DETAILED ACTION
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 Amendment
Applicant’s amendment filed on 12/15/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-10 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. The test for undue experimentation as to whether or not all compounds within the scope of independent claims 1-10 can be used as claimed and whether claims 1-10 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-10, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since present application indicates type and amount of colorant is necessary for controlling a*, b* and L* values (see paragraphs 0051 and 0052 of published application), however, there is no guidance in the specification on what type and amount of colorant is necessary to achieve a*, b* and L* as presently claimed. Claims 1-10 read on an interlayer encompassing an innumerable number of types and amounts of colorant. Further, given that claims now recite optionally at least one colorant, there is no guidance on how no amount of colorant can achieve a*, b* and L* as presently claimed.
(b) There is no direction or guidance presented for an interlayer film comprising colorant regarding what type and amount of colorant (see paragraph 0051 of published application) is necessary to achieve a*, b* and L* as presently claimed. Further, given that claims now recite optionally at least one colorant, there is no guidance on how no colorant can achieve a*, b* and L* as presently claimed.
(c) There is an absence of working examples concerning an interlayer film comprising colorant regarding what type and amount of colorant (see paragraph 0075 of published application) is necessary to achieve a*, b* and L* as presently claimed. Further, given that claims now recite optionally at least one colorant, there are no examples concerning an interlayer having no colorant that can achieve a*, b* and L* as presently claimed.
Even more specifically, it is noted that the specification provides no direction or working examples (factors (f) and (g)) regarding what type and amount of colorant is necessary to achieve the color coordinates or how to achieve the color coordinates with no colorant. Furthermore, in view of the breadth of claim 1 (factor (a)) which encompasses innumerable poly(vinyl butyral) films, the quantity of experimentation (factor (h)) involved in order to reach a usable embodiment having the claimed color coordinates would be great. Further, the claimed color coordinates would not be readily arrived at by one having ordinary skill in the art without significant guidance (factors (b), (c), and (d)) which is not provided in the specification. Additionally, to achieve the claimed color coordinates with no guidance provided in the specification regarding what types and amounts of colorants that are useable would require testing every type and amount of colorant without any apparent predictability (factor (e)). Further, to achieve the claimed color coordinates with no guidance provided in the specification regarding when no colorant is present would require testing every type of polyvinyl butyral interlayer without any apparent predictability (factor (e)).
Based on the above, one having ordinary skill in the art would not, without undue experimentation, be able to determine the a*, b* and L* as presently claimed. The present specification states a*, b* and L* can be achieved by using certain type and amount of colorant where the types and amounts are not disclosed and further the claims only recite achieving a*, b* and L* with much broader recitation of poly(vinyl butyral) interlayer and optional colorant. In particular, the type and amount of colorant appear to contribute to a*, b* and L*. Therefore, the specification is not enabling for the present claims given that there is no teaching in the specification as to how to achieve a*, b* and L* with the only the claimed polyvinyl butyral resin, plasticizer and optional colorant.
In light of above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-10.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the poly(vinyl butyral) interlayer….has….L* > 95”. While there is support for first substrate, second substrate and multiple layer panel having a specific L* value (see paragraphs 0018-0020, 0026-0027 of published application), there is no support for the poly(vinyl butyral) interlayer having any L* value. Further, while paragraph 0006 (published application) discloses L* greater than about 95, this is in the “Description of Related Art” section and appears to refer to current commercially available PVB interlayers and not the present invention. This rejection affects all the dependent claims.
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 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Theil et al. (US 2007/0264479 A1) in view of Hermann et al. (4, 287,107), taken in view of evidence by AllChem Industries (Dioctyl Phthalate, 2019).
Regarding claims 1-3, 9 and 10, Theil et al. disclose a laminate comprising a first ply 12, an aesthetic coating 30, an interlayer 24 and a second ply 18 (see Abstract, Figure 1 and paragraph 0025). The first ply and the second ply can be a clear float glass (see paragraph 0026). That is, the laminate is a transparent multiple layer panel.
The interlayer can comprise polyvinyl butyral (see paragraph 0027). The interlayer can include a colored material, i.e. colorant (see paragraph 0027). The interlayer can be the interlayer utilized in US 4,287,107 (see paragraph 0027) which discloses a plasticizer containing polyvinyl butyral resin suitable as interlayer for safety glass, wherein the plasticizer can be dioctyl phthalate (see col. 1, lines 9-12 and col. 2, line 47). As evidenced by AllChem Industries, dicotyl phthalate has a refractive index of 1.483-1.487 (see page 1, Properties and Values). Therefore, it would have been obvious to use interlayer comprising polyvinyl butyral and plasticizer in Theil et al. The interlayer can include one or more layers (see paragraph 0027). That is, the interlayer can comprise at least one layer comprising polyvinyl butyral and plasticizer. The thickness of the interlayer can be 0.75 mm (see page 8, Table 1).
The aesthetic coating has color coordinates of a* of -40 ≤ a* ≤ 50 and b* of -75 ≤ b* ≤ 40 in CIELAB color system (see paragraphs 0029, 0031, 0032). The aesthetic coating has L* greater than or equal to 40 (see paragraph 0035). Further, the aesthetic coating can be embedded in the interlayer 24 (see paragraph 0036). Theil et al. do not explicitly disclose that the interlayer has color coordinates of a* of -40 ≤ a* ≤ 50, b* of -75 ≤ b* ≤ 40 and L* greater than or equal to 40. However, given that the aesthetic coating is embedded in the interlayer, it is inherent or obvious that the interlayer has color coordinates of a* of -40 ≤ a* ≤ 50, b* of -75 ≤ b* ≤ 40 and L* greater than or equal to 40 when measured as presently claimed. While Theil et al. do not disclose ASTM E1348 III. D65/10º, absent criticality of using ASTM E1348 III. D65/10º, the color coordinates of a* of -40 ≤ a* ≤ 50, b* of -75 ≤ b* ≤ 40 and L* greater than or equal to 40 in CIELAB color system meet the present claims.
Given that the a*, b* and L of Theil in view of Herman et al. overlap with that presently claimed, the colorant of Theil in view of Herman et al. is in an amount to produce the poly(vinyl butyral) interlayer as presently claimed.
Given that the interlayer comprising polyvinyl butyral, plasticizer and colorant (polyvinyl butyral interlayer) including color coordinates of Thiel et al. in view of Herman et al. is identical to that presently claimed, it is inherent or obvious that a multiple layer panel made from the polyvinyl butyral interlayer has luminous transmittance (%T) of at least 87%.
Alternatively, given that first ply and the second ply can be clear float glass, i.e. transparent and given that the polyvinyl butyral interlayer of Thiel et al. in view of Herman et al. is identical to that presently claimed, it is inherent or obvious that the laminate (multiple layer panel) made from the polyvinyl butyral interlayer has luminous transmittance (%T) of at least 87%. As evidenced by Thiel et al., the luminous transmittance is same as visible light transmittance (see paragraph 0007).
Regarding claims 4 and 5, Theil et al. in view of Herman et al. disclose the laminate, wherein the interlayer has color coordinates of a* of -40 ≤ a* ≤ 50 and b* of -75 ≤ b* ≤ 40 as set forth above. Theil et al. in view of Herman et al. do not disclose the interlayer has a yellowness index (YI) as presently claimed. However, given that the interlayer of Theil et al. in view of Herman et al. has color coordinates of a* of -40 ≤ a* ≤ 50 and b* of -75 ≤ b* ≤ 40, it is inherent or obvious that the interlayer of Theil et al. in view of Herman et al. has a yellowness index (YI) as presently claimed.
Regarding claims 6-8, Theil et al. in view of Herman et al. disclose the laminate comprising the interlayer (i.e. laminate having an interlayer), wherein the interlayer has color coordinates of a* of -40 ≤ a* ≤ 50 and b* of -75 ≤ b* ≤ 40 as set forth above. The laminate has a transparency of L* ≥ 40 measured using CIELAB system (see Abstract and paragraph 0030). While Theil et al. in view of Herman et al. do not disclose L* when measured as presently claimed, given that interlayer of Theil et al. in view of Herman et al. has color coordinates as presently claimed and absent criticality of using ASTM E1348 III. D65/10º, L* ≥ 40 of the laminate measured using CIELAB color system meet the present claims.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that the claim has been amended to state at least one plasticizer has a refractive index of at least 1.460. Support is found in paragraphs [60-63] of the application as filed (WO 2020/123443). Since the claims now disclose the technical features necessary for achieving the result in form of the color values, namely the incorporation of a plasticizer having a refractive index of at least 1.460, the claims are clear in the meaning and thus provide proper enablement and written description. In addition, as previously stated, a colorant can optionally be used to tune the color as disclosed in the specification and figures. As applicants have previously stated this can be done without undue experimentation to find a suitable colorant or perhaps no experimentation at all. Therefore, applicants request that the 112 rejections be withdrawn, and the amended claims allowed.
However, when colorant is present, given that there are 1000s of colorants and innumerable colorant combinations in terms of both type and amount of colorant, given that there is no guidance presented for an interlayer comprising any type of colorant and any amount of colorant achieving the claimed color coordinates, given that there are no working examples concerning an interlayer comprising any type of colorant and any amount of colorant achieving the claimed color coordinates, and given that there would be a great quantity of experimentation necessary to achieve the claimed color coordinates for an interlayer with colorant given that the specification does not provide any guidance on how to achieve the color coordinates for any type of colorant and any amount of colorant in the interlayer, the examiner’s position remains that one having ordinary skill would not, without undue experimentation, be able to determine the a*, b* and L* as presently claimed. Further, when there is no colorant present, there would also be undue experimentation given that there is no guidance presented for an interlayer comprising no colorant achieving the claimed color coordinates, no examples concerning an interlayer comprising no colorant achieving the claimed color coordinates , and there would be a great quantity of experimentation necessary to achieve the claimed color coordinates for an interlayer with no colorant given that the specification does not provide any guidance on how to achieve the color coordinates with no colorant in the interlayer. Therefore, 112(a) paragraph rejection is maintained.
Applicants argue that paragraphs 60-63 disclose that for reducing yellowness, a high refractive plasticizer having a refractive index of at least 1.460 may be used, i.e., the plasticizer which has been incorporated into amended claim 1. Since the cited art is silent regarding the addition of a plasticizer having a refractive index of at least 1.460, the PVB defined therein must be more yellowish than the PVB interlayer defined in claim 1. Starting from any of cited art as closest prior art, the objective technical problem to be solved by the present invention may be seen in the provision of an improved PVB interlayer. This problem has been solved in a non-obvious manner as defined in claim 1. Since the cited art is silent regarding the addition of a high refractive plasticizer to PVB resin, amended claim 1 is not obvious in view of the prior art. Since the remaining claims have the same limitation as amended claim 1, these claims are also not obvious over the prior art.
In light of amendments, new grounds of rejections are set forth above. As noted above, Theil discloses interlayer comprising a plasticizer such as dioctyl phthalate which is a high refractive index plasticizer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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