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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 6, 2025 has been entered.
Priority
This application is a 371 of PCT/US2020/024561 03/25/2020 which claims benefit of provisional application 62/826,068 03/29/2019.
Claim Status
Claim 9 is canceled. Claim 21 is new. Thus, claims 1-8 and 10-21 as amended are examined on the merits herein.
Claim Interpretation
Claim 1 is drawn to a Human Machine Interface (HMI) cover comprising a cover plate in the form of a sheet of a cellulose ester composition that has a thickness of 2 mm to 5 mm, wherein said cellulose ester composition comprises a cellulose ester as claimed, see claim 1.
The Examiner respectfully notes that Applicant does not explicitly define the phrase “cellulose ester composition”, the Specification exemplifies that the Human Machine Interface (HMI) cover is provided in the form of a sheet having a thickness of about 2 mm to about 5 mm comprising a melt processable cellulose ester having a total degree of substitution of 2.85 to 3 and a degree of hydroxyl groups (DSOH) from 0 to 0.15, see pg. 18, line 25 – pg. 19, line 3. Based on this recitation the Examiner reasonably interprets that said HMI cover is in the form of a sheet, having a thickness of about 2 mm to about 5 mm, wherein the cellulose ester is a component within the sheet.
The Specification further exemplifies that the cellulose ester composition also contains up to 20 wt% of a plasticizer, see pg. 19, lines 14-15; up to about 20 wt% of a miscible polymer that can be blended in the cellulose ester, see pg. 19, lines 22-23; and the cellulose ester composition can also contain typical additives including impact modifiers, processing aids, stabilizers, UV protectants, colorants, and the like, see pg. 19, lines 27-29.
The Specification exemplifies that the cover panel made from the cellulose ester composition has a thickness of 2 mm to 5 mm, see pg. 22, lines 18-21; however the Specification exemplifies that compensating layers can be made from one or more cellulose esters, but in another embodiment compensating layers can be made from oriented polycarbonate; and that additional layers can also be incorporated, see pg. 25, lines 26-30.
Therefore, because Applicant has not explicitly defined the term “cellulose ester composition” within the Specification, combined with the recitations that the cellulose ester composition can contain other additives as discussed above, the Examiner reasonably interprets that the cellulose ester composition has a thickness of 2 mm to 5 mm and comprises cellulose ester as a component among other additives that contribute to the sheet’s thickness.
Furthermore, the Examiner does not find anything in the Specification that would limit said “cellulose ester composition” to a sheet of cellulose ester with a thickness of 2 mm to 5 mm as a cover plate in an HMI cover as argued by Applicant in Applicant’s remarks, see pg. 5, Claim Rejections 35 USC § 102, paragraph 2.
Thus, the Examiner interprets that if a sheet having a thickness of 2 mm to 5 mm comprises cellulose ester as a component within the sheet will read on the claimed limitation of “a sheet of a cellulose ester composition that has a thickness of 2 mm to 5 mm, said cellulose ester composition comprising a cellulose ester” as recited in claim 1, lines 2-3.
Response to Arguments
(I) The rejection of claims 1-8 and 10-16 under 35 U.S.C. 102 (a)(1) and/or 102 (a)(2);
(II) The rejection of claims 1-8 and 10-20 under 35 U.S.C. 103; and
(III) The provisional rejection of claims 1-8 and 10-20 on the ground of nonstatutory double patenting are maintained.
Applicant argues:
(A) that they are unaware of any disclosure by Karagiannis of utilizing a relatively thick sheet (i.e. 2 to 5 mm) of a cellulose ester for a cover plate in a HMI cover as presently claimed in claim 1, see Applicant’s remarks, pg. 5, Claim Rejections 35 USC § 102, paragraph 2; and
(B) Karagiannis is directed to laminates that may include a relatively thin layer of cellulose ester, in addition to layers of glass, and that Karagiannis provides no reason to arrive at an HMI display cover having a relatively thick sheet (i.e. 2 mm to 5 mm) of a cellulose ester composition that replaces the use of glass, see pg. 6, Claim Rejections 35 USC § 103, paragraph 1; and that Karagiannis requires glass in its laminates and would have no reason to include a thick sheet of cellulose ester composition as presently claimed, see pg. 7, Claim Rejections 35 USC § 103, paragraph 1.
With respect to Applicant’s arguments (A)-(B), the Examiner respectfully notes that the “cellulose ester composition” as recited in claim 1 does not define nor limit the composition to having a 2 mm to 5 mm sheet of a cellulose ester for a cover plate in an HMI cover as argued by Applicant in view of the foregoing reasons in the Claim Interpretation section as discussed above.
Additionally, because Applicant has not explicitly defined the term “cellulose ester composition” within the Specification, combined with the recitations in the disclosure that the cellulose ester composition can contain other additives as discussed above, the Examiner reasonably interprets that the cellulose ester composition has a thickness of 2 mm to 5 mm and comprises cellulose ester as a component among other additives that contributes to the sheet’s thickness.
Moreover, claim 1 recites the transitional phrase “comprising” in relation to the Human Machine Interface (HMI) cover, see claim 1, line 1; and the cellulose ester composition which is a component within said HMI cover, see claim 1, line 3. Therefore, the Examiner reasonably interprets the use of the word “comprising” to be inclusive or open-ended and does not exclude additional unrecited elements, see MPEP 2111.03(I).
Thus, the Examiner reasonably interprets that the use of glass as taught by Karagiannis is a potential and acceptable component within a Human Machine Interface (HMI) cover as Karagiannis teaches glass as a component within Human Machine Interface (HMI) devices as discussed in the 102 and 103 rejections below.
Furthermore, the provisional double patenting rejection against copending Application ‘865 defines a “molten thermoplastic”, recited in reference claim 15, to include a “cellulose ester thermoplastic” as evidenced in the Specification of ‘865 on pg. 11, lines 20-25as discussed in the provisional double patenting rejection below.
Thus, Applicant’s arguments are not found persuasive.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 rejected under 35 U.S.C. 102(a)(1) and/or 102 (a)(2) as being anticipated by Karagiannis et al. (WO 2019055267 A1, Published 21 March 2019, Filed 06 September 2018 and benefitted from US PRO 62/557,552, 12 September 2017, IDS filed 01/21/2022).
With respect to claims 1-2, 5, 10 and 13-14, Karagiannis teaches laminated glass and interlayers comprising cellulose esters, see title. Karagiannis teaches an interlayer structure having a cellulose ester layer for use in bilayer laminates, where the present interlayers can be useful in producing structural laminates having high stiffness and which possess good optical clarity for a variety of application, including HMI devices, see abstract.
Karagiannis teaches a multilayer interlayer comprising: (a) a non-cellulose ester layer comprising a polyvinyl acetal resin and a plasticizer; (b) a tie layer comprising a thermoplastic polymer resin selected from polyurethane resin or ethylene vinyl acetate resin; and (c) a cellulose ester layer, wherein said tie layer is disposed between and in contact with the non-cellulose ester layer and said cellulose ester layer, wherein a laminate comprising the multilayer interlayer has low birefringence, see paragraph [0011].
Karagiannis teaches that the degree of substitution (DS) can also refer to a particular substituent, for example, a hydroxyl group, acetate, propionate, or butyrate. For instance, a cellulose acetate can have an acetate DS of 2.0 to 2.5, with the remainder being hydroxyl groups, while a cellulose acetate propionate and cellulose acetate butyrate can have a Total DS of 1.7 to 2.8, with the remainder being hydroxyl groups. In various embodiments, the cellulose esters can have a Total DS, which refers to the average number of acyl substituents per AGU, of at least 2.8, at least 2.9, or at least 3, paragraphs [0044]-[0045]. Karagiannis teaches the cellulose esters are able to form layers or sheets that may be incorporated in various types of interlayers comprising a vast array of different layers, see paragraph [0024].
Thus, the Examiner is making the reasonable interpretation that when the total degree of substitution (DS) is 3, then the degree of hydroxyl groups in the cellulose esters is 0 (e.g. the DSOH range, required in claim 1, lines 5-6); and when it is 2.9 as discussed above, the degree of hydroxyl groups in the cellulose esters is 0.1 (e.g. the DOSH range, required in instant claim 10).
In addition, Karagiannis discloses cellulose has a maximum DS of 3.0 and the cellulose esters can have a total DS of at least 2.9 as discussed above. Thus, based on the combination of these two teachings the range between the taught DS of at least 2.9 and the maximum DS of cellulose of 3.0, the esterified cellulose will have a remainder DS of hydroxyl groups between 0-0.1 (e.g. the DSOH range, required in instant claim 10).
Karagiannis teaches an exemplary bilayer laminate, such as for use in an HMI device 10 comprising a cellulose ester layer 12 and a non-cellulose ester layer 14, which form the multilayer interlayer 16; as shown in FIG. 2, the interlayer 16 is laminated to one on rigid substrate 18, such as glass, where the HMI device may then be installed in, for example, a dashboard, see paragraph [00140] and FIG. 2.
Karagiannis teaches an example of FIG 2, in Table 4, where laminate number D-1 teaches a 2.3 mm glass layer, a non-cellulose layer of EVA 18 gauge (which is equivalent to 18 mil or 0.46 mm) and CAP 20% 30 gauge (which is equivalent to 30 mil or 0.76 mm), the additive thickness of the layers of D-1 total to 3.52 mm (e.g. a cellulose ester composition having a thickness of 2 mm to 5 mm, required in claim 1, lines 2-3), see pg. 87, table 4, D-1.
With respect to the limitations in claims 15-16, when the tie layer comprises a thermoplastic resin which is a polyurethane resin, the limitations of claims 15-16 will be met.
With respect to the claim limitations required in claims 3-4 and 6-8, these limitations are interpreted by the Examiner to be physical properties of the human machine interface cover that are met by meeting the structural limitations of claims 1 and 5, and as Karagiannis teaches such materials need to conform to three-dimensional spaces while maintaining the characteristics required of a display optical cover lens, and where optical clarity is needed in the desired application, see paragraph [0008].
Karagiannis also teaches the cellulose ester and the selected thermoplastic polymer resin should each have refractive indices that closely match each other (that is, having a delta RI as close to 0 as possible), see paragraph [00128].
Therefore, the teachings of Karagiannis meet the structural limitations as stated above and thus meet the physical properties as recited in the limitations of a total optical retardation range in claims 3-4 and 6-8.
With respect to the claim limitation “further comprising one or more compensation film layers”, required in claim 5, Karagiannis teaches the HMI display generally comprises cover glass, optically clear adhesives, touch sensor, liquid crystal polymers sandwiched between two film substrates, front and rear polarizers, brightness management films, and back light units, see paragraph [0025]. The use of the brightness management films or front and rear polarizers is reasonably interpreted by the Examiner to meet the one or more compensation film layers.
With respect to claims 11 and 12, Karagiannis teaches the cellulose ester cannot comprise more than 1 phr of at least one plasticizer, see paragraph [0070]; wherein a phr is defined as the amount of plasticizer measured as parts per hundred parts resin ("phr"), on a weight per weight basis, see paragraph [0069]; and the plasticizer can be either monomeric or polymeric in structure, see paragraph [0073]; thus when the cellulose ester comprises 1 phr of at least one plasticizer, the amount of plasticizer in the cellulose ester composition will be 1 wt%.
With respect to the limitation of “a cover plate”, required in claim 1, lines 1-2, the Examiner is reasonably interpreting this as an intended use, as Karagiannis teaches all structural limitations required of the cover plate in the form of sheets of a cellulose ester composition at the required thickness and degree of ester and hydroxy group substitution. Thus, the teachings of Karagiannis will meet the intended use recited in claim 1 as mentioned above.
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.
Claims 1-8 and 10-21 are rejected under 35 U.S.C. 103 as being unpatentable over Karagiannis et al. (Published 21 March 2019, Filed 06 September 2018, WO 2019055267 A1, IDS filed 01/21/2022).
Karagiannis addresses claims 1-8 and 10-16 as written above. Karagiannis further teaches interlayers and laminates comprising at least one layer that contains a cellulose ester, and methods of making the laminates, see paragraph [0001], and teaches the composition comprising the resin(s), plasticizer(s) and any additives may be formed into a sheet or layer according to any suitable method including injection molding, see paragraph [00212].
In other embodiments, the non-cellulose ester layer can be injection molded between a rigid substrate (such as glass) and a cellulose ester layer, see paragraph [00229]. Polymer samples are laminated between two sheets of clear glass, each having a thickness of 2.3 mm, and are prepared to have a width of 25 mm and a length of 300 mm, see paragraph [00186]. In various embodiments, the cellulose esters can have a glass transition temperature ("Tg") of at least 40oC or at least 145oC, see paragraph [0060]. A sufficient temperature for mixing the cellulose ester and the thermoplastic polymer resins can be the flow temperature of the cellulose ester, which can be at least 50oC above the Tg of the cellulose ester, see paragraph [00118].
Karagiannis teaches lighter weight and/or lower cost laminates are desirable for many applications, and a way to reduce laminate weight is to eliminate one or more panes of glass and replace them with rigid, transparent plastic panes of sufficiently high rigidity to maintain the integrity of the laminate as well as desirable optical properties, see paragraph [0007].
Karagiannis teaches the interlayers may be utilized in a multiple layer panel or laminate that comprises at least one rigid substance, wherein any suitable rigid substance may be used and may be selected from the group consisting of glass, polycarbonate, biaxially oriented PET, copolyesters, acrylic, and combinations thereof (e.g. wherein the cover does not comprise glass, required in claim 21), see paragraph [00229].
Karagiannis teaches that injection molding is a suitable method for making the sheets of Karagiannis, see paragraph [00212].
Although, Karagiannis does not teach (d) a mold configured as claimed, required in claim 17(a); (e) wherein the barrel temperature is at least the thermoplastic polymer Tg (in °C) + 60°C, required in claim 17(b); (f) wherein the gate opening has a width that is at least 60% of the mold width, required in claim 18; (g) wherein the barrel temperature is at least the thermoplastic polymer Tg (in °C) + 80°C, required in claim 19; and (h) wherein the injection speed is at least 5 cm/s, required in claim 20.
With respect to limitations (d)-(h), it would have been within the scope of the artisan that injection molding would comprise a gate located at one end of the mold for injection and extrusion, and while Karagiannis does not describe gate openings, barrel temperature for molding, mold width and injection speed, these are conventional parameters for injection molding and can be adjusted by those skilled in the art through routine experimentation and optimization according to actual size product requirements and injection molding flow conditions.
It would have been prima facie obvious to one of ordinary skill in the art before the claimed invention was filed to have optimized the mold injection parameters to arrive at the limitations of (d)-(h) according to the method of Karagiannis as within the scope of the artisan through routine experimentation and optimization. One of ordinary skill in the art would have been motivated to create interlayers and laminates that exhibit superior stiffness and that provide desirable optical properties when incorporated into laminates for human machine interface ("HMI") devices as taught by Karagiannis above. One of ordinary skill in the art would have had a reasonable expectation of success to have optimized the mold injection parameters and thus arrive at the limitations of (d)-(h) according to the method of Karagiannis, as Karagiannis teaches that injection molding is a suitable method for making the sheets of Karagiannis as discussed above.
Therefore, the claimed invention as a whole would have been prima facie obvious over the teachings of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 10-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-17 and 19 of copending Application No. 17/593,865 (amended claim set filed 03/05/2025, Notice of Allowance mailed 04/29/2025, Applicant: Eastman Chemical Company) (reference application). Although the claims at issue are not identical, they are not patentably distinct because both sets of claims are directed to a human machine interface cover comprising a cellulose ester composition.
Reference claim 15 recites a method for making a human machine interface cover in the form of a sheet, having a thickness of about 2 mm to about 5 mm comprising a thermoplastic polymer comprising a polycarbonate having up to about 40 weight percent of a copolyester blend therein; by
(a) providing a mold configured for injection molding, said mold comprising a gate at one end of the mold having an opening configured to introduce molten thermoplastic polymer into the mold, and a mold width at the gate end of the mold of at least 150 mm, wherein the gate opening has a width that is at least 50% of the mold width; and
(b) injection molding said cover at a barrel temperature of at least the thermoplastic polymer Tg (in °C) + 170°C.
Reference claim 16 recites wherein the gate opening has a width that is at least 60% of the mold width.
Reference claim 17 recites wherein the barrel temperature is at least the thermoplastic polymer Tg (in °C) + 190°C.
Reference claim 19 recites wherein the injection speed is at least 3.0 cm/s.
The Examiner notes that the Specification defines a “molten thermoplastic” to include a “cellulose ester thermoplastic” as evidenced in the Specification on pg. 11, lines 20-25.
Thus, the recitation of claims 15-17 and 19 of ‘865 make obvious instant claims 1-8 and 10-21.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed in this action.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691