seal layer has a thermal conductivity of from 0.80 to 1.90 W/mK, and wherein a calculated ratio of the thermal conductivity of the second seal layer to the thermal conductivity of the first substrate is 0.368-1.25. Current claim 118 corresponds to claim 24 of ‘364 where the tellurium oxide comprises TeO4 and TeO₃. Current claim 119 corresponds to claim 23 of ‘364 where the first seal layer comprises from about 40-70 wt.% tellurium oxide. Current claim 120 corresponds to claim 22 of ‘364 where the first seal layer further comprises vanadium oxide, and wherein the first seal layer by wt.% comprises more tellurium oxide than vanadium oxide. Current claim 121 corresponds to claim 34 of ‘364 where the seal further comprises a third seal layer comprising bismuth oxide and/or boron oxide, and the first seal layer being located between at least the second and third seal layers.
Current claim 122 corresponds to claim 52 of ‘364 where the density of the second seal layer is at least about 0.20 g/cm³ greater than the density of the first seal layer. Current claim 123 corresponds to claim 43 of ‘364 where the first and second substrates comprise glass, and the first and second substrates comprise tempered glass substrates or heat strengthened glass substrates. Current claim 124 corresponds to claim 45 of ‘364 where the panel is configured for use in a window.
Current claim 125 corresponds to a combination of claims 1, 7, 19, 23 and 36 of ‘364 where a vacuum insulating panel comprising: a first substrate; a second substrate; at least one spacer provided in a gap between at least the first and second substrates, wherein the gap is at pressure less than atmospheric pressure; a seal comprising a first seal layer and a second seal layer, wherein the first and second seal layers at least partially overlap each other as viewed in a direction normal to a plane of the first substrate; wherein the first seal layer comprises from about 40-80 wt.% tellurium oxide; wherein the second seal layer comprises boron oxide and/or bismuth oxide, and has a melting point at least 100 degrees higher than a melting point of the first seal layer; wherein a thermal conductivity of the first substrate is less than a thermal conductivity of the second seal layer; and wherein the first seal layer has a density of from about 2.8-4.0 g/cm³, the second seal layer has a density of from about 3.0-4.2 g/cm³, and the density of the second seal layer is greater than the density of the first seal layer.
Current claim 126 corresponds to claim 17 of ‘364 where the second seal layer has a thermal conductivity of from 0.80 to 1.90 W/mK, and wherein a calculated ratio of the thermal conductivity of the second seal layer to the thermal conductivity of the first substrate is 0.368-1.25. Current claim 128 corresponds to claim 18 of ‘364 where the second seal layer has a thermal conductivity of from about 1.12 to 1.30 W/mK, and the first seal layer has a thermal conductivity greater than about 0.80 W/mK. Current claim 129 corresponds to claim 23 of ‘364 where the first seal layer comprises from about 40-70 wt.% tellurium oxide. Current claim 131 corresponds to claim 52 of ‘364 where the density of the second seal layer is at least about 0.20 g/cm³ greater than the density of the first seal layer. Current claim 132 corresponds to claim 7 of ‘364 where the second seal layer has a melting point at least 100 degrees higher than the melting point of the first seal layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 113, 116, 117 and 127 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 19, 23 and 36 of copending Application No. 18/632,364 in view of Meis et al. (US 2015/0103867 A1). Current claims 113, 116, 117 and 127 correspond to a combination of claims 1, 7, 19, 23 and 36 of ‘364 where a vacuum insulating panel comprising: a first substrate; a second substrate; at least one spacer provided in a gap between at least the first and second substrates, wherein the gap is at pressure less than atmospheric pressure; a seal comprising a first seal layer and a second seal layer, wherein the first and second seal layers at least partially overlap each other as viewed in a direction normal to a plane of the first substrate; wherein the first seal layer comprises from about 40-80 wt.% tellurium oxide; wherein the second seal layer comprises boron oxide and/or bismuth oxide, and has a melting point at least 100 degrees higher than a melting point of the first seal layer; wherein a thermal conductivity of the first substrate is less than a thermal conductivity of the second seal layer; and wherein the first seal layer has a density of from about 2.8-4.0 g/cm³, the second seal layer has a density of from about 3.0-4.2 g/cm³, and the density of the second seal layer is greater than the density of the first seal layer. ‘364 does not teach thermal diffusivity; however, Meis teaches an adhesive material which exhibits a thermal diffusivity of no greater than about 10x10-3 cm2/s or no greater than about 5x10-3 cm2/s [0052]. It would be obvious to combine the adhesive material of Meis and the motivation for combining would be to control the insulation property of the panel.
This is a provisional nonstatutory double patenting rejection.
Claims 125 and 130 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 19, 23, 34, 36 and 41 of copending Application No. 18/632,364 in view of claim 40 of 18/654,040. Current claims 125 and 130 correspond to a combination of claims 1, 7, 19, 23 and 36 of ‘364 where a vacuum insulating panel comprising: a first substrate; a second substrate; at least one spacer provided in a gap between at least the first and second substrates, wherein the gap is at pressure less than atmospheric pressure; a seal comprising a first seal layer and a second seal layer, wherein the first and second seal layers at least partially overlap each other as viewed in a direction normal to a plane of the first substrate; wherein the first seal layer comprises from about 40-80 wt.% tellurium oxide; wherein the second seal layer comprises boron oxide and/or bismuth oxide, and has a melting point at least 100 degrees higher than a melting point of the first seal layer; wherein a thermal conductivity of the first substrate is less than a thermal conductivity of the second seal layer; and wherein the first seal layer has a density of from about 2.8-4.0 g/cm³, the second seal layer has a density of from about 3.0-4.2 g/cm³, and the density of the second seal layer is greater than the density of the first seal layer. Current claim 130 also corresponds to a combination of claims 34 and 41 of ‘364 where the seal further comprises a third seal layer comprising bismuth oxide and/or boron oxide, the first seal layer being located between at least the second and third seal layers, wherein the second seal layer have a melting point higher than the melting point of the first seal layer. ‘364 does not teach the third seal layer have a melting point higher than the melting point of the first seal layer; however, claim 40 of ‘040 recites the third seal layer have a melting point higher than the melting point of the first seal layer.
This is a provisional nonstatutory double patenting rejection.
Pertinent Prior Art
DeRycke et al. (US 2021/0293079 A1).
Correspondence
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BS
September 22, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights