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 .
Response to Amendment
This office action is responsive to the amendment filed on 07/13/2026. As directed by the amendment: claim(s) 1 has/have been amended; no claim(s) has/have been cancelled and new claim(s) 19-20 has/have been added. Thus, claims 1-20 are presently pending in this application.
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.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially” in claim 20 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Examiner suggests removing the term “substantially” from claim 20.
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.
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.
Claim(s) 1-7, 10, and 17- 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartenaer et al (WO 2018115090) in view of Sol et al (US 6,559,419) and Crumbach et al (DE 10249992 C1).
Regarding claim 1, Sartenaer discloses vehicle composite pane, comprising:
a first pane (Fig. 2 #11 first sheet of glass) and a second pane (Fig. 2 #12 second sheet of glass), which are joined to one another via at least one thermoplastic intermediate layer (Fig. 2 #20 thermoplastic interlayer), and an inlay element at least comprising an opaque layer (Fig. 2 #21 opaque zone) that has at least one cutout (Fig. 2 #22 non-opaque zone).
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However, Sartenaer does not teach an inlay element (a arranged between the thermoplastic intermediate layer and one of the first and second panes and (b) in contact with the thermoplastic intermediate layer, a transparent substrate layer, and a transparent electrically heatable layer, wherein the inlay element is arranged between the first pane and the second pane, wherein the opaque layer and the transparent electrically heatable layer have the same external dimensions.
Nonetheless, Sol in the same field of endeavor being heated glass panes teaches a transparent substrate layer (Fig. 8 #5 interlayer), and a transparent electrically heatable layer (Fig. 8 #3 coating), wherein the inlay element (Fig. 8 #51 opaque layer, #5 interlayer, and #3 coating) is arranged between the first pane (Fig. 8 #4 glass substrate) and the second pane (Fig. 8 #2 glass substrate).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer by incorporating the transparent substrate layer and transparent electrically heatable layer as taught by Sol for the benefit of enabling current flow to be approximately uniformly distributed, so as to reduce the likelihood of overheating and enabling efficient heating of the window. (Sol Col. 1 lines 47-53)
Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the opaque layer and the transparent electrically heatable layer having the same external dimensions, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984),
Furthermore, Crumbach in the same field of endeavor being heated glass panes teaches an inlay element (Fig. 1 #6 opaque edge strip) (a arranged between the thermoplastic intermediate layer (Fig. 1 #1.3 intermediate layer) and one of the first (Fig. 1 #1.2 rigid pane) and second (Fig. 1 #1.1 rigid pane) panes and (b) in contact with the thermoplastic intermediate layer (Fig. 1 #1.3 intermediate layer) and only partially covers the first pane (Fig. 1 #1.2 rigid pane) and the second pane (Fig. 1 #1.1 rigid pane), the inlay element (Fig. 1 #6 opaque edge strip) being smaller than the first pane (Fig. 1 #1.2 rigid pane), the second pane (Fig. 1 #1.1 rigid pane), and the at least one thermoplastic intermediate layer (Fig. 1 #1.3 intermediate layer) (Fig. 1 shows the inlay element only partially covering the first and second panes, and the intermediate layer.).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol by incorporating the arrangement of the inlay element as taught by Crumbach for the benefit of concealing a solder joint or contact surface to the outside.
Regarding claim 2, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein in the inlay element, the transparent substrate layer is arranged between the opaque layer and the transparent electrically heatable layer.
Nonetheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the inlay element, the transparent substrate layer being arranged between the opaque layer and the transparent electrically heatable layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 V. C.
Regarding claim 3, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein in the inlay element, the transparent electrically heatable layer is arranged between the transparent substrate layer and the opaque layer.
Nonetheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the inlay element, the transparent electrically heatable layer being arranged between the transparent substrate layer and the opaque layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 V. C.
Regarding claim 4, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein in the inlay element, the transparent substrate layer is arranged completely within the at least one cutout of the opaque layer, and the transparent electrically heatable layer is arranged, over an entire surface, directly adjacent the opaque layer and the transparent substrate layer.
Nonetheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the inlay element, the transparent substrate layer being arranged completely within the at least one cutout of the opaque layer, and the transparent electrically heatable layer being arranged, over an entire surface, directly adjacent the opaque layer and the transparent substrate layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 V. C.
Regarding claim 5, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein in the inlay element, the transparent substrate layer, and the transparent electrically heatable layer are implemented in one piece as an electrically heatable transparent substrate layer.
Nonetheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the inlay element, the transparent substrate layer, and the transparent electrically heatable layer being implemented in one piece as an electrically heatable transparent substrate layer, since it has been held that forming one piece of an article which has formerly been formed in two pieces and put together involves only routine skill in the art. MPEP 2144.04 VI. C.
Regarding claim 6, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein in the inlay element, the opaque layer, and the transparent electrically heatable layer are implemented in one piece as an electrically heatable opaque layer that has the at least one cutout; and the transparent substrate layer is arranged, over an entire surface, directly adjacent the electrically heatable opaque layer and the at least one cutout or is arranged completely within the at least one cutout of the electrically heatable opaque layer.
Nonetheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the inlay element, the opaque layer, and the transparent electrically heatable layer being implemented in one piece as an electrically heatable opaque layer that has the at least one cutout, since it has been held that forming one piece of an article which has formerly been formed in two pieces and put together involves only routine skill in the art. MPEP 2144.04 VI. C.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the transparent substrate layer being arranged, over an entire surface, directly adjacent the electrically heatable opaque layer and the at least one cutout or being arranged completely within the at least one cutout of the electrically heatable opaque layer, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 V. C.
Regarding claim 7, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), and Sartenaer teaches wherein the at least one cutout is a sensor window for an optical sensor (Abstract ---" According to the invention, this type of glazing comprises at least one thermoplastic interlayer (20) including a zone that is opaque to visible wavelengths (21) and that extends at least in the zone surrounding the optical sensor (51).”; Fig. 5 #53 slot is the same as The Fig. 2 #22 non-opaque zone).
Regarding claim 10, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), and Sol teaches wherein the transparent electrically heatable layer is an electrically heatable coating, a carbon- containing layer, or a metallic layer, or contains or is made of an electrically conductive polymer (Col. 6 lines 46-60 ---" Low-E coating 3 is deposited on substrate 2 (a single layer Ag or ITO coating may be provided in alternative embodiments). Multi-layer coating 3 includes first dielectric anti-reflection layer 23, second dielectric haze-reducing layer 25, first lower contact layer 27 (which contacts layer 29), first electroconductive metallic infrared (IR) reflecting layer 29, first upper contact layer 31 (which contacts layer 29), third dielectric layer 33 (which may be deposited in one or multiple steps in different embodiments of this invention), fourth dielectric layer 35, second lower contact layer 37 (which contacts layer 39), second electroconductive metallic IR reflecting layer 39, second upper contact layer 41 (which contacts layer 39), fifth dielectric layer 43, and finally sixth protective dielectric layer 45.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the transparent electrically heatable layer made of metal as taught by Sol for the purpose of providing a heatable material for anti-icing.
Regarding claim 17, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 3), but does not teach wherein the transparent substrate layer, the transparent electrically heatable layer, and the opaque layer with the cutout have the same external dimensions.
Nonetheless, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the transparent substrate layer, the transparent electrically heatable layer, and the opaque layer with the cutout having the same external dimensions, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984),
Regarding claim 18, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 3), but does not teach wherein the transparent substrate layer, the transparent electrically heatable layer, and the opaque layer with the cutout have the same external dimensions.
Nonetheless, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the transparent substrate layer, the transparent electrically heatable layer, and the opaque layer with the cutout having the same external dimensions, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Regarding claim 19, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 8), but does not teach wherein the transparent electrically heatable layer is an electrically heatable coating applied on the transparent substrate layer.
Nonetheless, Sol in the same field of endeavor being heatable vehicle windows teaches wherein the transparent electrically heatable layer (Fig. 8 #3 coating) is an electrically heatable coating applied on the transparent substrate layer (Fig. 8 #5 interlayer).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Derda and Crumbach by incorporating the electrically heatable coating as taught by Sol for the benefit of enabling current flow to be approximately uniformly distributed, so as to reduce the likelihood of overheating and enabling efficient heating of the window. (Sol Col. 1 lines 47-53)
Regarding claim 20, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), and Sartenaer teaches further comprises a peripheral masking print (Fig. 5 #52 extension of the #21 opaque zone) , and the opaque layer (Fig. 5 #21 opaque zone) and the masking print (Fig. 5 #52 extension of the #21 opaque zone) have substantially the same optical density (The opaque zone and the extension of the opaque zone are the same structure and will have the same optical density).
Claim(s) 8-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartenaer et al (WO 2018115090) in view of Sol et al (US 6,559,419) and Crumbach et al (DE 10249992 C1) as applied to claim 1, further in view of Schall et al (US 2017/0265253).
Regarding claim 8, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein the opaque layer contains or is made of polyethylene terephthalate (PET) or polyethylene (PE).
Nonetheless, Schall teaches wherein the opaque layer contains or is made of polyethylene terephthalate (PET) or polyethylene (PE) ([0022] lines 1-12 ---" Multiple panes are bonded to one another via at least one intermediate layer. The intermediate layer preferably contains at least one thermoplastic plastic, preferably polyvinyl butyral (PVB), ethylene vinyl acetate (EVA), and/or polyethylene terephthalate (PET). The thermoplastic intermediate layer can, however, also contain, for example, polyurethane (PU), polypropylene (PP), polyacrylate, polyethylene (PE), polycarbonate (PC), polymethylmethacrylate, polyvinylchloride, poly acetate resin, casting resins, fluorinated ethylene propylene copolymers, polyvinyl fluoride, and/or ethylene tetrachloroethylene copolymers, and/or copolymers or mixtures thereof.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the opaque layer as taught by Schall for the purpose of providing a bondable layer for the composite pane.
Regarding claim 9, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein the transparent substrate layer includes a thermoplastic or a thermosetting plastic or is a glass layer that has a thickness less than or equal to 0.5 mm.
Nonetheless, Schall teaches wherein the transparent substrate layer includes a thermoplastic or a thermosetting plastic or is a glass layer that has a thickness less than or equal to 0.5 mm ([0022] lines 12-16 ---" The thermoplastic intermediate layer can be formed by one or even by a plurality of thermoplastic films arranged one above another, wherein the thickness of one thermoplastic film is preferably from 0.25 mm to 1 mm, typically 0.38 mm or 0.76 mm.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the opaque layer as taught by Schall for the purpose of providing a bondable layer for the composite pane.
Regarding claim 12, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), but does not teach wherein the opaque layer or the electrically heatable opaque layer is, at least in sections, transparent to infrared radiation with a wavelength in the range between 800 nm and 1100 nm.
Nonetheless, Schall teaches the opaque layer made from the same materials as claimed. Therefore the opaque layer as taught by Sartenaer in view of Sol, Crumbach, and Schall would exhibit the claimed behaviors of the opaque layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the opaque layer as taught by Schall for the purpose of providing a bondable layer for the composite pane.
Regarding claim 13, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 1), and Sartenaer teaches wherein the vehicle composite pane is a windshield that is mirror-symmetrical along a center line, and the inlay element is arranged on the center line in the vicinity of the upper edge of the windshield (Shown in the figure below.).
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Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartenaer et al (WO 2018115090) in view of Sol et al (US 6,559,419) and Crumbach et al (DE 10249992 C1) as applied to claim 5, further in view of Bressand et al (US 2012/0103960).
Regarding claim 11, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 5), but does not teach wherein the electrically heatable transparent substrate layer or the electrically heatable opaque layer contains or is made of an electrically conductive polymer.
Nonetheless, Bressand teaches wherein the electrically heatable transparent substrate layer or the electrically heatable opaque layer contains or is made of an electrically conductive polymer (Claim 7 --- The pane according to claim 1, wherein the heatable coating and/or the heating wires contain comprise fluorine doped tin dioxide, tin doped indium oxide, silver, copper, tin, gold, aluminum, iron, tungsten, chromium, or alloys thereof and/or a conductive organic polymer.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the transparent electrically heatable layer made of metal as taught by Bressand for the benefit of providing a heatable material for anti-icing.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartenaer et al (WO 2018115090) in view of Sol et al (US 6,559,419).
Regarding claim 14, Sartenaer discloses method for producing a vehicle composite pane according to claim 1, the method comprising:
(a) providing a first pane (Fig. 2 #11 first sheet of glass), a second pane (Fig. 2 #12 second sheet of glass), at least one thermoplastic intermediate layer (Fig. 2 #20 thermoplastic interlayer), and an inlay element, at least comprising an opaque layer (Fig. 2 #21 opaque zone) that has at least one cutout (Fig. 2 #22 non-opaque zone);
(b) arranging the at least one thermoplastic intermediate layer (Fig. 2 #20 thermoplastic interlayer) and the inlay element between the first pane (Fig. 2 #11 first sheet of glass) and the second pane (Fig. 2 #12 second sheet of glass) (The arrangement is shown in figure 2.);
and (c) joining the first pane to the second pane via the at least one thermoplastic intermediate layer by lamination (Abstract).
However, Sartenaer does not teach a transparent substrate layer and a transparent electrically heatable layer.
Nonetheless, Sol in the same field of endeavor being heated glass panes teaches a transparent substrate layer (Fig. 8 #5 interlayer), and a transparent electrically heatable layer (Fig. 8 #3 coating), wherein the inlay element (Fig. 8 #51 opaque layer, #5 interlayer, and #3 coating) is arranged between the first pane (Fig. 8 #4 glass substrate) and the second pane (Fig. 8 #2 glass substrate).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer by incorporating the transparent substrate layer and transparent electrically heatable layer as taught by Sol for the benefit of enabling current flow to be approximately uniformly distributed, so as to reduce the likelihood of overheating and enabling efficient heating of the window. (Sol Col. 1 lines 47-53)
Regarding claim 15, Sartenaer in view of Sol teaches the method as appears above (see the rejection of claim 14), and Sartenaer in view of Sol teaches wherein the vehicle composite pane is comprising forming a windshield of a vehicle. (See the rejection of claim 14. Both Sartenaer and Sol describe forming vehicle windshields.).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sartenaer et al (WO 2018115090) in view of Sol et al (US 6,559,419) and Crumbach et al (DE 10249992 C1) as applied to claim 8, further in view of Schall et al (US 2017/0265253).
Regarding claim 16, Sartenaer in view of Sol and Crumbach teaches the composite pane as appears above (see the rejection of claim 8), but does not teach wherein the opaque layer contains or is made of polyethylene terephthalate (PET).
Nonetheless, Schall teaches wherein the opaque layer contains or is made of polyethylene terephthalate (PET) or polyethylene (PE) ([0022] lines 1-12 ---" Multiple panes are bonded to one another via at least one intermediate layer. The intermediate layer preferably contains at least one thermoplastic plastic, preferably polyvinyl butyral (PVB), ethylene vinyl acetate (EVA), and/or polyethylene terephthalate (PET). The thermoplastic intermediate layer can, however, also contain, for example, polyurethane (PU), polypropylene (PP), polyacrylate, polyethylene (PE), polycarbonate (PC), polymethylmethacrylate, polyvinylchloride, poly acetate resin, casting resins, fluorinated ethylene propylene copolymers, polyvinyl fluoride, and/or ethylene tetrachloroethylene copolymers, and/or copolymers or mixtures thereof.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite pane of Sartenaer in view of Sol and Crumbach by incorporating the opaque layer as taught by Schall for the purpose of providing a bondable layer for the composite pane.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 07/13/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 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 Sol et al (US 6,559,419).
Applicant argues that Derda does not teach a transparent heatable layer. Examiner respectfully agrees.
However, newly cite reference Sol does teach a transparent heatable layer (Col. 6 lines 46-48 ---" Low-E coating 3 is deposited on substrate 2 (a single layer Ag or ITO coating may be provided in alternative embodiments).”. See the rejection of claim 1.
Applicant argues that the mapping of Derda makes the same ply serve as both the claimed interlayer and the claimed substrate layer.
Although Examiner does not agree with the argument, newly cited reference Sol teaches the interlayer and substrate layer to be two separate elements. Furthermore, Fig. 8 of Sol shows the inlay element (Fig. 8 #51 opaque layer) being arranged between the first pane (Fig. 8 #4 glass substrate) and the second pane (Fig. 8 #2 glass substrate).
Applicant argues that the amended dimensional features, “the inlay element only partially covers the first pane and the second pane, the inlay element being smaller than the first pane, the second pane, and the at least one thermoplastic intermediate layer,” are not taught by the cited prior art. Examiner respectfully agrees.
However, newly cited reference Sol teaches the inlay element only partially covers the first pane and the second pane, the inlay element being smaller than the first pane, the second pane, and the at least one thermoplastic intermediate layer. See the rejection of claim 1.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the inlay element being an element inserted into the laminate) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, Crumbach is only relied upon to teach the arrangement and location of the inlay element, not the structure of the inlay element.
Applicant argues that Sartenaer motivates away from the proposed modification and would be rendered unsatisfactory for its intended purpose. Examiner respectfully disagrees.
In response to applicant's argument that Sartenaer motivates away from the proposed modification and would be rendered unsatisfactory for its intended purpose, 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).
Applicant argues that the "same external dimensions" limitation: Gardner is inapplicable. Examiner respectfully disagrees.
There is no criticality with the dimensions of the inlay element being the same as the opaque layer, transparent substrate layer, and transparent electrically heatable layer, since the inlay element would function the same at any chosen dimension.
Applicant argues that no reference discloses an inlay element; the rejection assembles one only from Applicant's disclosure. Examiner respectfully disagrees.
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).
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 JOE E MILLS JR. whose telephone number is (571)272-8449. The examiner can normally be reached M-F 8-5.
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, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOE E MILLS JR./Examiner, Art Unit 3761
/CHRIS Q LIU/Primary Examiner, Art Unit 3761
Prosecution Insights