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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 29, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claims 32 & 46. Claims 46 – 51 have been withdrawn. Claims 1 – 31, 35, & 39 have been cancelled. Claims 32 – 34, 36 – 38, & 39 – 45 are examined herein.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 32, 34, & 36 – 41 are rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. (WO 2004/011755 A1), in view of Stratienko (US 4,304,502 A).
WO 2004/011755 A1 was provided by Applicant with the IDS filed 2/03/2021
DE 4130823 A1 was provided by Applicant with the IDS filed 4/14/2021
With regard to claim 32, Bennison et al. teach a laminate of laminated glass (glazing) comprising at least one glass sheet, an opening extending through an opening extending through the glazing. A threaded receptor (“first bushing”) extends through an opening the glaze (pg. 2, lines 31 – pg. 3, line 15, Fig. 4 below), and a polymer interlayer (“adhesive”), wherein the interlayer is provided between the edge of the opening and the receptor (Fig. 4 above, pg. 3, lines 13 – 15, pg. 5, line 38 to pg. 6, line 5). In combination, the threaded receptor and adhesive form Applicant’s recited “stress generating member.”
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Bennison et al. teach the receptor (“bushing”) can by constructed from any generally sturdy material, such as engineering plastics (resin), such as polyurethane, or metals, such as aluminum, or steel (metal alloy), stone, wood, or the like (pg. 9, lines 14 – 20). Furthermore, the polymer interlayer can be a thermoplastic material or any polymer that can form an adhesive bond (pg. 9, line 25 – pg. 10, line 17). Specifically, the polymer interlayer can be an in situ cured resin such as a polyurethane system. Therefore, Bennison et al. teaches numerous embodiments in which the bushing and adhesive are comprised of different materials.
Bennison et al. do not explicitly teach contraction of the bushing, such that the bushing and adhesive (Applicant’s “stress generating member”) generates compressive stress in the glazing in a radially inward direction the around opening, wherein the contraction of the bushing comprises expanding the outer edge of the bushing by applying a mechanical force to the bushing, and allowing the bushing to decrease in size from the expanded state by removing the mechanical force from the bushing.
Applicant’s specification teaches the bushing is expanded by heat and then decreases in size to a contracted state when the bushing cools to room temperature (specification, paragraphs [0013], [0024], [0027], [0029], [0031] – [0032], [0035], & [0042]) to generate compressive stress in the glazing around the opening (paragraph [0048]). The specification explicitly states the temperature difference between a heated state and a cooled state is not limited (paragraph [0027]).
Furthermore, paragraph [0029] of the specification teaches the following:
Prior to removal of the application of heat or mechanical force, the adhesive 18 placed between the bushing 16 and the edge of the opening 14 may be cured adequately by heating, ultraviolet (UV) radiation, or other suitable means. After the adhesive 18 is cured, the heat or mechanical force used to expand the bushing may be removed. Upon removal of the heat or mechanical force, the bushing 16 may gradually reduce in size to have a smaller outer diameter DB2, and the opening 14 in the glazing 12 may reduce in size to have an inner diameter DE2. The outer diameter DB2 of the bushing 16 in the contracted state is smaller than the outer diameter DB1 of the bushing 16 in the expanded state. The inner diameter DE2 of the opening 14 in the contracted state is smaller than the inner diameter DE1 of the opening 14 in the expanded state. Because the bushing 16 shrinks after the adhesive 18 is cured, the adhesive 18 is pulled inwardly in the radial direction of the opening 14, so that the edge of the opening 14 receives force pulled inward, thereby forming compressive stress in the glass around the opening 14.
Bennison et al. teach a polyurethane or aluminum receptor (pg. 9, line 18) and thermoplastic polyurethane interlayer (adhesive) (pg. 10, line 12) joining the receptor to the opening edge of the laminate are formed of the same materials as Applicant’s stress generating member composed of a polyurethane or aluminum bushing (spec, paragraph [0025]) and polyurethane adhesive (spec, paragraph [0029]) that joins the bushing to the opening edge. Additionally, Bennison et al. teach the lamination of these components depends on the lamination temperature, which is typically above 100°C (pg.10., lines 26 – 27). One of ordinary skill in the art would understand without an explicit disclosure by the reference that the laminate (which includes the receptor/bushing) would cool to room temperature after the heated lamination step.
A receptor (bushing) taught by Bennison et al. composed of the same type of materials as Applicant’s bushing would behave similarly by expanding under heat (e.g., 100°C) and then later undergoes contraction when cooled to room temperature. Furthermore, an adhesive of similar composition as taught by Applicant for joining a receptor (bushing) of similar composition as taught by Applicant, which inherently expands and contracts from heating and cooling of said compositions, would also inherently produce a compressive force in a radial direction around the opening.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
As discussed above, Bennison et al. explicitly teach a receptor (i.e., “bushing”) of similar composition and structure as the bushing taught by Applicant.
Although Bennison et al. do not teach the claimed method step of mechanical force applied to the bushing for contracting and expanding the bushing, Bennison et al. do teach a method step of heating the laminate, including the bushing while curing the adhesive (pg. 10, line 10 – pg. 11, line 2). According to Applicant’s paragraph [0029] of specification, either mechanical force or heating will have the same result of expanding the bushing, curing the adhesive, and then contracting the bushing necessary for generating compressive stress in the glazing in a radially inward direction around the opening (see paragraph [0029] of the originally filed specification).
Therefore, Bennison et al. teach a substantially identical structure and a substantially identical process as disclosed in Applicant’s specification (although not the process claimed) that would inherently result in the recited compressive stress in the glazing in a radially inward direction around the opening by expansion of the bushing followed by contraction of the bushing.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Claim 32 defines the product by how the product was made (i.e., “expanding the outer edge of the bushing by applying mechanical force to the bushing, and allowing the bushing to decrease in size from the expanded state by removing the mechanical force from the bushing”). Thus, claim 32 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having compressive stress in the glazing in a radially inward direction around the opening. The reference suggests such a product (see discussion above).
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777, F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983)
Bennison et al. fail to teach the receptor (i.e., “first bushing”) comprises at least one slit substantially extending in a thickness direction and configured to allow for expanding or contraction of the first bushing.
Stratienko teaches a torque and thrust transmitting wedge bushing (10). The outer wedge ring (14) includes an axially straight outer surface (20) for gripping the inner periphery of the substantially cylindrical passage through the hubbed part (13). The inner wedge ring (12) includes an axially straight inner surface (22) for gripping the outer periphery of a substantially cylindrically shaft (11). Splitting the outer wedge ring at (24) and the inner wedge ring at (26) helps them expand and contract radially in response to applied axial forces that cause the rings to move axially relative to each other (Col. 7, Lines 49 – 62 & Figs. 1 – 2).
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Therefore, based on the teachings of Stratienko, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to split the receptor (i.e., “first bushing comprising at least one slit”) in a thickness direction because the split would help the receptor expand and contract radially in response to applied axial forces.
With regard to claim 34, Bennison et al. teach the receptor can by constructed from engineered plastics (resin) (pg. 9, lines 14 – 20), such as polyurethane, or can be constructed of metals, such as aluminum, or steel (metal alloy) (pg. 9, lines 14 – 18). Bennison et al. teach a thermoplastic polyurethane interlayer (adhesive) (pg. 10, line 12) joining the receptor to the opening edge of the laminate.
Applicant’s specification teaches the adhesive may be a polyurethane and may decrease in size upon curing (paragraphs [0029] & [0046]). Therefore, similar to Applicant’s polyurethane adhesive resin, the polyurethane interlayer taught by Bennison et al. would inherently shrink upon curing. The adhesive is a component of Applicant’s “stress generating member.”
With regard to claim 36, as discussed above, the receptor (bushing) taught by Bennison et al. inherently expands when heated during the lamination step, and is therefore subject to tension.
With regard to claim 37, as shown in Fig 4 above, the outer diameter of the receptor (first bushing) has an outer diameter less than the original diameter of the opening.
With regard to claims 38 – 40, Bennison et al. teach the receptor can be constructed of metals, such as aluminum, or steel (metal alloy) (pg. 9, lines14 – 18).
With regard to claim 41, Bennison et al. teach the receptor comprises a flange (38) and a body (42), wherein the flange extends outside of the opening along an outer surface of the glazing and the body of the receptor (first bushing) extends through the opening (Fig. 4 above).
Claim(s) 33 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. & Stratienko, as applied to claim 32 above, in view of Mannheim Astete et al.
With regard to claim 33, Bennison et al. teach the laminated glazing comprises two glass layers bonded by a polymer interlayer, but do not teach the thickness of at least one of the glass layers.
Mannheim Astete et al. teach the laminated glazing comprises two thin glass layers (201 & 202) bonded by plastic bonding layer (interlayer) (4) (paragraphs [0044] & [0050]). At least one of the glass layers has a thickness of less than about 1.2 mm, more preferably less than about 0.7 mm thick (Mannheim Astete’s original claims 13 – 14), which overlaps with Applicant’s claimed range of 0.5 to 2.3 mm. Thinner glass is more flexible and absorbs the energy of the impact by deflecting and then bouncing back, rather than breaking as is the case with a thicker stiffer layer of glass (paragraph [0050]).
Therefore, based on the teachings of Mannheim Astete et al., it would have been obvious to one of ordinary skill in the art to form at least one of the thin glass layers of the laminate glazing having a thickness of less than about 1.2 mm in order to achieve glass panes that are flexible and absorb the energy of impact rather than breaking.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 42 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. & Stratienko, as applied to claim 35 above, in view of Scherzl (DE 4130823 A1).
DE 4130823 A1 was provided by Applicant with the IDS filed 4/14/2021
With regard to claim 42, Bennison et al. and Mannheim et al. both fail to teach the laminate glazing further comprises a second bushing.
Scherzl teaches a glass panel comprising two or more glass panes, at least one bore (hole) for fastening elements (paragraph [0003]), and inside the a core comprising a hole an elastic bushing (9) (“first bushing”) and a cylindrical insert (4) (“second bushing”) formed of metal inside the bushing (abstract, paragraphs [0023] – [0024], & Fig. 2). As the disk (7) is screwed tight with the aid of the screw (8), the elastic material of the hollow cylinder (9) is pressed firmly against the cylinder body (4), completely filling all the cavities between the cylinder body 4 and the bore hole (2) (paragraph [0024]). This assembly creates a form-fitting and force-fitting connection between the fastening element and the glass pane without exerting damaging forces on the glass pane (paragraphs [0004] – [0007]).
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Therefore, based on the teachings of Scherzl, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate a second cylinder body (bushing) inside a first bushing in order to allow for a form-fitting connection between the edge of the opening (glass pane) and the fastening element without damage to the glass pane.
Claim(s) 43 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. & Stratienko, as applied to claim 35 above, in view of Mannheim Astete et al. (WO 2019/186512 A1).
With regard to claim 43, Bennison et al. fail to teach the edge of the opening has a roughness (Ra) of less than 2.5 µm.
Mannheim Astete et al. (‘512) teach an automotive laminate glazing comprising holes in the glass that have a low surface roughness. A smoother surface has fewer and less severe surface defects, and thus has a lower probability of breakage. The edges of a hole preferably have a surface roughness of less than 2 µm (pg. 9, lines 13 – 30).
Therefore, based on the teachings of Mannheim Astete et al. (‘512), it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the holes in the laminate glazing taught by either Bennison et al. such that the edge of the holes (openings) has a surface roughness of less than 2 µm in order to reduce the probability of glass breakage.
Claim(s) 44 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. & Stratienko, as applied to claim 32 above, in view of Schilde et al. (U.S. Patent No. 5,398,452).
Claim(s) 45 is rejected under 35 U.S.C. 103 as being unpatentable over Bennison et al. & Stratienko, as applied to claim 35 above, in view of Schilde et al. (U.S. Patent No. 5,398,452).
With regard to claims 44 – 45, Bennison et al. fail to teach the presence of a seal at the opening, attached to the first bushing (receptor/sleeve).
Schilde et al. teach a laminated glazing comprising two glass sheets joined by an interlayer (4), holes for a fastening member (screw), and a cushion plate (seal)(19) made from a suitable material inserted between the oval head of the screw (or guide pin (6)) and the surface of each of the glass sheets (2 & 3) at the opening, attached to a polymer centering sleeve (18) (“first bushing”) and a hollow cylindrical section (9) (“second bushing”) (Col. 2, Lines 38 – 42).
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Therefore, based on the teachings of Schilde et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate a cushioning plate (seal) between the glass plates and the head of the fastening elements (screws or pins) for providing a cushion effect.
Response to Arguments
Applicant argues, “Independent Claim 32 has been amended to recite, in relevant part, ‘wherein the first bushing includes at least one slit substantially extending in a thickness direction and configured to allow for the expanding or contraction of the first bushing.’ (emphasis added). Applicant respectfully submits that none of the cited portions of Bennison or Scherzl disclose, teach, or suggest at least this feature of Claim 32, which clarifies that the slit extends substantially at least in a thickness direction of the first bushing…None of the cited portions of Bennison, Mannheim Astete, Schilde, and/or Mannheim Astete 2019 remedy the shortcomings of Scherzl. Instead, the Office Action cited them for different reasons” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant’s arguments with respect to the rejection(s) 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 Stratienko.
Applicant argues, “Withdrawn Claim 46 has been amended to include the subject matter analogous to that discussed above in regards to Claim 32. Applicant respectfully requests rejoinder of withdrawn Claims 46 to 51 should the analogous amendments to Claim 32 be found allowable, since Claims 46 to 51 are directed to a process of making a product which requires the allowable portions of Claim 32…” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: As discussed above, claim 32 is not allowable. Therefore, rejoinder of withdrawn claims 46 to 51 will not occur at this time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781