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 .
Response to Arguments
Applicant’s arguments, see page 1-6, filed 12/19/2025, with respect to the rejection(s) of claim(s) 19 under 103 rejection have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of WO2016041926 in view of Tsukada et al.
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.
Claim 36 recites the limitation "the obtained article" in 8. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 19, 21-29, 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over WO2016041926 and further in view of Tsukada et al (Pat No. 6232376), hereinafter as ‘926, .
Regarding claim 19, 21, 32-33, ‘926 teaches solar module (article with two or more layer) having sealing sheet (layer element) [fig 1] which comprises:
polyethylene having density which overlapped the claimed range
no silanol condensation catalyst is present in the polymer composition (no SSC) (description section)
A silane group containing units are present as a comonomer of the polymer (P) as such that the silane group(s) containing units (b) are copolymerized as comonomer with ethylene monomer during the polymerization process of the polymer of ethylene (a) and radical initiator is used (description section)
the silane-modified ethylene-alpha olefin is formed during polymerization process with the radical initiator and silane group are present as a comonomer of the polymer P which is a polymer of ethylene as claimed and ‘926 teaches the claimed final product with two C atoms of said comonomer become part of the backbone of the polymer of ethylene (a). The recitation “during the polymerization process of the polymer of ethylene (a) via radical polymerization process whereby two C atoms of said comonomer become part of the backbone of the polymer of ethylene (a)” is the presence of process limitation on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens 145 USPQ 656 (CCPA, 1965).
‘926 teaches the claimed limitation as set forth above, but ‘926 does not teach hinder amine compound (HALS).
Tsukada et al teaches a polymer composition comprising polyethylene (col 2 lines 66-67), A alkoxyl silane (col 2 lines 1-19) and a hindered amine stabilizer (HALS) having claimed structure ( succinic acid dimethyl-1-(2-hydroxyethyl)-4-hydroxy-2,2,6,6-tetramethylpiperidine polycondensate) (col 6 lines 11-65)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify material of layer of ‘926 to be include HALS as taught by Tsukada for improving heat endurance, thermal aging resistance, and resistance to yellowing (col 1 lines 35-40).
Regarding claim 22, since modified ‘926 teaches the claimed HALS structure, it is considered the HALS having Ph of 9 or less. It is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 23, since modified ‘926 teaches the claimed HALS structure, it is considered the HALS having claimed molecular weight. It is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 24, since modified ‘926 teaches the claimed HALS structure, it is considered the HALS having claimed Tm. It is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 25-26, modified ‘926 teaches the polymer of ethylene (a) is a (a2) copolymer of ethylene with one or more polar comonomer(s) selected from (C1-C6)-alkyl acrylate (description section)
Regarding claim 27, modified ‘926 teaches the amount of the polar comonomer in the copolymer of ethylene from 5 to 18% mol (description section) which is within the claimed range.
Regarding claim 28, modified ‘926 teaches the claimed silane group with the amount of 0.01 to 1mol% part by weight which overlapped the claimed range [ description section] According to MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The recitation “produced… initiator” the presence of process limitation on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens 145 USPQ 656 (CCPA, 1965).
Regarding claim 29, since modified ‘926 teaches the claimed polymer of ethylene (a), it is considered the polymer of ethylene (a) having claimed properties. It is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 34, modified ‘926 teaches a glass front cover, a front encapsulation layer element, a photovoltaic element, a rear encapsulation layer element and a protective back layer element (back sheet) , wherein the front encapsulation layer element and rear encapsulation layer element is the layer element (LE) [fig 1]
Regarding claim 35, modified ‘926 teaches the protective front layer being made of glass [fig 1].
Claim(s) 36 are rejected under 35 U.S.C. 103 as being unpatentable over WO2016041926 and Tsukada et al (Pat No. 6232376) as applied to claim 19 above and further in view of Ikenaga et al (PG Pub 20130167911).
Regarding claim 36, modified ‘926 teaches the claimed limitation, but modified ‘926 does not teach the method as claimed.
Ikenaga et al teaches method of making a PV module comprising more than 2 layer and comprising steps of : assembling the layer element (LE) and one or more further layer elements to an assembly; laminating the layer elements of the assembly in elevated temperature to adhere the elements together; and recovering the obtained article comprising the laminated layer elements [para 197] (obtaining a laminate in which the back surface protective member 26, an encapsulating material sheet for solar cell, a plurality of solar cell elements 22, an encapsulating material sheet for solar cell and the surface protective member 24 are laminated in this order; pressing the laminate with a laminator or the like and heating the laminate; and further curing the aforementioned encapsulating material by heating the laminate after the above steps [para 197]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the assembly of modified ‘926 to be made of by the method of Ikenaga et al since the claimed subject matter merely combines familiar elements according to known methods and does no more than yield predictable results. See MPEP 2141 (III) Rationale A,KSR v. Teleflex (Supreme Court 2007).
Response to Arguments
Regarding argument filed on 05/08/2023 that Tsukuda et al teaches the composition containing silanol condensation catalyst, it is found not persuasive since Tsukuda et al only applied to teach the polymer containing HALS which having structure as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN M TRAN whose telephone number is (571)270-7602. The examiner can normally be reached Monday-Friday 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at 5712721307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/UYEN M TRAN/Primary Examiner, Art Unit 1726