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 § 103
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 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 1, 3, 6-7, 10, 12-20, 24-25, 33, 38, 40, and 45-52 are rejected under 35 U.S.C. 103 as being unpatentable over Klimov et al. (WO 2016/060643 A1 - see equivalent US 2017/0218264) in view of Li et al. (“Large Stokes Shift and High Efficiency Luminescent Solar Concentrator Incorporated with CuInS2/ZnS Quantum Dots”) and further in view of Lunt et al. (US 2014/0130864), as evidenced by Yang et al. ("Analysis and Calculation of Melting Performance for Low-Iron Glass").
Regarding claim 1, Klimov discloses a window (abstract L18) comprising: a frame ([0110] L5); first and second opposing sheets of glass which are disposed in said frame ([0085] L8-9, [0115] L2-3); a waveguide containing said first and second sheets of glass and a luminescent layer which is disposed between, and in direct contact with, a major surface of each of said first and second sheets of glass ([0067] L17-18; [0085], [0107], [0110], [0114], [0115]); a photovoltaic cell disposed in said frame ([0110] L3-5) and in optical communication with said waveguide ([0107]); wherein said luminescent layer includes a solid polymeric medium ([0085]) containing a plurality of fluorophores ([0088]), wherein said fluorophores are nanoscale particles ([0075]), and wherein said nanoscale particles are quantum dots ([0074] L3) having at least one dimension less than about 50 nanometers ([0080]), wherein said medium has an index of refraction that is within 30% of the index of refraction of said first and second sheets of glass ([0146] L8-9; refractive index of PMMA is 1.49); wherein said waveguide is at least partially transparent to light in the visible region of the spectrum ([0110] L1-3); and wherein said waveguide transmits a portion of the light emitted by the fluorophores to said photovoltaic cell ([0107]).
While Klimov does disclose the nanocrystal of the substantially transparent composition embodiments disclosed herein can comprise any suitable nanocrystal, and lists exemplary embodiments ([0009] L1-3); Klimov does not explicitly disclose said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared region of the spectrum.
Li discloses the use of CuInS2/ZnS quantum dots in a luminescent concentrator (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the luminescent concentrator of Klimov with CuInS2/ZnS quantum dots, as disclosed by Li, because as taught by Li, the CuInS2/ZnS QDs-LSC provides a promising way for high efficiency, nonhazardous and low cost solar energy (abstract).
Modified Klimov does not explicitly disclose the first and second sheets of glass contain less than 0.01% iron.
Lunt discloses a luminescent concentrator and further discloses wherein said first and second sheets of glass contain low iron glass ([0068]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use low iron glass, as disclosed by Lunt, for the first and second sheets of glass of modified Klimov, because as evidenced by Lunt, the use of low iron glass in a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using low iron glass in modified Klimov based on the teaching of Lunt.
As evidenced by Yang, the Fe2O3 content in low iron glass is about 0.01% (abstract). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
It is noted that with regard to the limitation “said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared or visible regions of the spectrum”, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 3, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation "wherein said luminescent layer absorbs at least 1%, at least 5%, at least 10%, at least 20%, at least 50%, or at least 70% of incident visible light", when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said medium is polymethyl methacrylate (Klimov - [0087]).
Regarding claim 7, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said medium contacts said first and second sheets of glass across first and second non-reflective interfaces (Klimov - [0085]).
Regarding claim 10, modified Klimov discloses all the claim limitations as set forth above.
The limitation “wherein said medium was cured in between said sheets of glass” is directed to the manner in which the device is made and it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
Regarding claim 12, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation "said plurality of fluorophores has a quantum yield of at least 20%, at least 40%, at least 60%, at least 80%, at least 90%, or near 100%", when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 13, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation "wherein said plurality of fluorophores has an emission peak between 400 nm and 1300 nm", when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 14, modified Klimov discloses all the claim limitations as set forth above.
Modified Klimov does not explicitly disclose wherein said plurality of fluorophores have a self-absorption of less than 50% of their photoluminescence across the integrated spectrum over distances of at least 1 mm, at least 1 cm, at least 1 m, or at least 10 m, however, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 15, modified Klimov discloses all the claim limitations as set forth above.
Modified Klimov does not explicitly disclose wherein said plurality of fluorophores have a Stokes shift of greater than 50 meV, greater than 100 meV, greater than 200 meV, or greater than 300 meV, however, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 16, modified Klimov discloses all the claim limitations as set forth above.
The limitation “wherein said medium was made by an extrusion process” is directed to the manner in which the device was made and it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
Regarding claim 17, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said first and second sheets of glass are curved (Klimov - [0110] L5-6).
Regarding claim 18, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said plurality of fluorophores have a photoluminescence (Klimov - [0142]), and further comprising at least one coating one at least one of said sheets of glass that selectively reflects said photoluminescence (Klimov - [0108]).
Regarding claim 19, modified Klimov discloses all the claim limitations as set forth above.
Modified Klimov does not explicitly disclose at least one coating on at least one of said sheets of glass that reduces the reflection of sunlight.
Lunt discloses a luminescent concentrator and further discloses at least one coating on at least one of said sheets of glass that reduces the reflection of sunlight ([0022], [0072]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include an anti-reflective coating, as disclosed by Lunt, on one of the glass sheets of modified Klimov, in order to maximize the amount of sunlight transmitted.
Regarding claim 20, modified Klimov discloses all the claim limitations as set forth above.
Modified Klimov does not explicitly disclose at least one low-emissivity coating on at least one of said sheets of glass.
Lunt discloses a luminescent concentrator and further discloses at least one low-emissivity coating on at least one of said sheets of glass ([0072]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a low-emissivity coating, as disclosed by Lunt, on at least one of the sheets of glass of modified Klimov, because as evidenced by Lunt, the use of a low-emissivity coating on a glass substrate of a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when including a low-emissivity coating on the glass substrate(s) of modified Klimov based on the teaching of Lunt.
Regarding claim 24, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses a vehicle comprising the window (Klimov - [0110]).
Regarding claim 25, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses a building structure comprising the window (Klimov - [0110]).
Regarding claim 33, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said quantum dots have a core-shell structure, and wherein said core includes CuInS2 (Li – abstract).
Regarding claim 38, modified Klimov discloses all the claim limitations as set forth above. Modified Klimov further discloses said waveguide causes light to propagate therethrough via total internal reflection (Klimov - [0155]).
Regarding claim 40, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation "wherein said plurality of fluorophores has a quantum yield of at least 80%", when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 45, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation "wherein said nanoscale particles exhibit size-dependent electronic and optical properties due to quantum confinement", when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 46, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation “said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared region of the spectrum”, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 47-50, Klimov discloses a window (abstract L18) comprising: a frame ([0110] L5); first and second opposing sheets of glass which are disposed in said frame ([0085] L8-9, [0115] L2-3); a waveguide containing said first and second sheets of glass and a luminescent layer which is disposed between, and in direct contact with, a major surface of each of said first and second sheets of glass ([0067] L17-18; [0085], [0107], [0110], [0114], [0115]); a photovoltaic cell disposed in said frame ([0110] L3-5) and in optical communication with said waveguide ([0107]); wherein said luminescent layer includes a solid polymeric medium ([0085]) containing a plurality of fluorophores ([0088]), wherein said fluorophores are nanoscale particles ([0075]), and wherein said nanoscale particles are quantum dots ([0074] L3) having at least one dimension less than about 50 nanometers ([0080]), wherein said medium has an index of refraction that is within 30% of the index of refraction of said first and second sheets of glass ([0146] L8-9; refractive index of PMMA is 1.49); wherein said waveguide is at least partially transparent to light in the visible region of the spectrum ([0110] L1-3); and wherein said waveguide transmits a portion of the light emitted by the plurality of fluorophores to said photovoltaic cell ([0107]).
While Klimov does disclose said nanoscale particles are quantum dots ([0074] L3) having at least one dimension less than about 50 nanometers ([0080]), Klimov does not explicitly disclose said nanoscale particles are quantum dots having a core/shell structure, and said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared or visible regions of the spectrum.
Li discloses the use of CuInS2/ZnS quantum dots in a luminescent concentrator (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the luminescent concentrator of Klimov with CuInS2/ZnS quantum dots, as disclosed by Li, because as taught by Li, the CuInS2/ZnS QDs-LSC provides a promising way for high efficiency, nonhazardous and low cost solar energy (abstract).
Modified Klimov does not explicitly disclose the first and second sheets of glass contain less than 0.01% iron.
Lunt discloses a luminescent concentrator and further discloses wherein said first and second sheets of glass contain low iron glass ([0068]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use low iron glass, as disclosed by Lunt, for the first and second sheets of glass of modified Klimov, because as evidenced by Lunt, the use of low iron glass in a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using low iron glass in modified Klimov based on the teaching of Lunt.
As evidenced by Yang, the Fe2O3 content in low iron glass is about 0.01% (abstract). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
It is noted that with regard to the limitation “said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared or visible regions of the spectrum”, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 51, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation “said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared region of the spectrum with a maximum intensity between 750 nm to 1000 nm,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 52, modified Klimov discloses all the claim limitations as set forth above.
With regard to the limitation “said plurality of fluorophores absorb light in at least portions of the UV and visible regions of the spectrum and emit light in at least a portion of the infrared region of the spectrum with a maximum intensity between 850 nm to 950 nm,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The limitation “wherein the emission peak is selected to correspond to a photovoltaic response band,” is directed to the manner in which the device was made and it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
It is further noted that with regard to the limitation “wherein the emission peak is selected to correspond to a photovoltaic response band,” a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Klimov et al. (WO 2016/060643 A1 - see equivalent US 2017/0218264) in view of Li et al. (“Large Stokes Shift and High Efficiency Luminescent Solar Concentrator Incorporated with CuInS2/ZnS Quantum Dots”) further in view of Lunt et al. (US 2014/0130864), as evidenced by Yang et al. ("Analysis and Calculation of Melting Performance for Low-Iron Glass") as applied to claim 1 above, and further in view of Mayer et al. (US 2012/0222723).
Regarding claim 37, modified Klimov discloses all the claim limitations as set forth above.
While modified Klimov does disclose methacrylate polymers (Klimov- [0086], [0087]), modified Klimov does not explicitly disclose said medium comprises ethylene-vinyl acetate.
Mayer discloses a luminescent concentrator and further discloses the medium is ethylene vinyl acetate or methacrylate polymers ([0056]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the polymer matrix of modified Klimov with ethylene vinyl acetate as disclosed by Mayer, because as evidenced by Mayer the use of ethylene-vinyl acetate or methacrylate polymers for a solid medium in a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using ethylene vinyl acetate for the polymer matrix of modified Klimov, based on the teaching of Mayer.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see pages 8-12, 18-19, and 28-30 of the Remarks, filed 04/22/2026, with respect to the 35 U.S.C. § 112(a) rejection of claim 51 and the 35 U.S.C. § 103 rejection of claim 21, respectively, have been fully considered and are persuasive. The rejections of claim 51 under 35 U.S.C. § 112(a) and claim 21 under 35 U.S.C. § 103 have been withdrawn.
Applicant's remaining arguments filed on 04/22/2026 have been fully considered but they are not persuasive. Specifically, in response to Applicant’s argument that the claims are directed to a specific laminated glass waveguide architecture in which a luminescent polymer layer is disposed between and in direct contact with two low-iron glass sheets, with index-matched, non-reflective interfaces that enable guided transport of emitted light to a photovoltaic device; claim 1 does not require index-matched, non-reflective interfaces, and Applicant’s argument is not commensurate with the structure recited. Additionally, as set forth in the previous response to Applicant’s arguments, Klimov discloses in paragraph [0085]: “The polymer matrix may comprise a polymer suitable for processing into any desired form, such as: a planar substrate or self-standing bulk material; a coating film, such as for a coating on glass or plastic substrates; an intercalated layer, such as between two glass or plastic substrates, typically planar substrates; a fiber, such as an optical fiber made of polymeric materials (plastic optical fiber); or a viscous fluid suitable for making transparent packaging.” Therefore, Klimov clearly discloses the polymer matrix may comprise a polymer suitable for processing into any desired form: such as an intercalated layer, such as between two glass or plastic substrates ([0085]).
Additionally, Klimov discloses in paragraph [0115] and depicts in Fig. 12, composition 730 is formed into a film which at least partially coats one or both of the slabs. Alternatively, composition 730 may be formed into a slab, which is placed between the two substrate slabs 710 and 720, or composition 730 may be a viscous fluid held between the slabs.
As set forth in the office action, modified Klimov does not explicitly disclose the first and second sheets of glass contain less than 0.01% iron.
Lunt discloses a luminescent concentrator and further discloses wherein said first and second sheets of glass contain low iron glass ([0068]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use low iron glass, as disclosed by Lunt, for the first and second sheets of glass of modified Klimov, because as evidenced by Lunt, the use of low iron glass in a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using low iron glass in modified Klimov based on the teaching of Lunt.
As evidenced by Yang, the Fe2O3 content in low iron glass is about 0.01% (abstract). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Applicant has not provided evidence of unexpected results from a window with a structure commensurate in scope with the limitations recited in the claims, including a window comprising a luminescent layer in direct contact with first and second sheets of glass containing less than 0.01% iron, in conjunction with the other limitations recited.
Klimov discloses composition 730 is formed into a film which at least partially coats one or both of the slabs. Alternatively, composition 730 may be formed into a slab, which is placed between the two substrate slabs 710 and 720, or composition 730 may be a viscous fluid held between the slabs (Fig. 12; [0115]).
Additionally, Lunt discloses in paragraph [0068] “Because glass absorption also plays a role, highly transparent low iron glasses such as Saint Gobain Diamont, Planilux and Schott BF33, are preferred.”
Based on these teachings, Applicant’s arguments directed to lamination and low-iron glass are not persuasive because both features are known in the art of luminescent concentrators based on the teachings of Klimov and Lunt.
Absent a showing of unexpected results achieved with a structure commensurate in scope with the structure claimed, based on the teachings of the prior art references cited in the office action, the claimed subject matter merely combines familiar elements according to known methods and does no more than yield predictable results.
Applicant has not presented evidence in the form of unexpected results which are achieved with a structure commensurate in scope with the structure recited in the claim(s).
Applicant argues that the primary references rely on polymer/air interfaces to achieve total internal reflection, whereas the claimed invention replaces those interfaces with glass/polymer/glass contacts, and that the Examiner’s rebuttal does not meaningfully address this incompatibility.
As set forth in the previous response to Applicant’s arguments, Klimov discloses in paragraph [0085]: “The polymer matrix may comprise a polymer suitable for processing into any desired form, such as: a planar substrate or self-standing bulk material; a coating film, such as for a coating on glass or plastic substrates; an intercalated layer, such as between two glass or plastic substrates, typically planar substrates; a fiber, such as an optical fiber made of polymeric materials (plastic optical fiber); or a viscous fluid suitable for making transparent packaging.” Therefore, Applicant’s argument that Klimov describes a single polymer or sol-gel slab (or, at most, a single coated pane) is not persuasive because Klimov clearly discloses the polymer matrix may comprise a polymer suitable for processing into any desired form: such as an intercalated layer, such as between two glass or plastic substrates ([0085]).
Additionally, Klimov discloses in paragraph [0115] and depicts in Fig. 12, composition 730 is formed into a film which at least partially coats one or both of the slabs. Alternatively, composition 730 may be formed into a slab, which is placed between the two substrate slabs 710 and 720, or composition 730 may be a viscous fluid held between the slabs.
Therefore, Applicant’s argument that the prior art relies on polymer/air interfaces is not persuasive because Klimov discloses glass/polymer/glass contact as set forth above.
Applicant’s arguments directed to an “air interface” are therefore considered moot based on Klimov’s teachings as set forth above.
Applicant argues the rejection relies on assembling elements from multiple references only after viewing Applicant’s disclosure.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to Applicant's argument that the references address different technical problems and operate under different design constraints, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Neither Lunt or Li teach away from Klimov’s teachings in paragraphs [0085] and [0115] of an intercalated layer, such as between two glass or plastic substrates.
It is noted that Applicant’s arguments directed to the refractive index environment created by glass/polymer/glass interfaces are addressed in the response above.
Applicant argues that none of the references teaches or suggests the use of EVA as a luminescent host material in the claimed laminated glass concentrator. In response to Applicant’s argument, as set forth in the office action, Mayer discloses a luminescent concentrator and further discloses the medium is ethylene vinyl acetate or methacrylate polymers ([0056]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the polymer matrix of modified Klimov with ethylene vinyl acetate as disclosed by Mayer, because as evidenced by Mayer the use of ethylene-vinyl acetate or methacrylate polymers for a solid medium in a luminescent concentrator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when using ethylene vinyl acetate for the polymer matrix of modified Klimov, based on the teaching of Mayer.
Given the teaching of Mayer which discloses a luminescent concentrator and further discloses the medium is ethylene vinyl acetate or methacrylate polymers ([0056]), it is noted that Applicant does not provide evidence of the assertion that one of ordinary skill in the art would not use EVA in place of PMMA. Applicant’s argument that commercial EVA interlayers are laminated at 110-140 °C is moot because neither the claims or the prior art references require lamination.
It is further noted that with regard to Applicant’s argument directed to the rejection of claim 37, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the cited references do not disclose the use of core/shell quantum dots within the laminated waveguide structure recited in claim 47.
In response to Applicant’s argument, Li discloses the use of CuInS2/ZnS quantum dots in a luminescent concentrator (abstract). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the luminescent concentrator of Klimov with CuInS2/ZnS quantum dots, as disclosed by Li, because as taught by Li, the CuInS2/ZnS QDs-LSC provides a promising way for high efficiency, nonhazardous and low cost solar energy (abstract).
In response to Applicant's argument that the prior art does not suggest using core/shell quantum dots to solve the problems introduced by the laminated architecture of claim 47, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is noted that Applicant’s arguments directed to air-clad systems are addressed in the response above.
Applicant argues that the claimed combination yields results not suggested by the prior art.
Unexpected results must be established by factual evidence; mere argument or conclusory statements in the specification do not suffice. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1977) (quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)). Applicant’s argument is not persuasive because Applicant’s assertions of unexpected results constitute mere argument (MPEP 716.01(c)).
Mere conclusions in the as-filed specification and Applicant’s Remarks, without evidence in support of the assertions, are insufficient in showing the criticality of the claimed range.
It is also well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in size, concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d)).
With regard to Applicant’s arguments directed to claims 48-50, the materials required by the claims are disclosed as set forth in the office action. Applicant has not provided evidence of unexpected results achieved from a structure which is commensurate in scope with the structure recited in claim 47 and the materials recited in claims 48-50.
Claim 50 recites “The window of claim 47, wherein said core includes at least one material selected from the group consisting of CuInS2, CuInSe2, CuInSexS2-x, AgInS2, AgInSe2, and AgInSexS2-x, wherein the shell includes at least one material selected from the group consisting of ZnS, ZnSeyS1-y and ZnSe, and wherein 0 ≤ x ≤ 2 and 0 ≤ y ≤ 1,” and as set forth in the office action, Li discloses the use of CuInS2/ZnS quantum dots in a luminescent concentrator (abstract), and therefore, satisfies the limitation recited in claim 50.
Applicant does not provide evidence supporting the assertion that the disclosed prior art structure, which contains CuInS2/ZnS quantum dots (Li – abstract), low-iron glass (Lunt – [0068]), and coated slabs of glass (Klimov – [0085], [0115], Fig. 12), would not necessarily have the claimed properties due to the similarity between the prior art structure and the structure claimed.
Additionally, Applicant has not presented evidence to overcome the established prima facie case of obviousness set forth in the office action: It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the luminescent concentrator of Klimov with CuInS2/ZnS quantum dots, as disclosed by Li, because as taught by Li, the CuInS2/ZnS QDs-LSC provides a promising way for high efficiency, nonhazardous and low cost solar energy (abstract).
Conclusion
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/TAMIR AYAD/ Primary Examiner, Art Unit 1726
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