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
The Amendment filed 10 March 2026 has been entered. Claims 1 – 5 and 7 – 19 remain pending in the application.
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 – 5 and 7 – 11 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.
Regarding claim 1, claim 1 requires, in relevant part, a resilient spacer body, wherein the resilient spacer body comprises shoulder portions, “the shoulder portions minimizing the magnitude of the compressive holding force transmitted to the first and second adhesives” (ll. 25 – 26 of the claim).
Although the instant specification a “compressive force” (e.g. p. 6, ¶ 3) which the examiner understands to be the basis for a “compressive holding force” as required of claim 1, the examiner observes no part of the instant specification discusses the shoulder portions minimizing the magnitude of this force transmitted to the first and second adhesives.
Accordingly, claim 1 fails to comply with the written description requirement.
Regarding claims 2 – 5 and 7 – 11, each of claims 2 – 5 and 7 – 11 depend, directly or indirectly, on claim 1. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 2 – 5 and 7 – 11 also fails to comply with the written description requirement for the same reasons as claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 – 11 are 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.
Regarding claim 9, claim 9 recites “the first and second adhesives are the same type of adhesive” (ll. 2 – 3 of the claim).
The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986). See MPEP § 2173.05(b), III, E.
In the case of claim 9, the examiner observes it is not clear what feature, or features, of the adhesive would make two adhesives of the same “type”. The instant specification outlines some criteria of adhesives to determine suitability (tack, shear strength, heat resistance, UV resistance, and outgassing: e.g. p. 6, ¶ 1), but none of these criteria or other unrecited criteria are clear from the claim to determine what is considered a same “type”.
Accordingly, claim 9 is indefinite.
Regarding claims 10 and 11, each of claims 10 and 11 depends, directly or indirectly, on claim 9. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, each of claims 9 and 10 is indefinite for the same reasons as claim 9.
Allowable Subject Matter
Claims 12 – 19 are allowed.
The following is an examiner’s statement of reasons for allowance:
Frank (US 2017/0321473 A1), Mäder (US 2012/0141699 A1), and Ferri (US 2015/0233173 A1) are considered the closest prior art.
Frank discloses a spacer assembly used to form a triple pane insulating glazing unit where the unit includes an inner third pane having a thickness (“spacer” I used to form an “insulating glazing unit” comprising “panes” 13, 14, 15, where the “insulating glazing unit” includes a “third pane” 15 having a thickness: e.g. Fig. 1 – 6; ¶¶ [0009] – [0113]); the spacer assembly comprising:
a spacer body having an inner surface adapted to face the inner insulating chamber of an insulating glazing unit, first and second side surfaces, and an outer surface (“polymeric main body” 1 plus “insert” 9 adapted to face “glazing interior surface” 3, 3.1, 3.2 of an “insulating glazing unit”, “pane contact surfaces” 2, 2.1, 2.2, and “outer surface” 4: e.g. Fig. 1 – 6; ¶¶ [0010] – [0012], [0014] – [0018], [0024], [0028] – [0043], [0046], [0056], [0057], [0059], [0060], [0071], [0073] – [0076], [0078] – [0084]);
the spacer body being made from a foamed resilient material permeable to moisture-vapor with a desiccant being disposed throughout the spacer body (“polymeric main body” 1 plus “insert” 9 made from “foam” permeable to moisture vapor with “desiccant” 11 being disposed throughout “polymeric main body” 1: e.g. Fig. 1 – 6; ¶¶ [0010] – [0012], [0014] – [0018], [0024], [0028] – [0043], [0046], [0056], [0057], [0059], [0060], [0071], [0073] – [0076], [0078] – [0084]);
the spacer body defining a channel adapted to receive edge portions of the inner third pane (as provided from the “insert” 9 in “groove” 6: e.g. Fig. 1 – 6; ¶¶ [0010] – [0012], [0026] – [0031], [0034], [0036], [0043], [0052], [0055], [0059], [0060], [0071] – [0074], [0076], [0089], [0092]); the channel defined by a channel base and a channel neck that connects the inner surface of the spacer body to the channel base (“bottom surface” of “groove” 6 and “lateral flanks” 7: e.g. Fig. 1 – 5; ¶¶ [0010] – [0013], [0029] – [0031], [0071] – [0074]);
the portions of the spacer body located between the inner surface, the channel neck, and the channel base being flexible shoulder portions adapted to resiliently engage the inner third pane (“tapering” which exhibits “spring effect”, “fixing” such that the “polymeric main body” 1 and “insert” 9 “yield” when “third pane” 15 is inserted: e.g. Fig. 1 – 5; ¶¶ [0010], [0011], [0028], [0031], [0034], [0071] – [0073]); and
the shoulder portions spaced apart at the channel neck by a distance that is less than the thickness of the inner third pane (per the aforementioned “yield”, it would be understood “third pane” 15 pushes the “tapering” outward, which would require a distance less than the thickness of the “third pane” 15 e.g. Fig. 1 – 5; ¶¶ [0010], [0011], [0028], [0031], [0034], [0071] – [0073]).
Similarly, Mäder discloses a spacer assembly used to form a triple pane insulating glazing unit where the unit includes an inner third pane having a thickness (“spacer” for a “multiple glass pane” comprising a “center glass pane”, e.g. “spacer” 1 for “multiple glass pane” 6, 6’ comprising a “center glass pane” 5: e.g. Fig. 1 – 3; ¶¶ [0009] – [0041]); the spacer assembly comprising:
a spacer body having an inner surface adapted to face the inner insulating chamber of an insulating glazing unit, first and second side surfaces, and an outer surface (e.g. Fig. 1, 2; ¶¶ [0009] – [0017], [0020] – [0022], [0024], [0026] – [0029], [0034] – [0041]);
the spacer body made from a foamed resilient material permeable to moisture-vapor with a desiccant being disposed throughout the spacer body (“desiccant”, e.g. “desiccant” 3: e.g. ¶¶ [0009] – [0011], [0013], [0015], [0017], [0018], [0021], [0026] – [0028], [0035], [0036], [0038]);
the spacer body defining a channel adapted to receive edge portions of the inner third pane (“receiving profile”, e.g. “receiving profile” 7: e.g. Fig. 1, 2; ¶¶ [0009], [0016] – [0018], [0022], [0029], [0034], [0035], [0038]); the channel defined by a channel base and a channel neck that connects the inner surface of the spacer body to the channel base (“recess”, “undercut”: e.g. Fig. 1, 2; ¶¶ [0018], [0034], [0038]);
the portions of the spacer body located between the inner surface, the channel neck, and the channel base being flexible shoulder portions adapted to resiliently engage the third pane (so as to adapt to a “contour of glass”: e.g. Fig. 1, 2; ¶ [0011]).
Although Mäder is not explicit as to the shoulder portions being spaced apart at the channel neck by a distance that is less than the thickness of the inner third pane, claim 12 recites the spacer assembly in reference to its use with respect to an inner third pane, and therefore the inner third pane is not, structurally speaking, a feature of the claimed spacer assembly.
Neither Frank nor Mäder describe a spacer body which is “a foamed resilient material permeable to moisture-vapor with a desiccant being disposed throughout the spacer body material”. The examiner understands this limitation to mean that the material of the spacer body itself contains the desiccant, i.e. the desiccant is within the foam itself.
Ferri discloses a spacer body of a foamed resilient material permeable to moisture-vapor with a desiccant being disposed throughout the spacer body material (e.g. ¶¶ [0009] – [0047]).
However, Ferri’s spacer body does not comprise a channel for receiving edge portions of an inner third pane of an insulating glazing unit like Frank and Mäder.
Frank (e.g. ¶¶ [0013], [0030], [0037], [0073]) and Mäder (e.g. ¶¶ [0009], [0010], [0013], [0015], [0017], [0018], [0021], [0026] – [0028], [0035], [0036], [0038]) contain their desiccant within chambers inside the spacer body rather than in the spacer body material itself like Ferri does.
Given these differences in the structures of the respective spacer bodies and the manner in which the desiccant is disposed, the examiner finds insufficient teaching and motivation to modify Frank or Mäder such that their respective spacer bodies are a foamed resilient material permeable to moisture-vapor with a desiccant being disposed throughout the spacer body material. Likewise, the examiner finds insufficient teaching and motivation to modify Ferri to comprise a channel with the features claimed.
Accordingly, claim 12 is allowed over the prior art.
Claims 13 – 19 depend, directly or indirectly, on claim 12. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. AIA 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. Accordingly, claims 13 – 19 are allowed for at least the same reasons as claim 12.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see p. 6, filed 10 March 2026, with respect to the rejections of claims 12 – 19 under 35 U.S.C. 102 or 35 U.S.C. 103 based on Frank as the sole or primary reference have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant’s arguments, see pp. 6 – 7, filed 10 March 2026, with respect to the rejections of claims 12 – 19 under 35 U.S.C. 102 based on Mäder as the sole reference have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant’s arguments, see pp. 7 – 8, filed 10 March 2026, with respect to the rejections of claims 1 – 11 and 20 under 35 U.S.C. 103 based on Mäder and Frank as the primary combination have been fully considered and are persuasive. These rejections have been withdrawn.
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 ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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