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 .
Claim Objections
Claim 7 is objected to because of the following informalities: lines 2-3 recite “…at least one of the following a microcontroller, a voltage converter, and/or a bus transceiver.” This appears to be a grammatical error, where the examiner suspects the intent of the applicant was to recite this portion of the claim as “…at least one of the following: a microcontroller; a voltage converter; and/or a bus transceiver,” and will be examined on the merits as such. Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 4, 7-13, 18 and 19 are rejected under 35 U.S.C. 103 as obvious over United States Patent Application Publication No. US 2015/0003088 (hereinafter “Mulet”), in view of United States Patent Application Publication No. US 2017/0249879 (hereinafter “Qi”), in view of United States Patent Application Publication No. US 2018/0086028 (hereinafter “Berard”), in view of United States Patent Application Publication No. US 2008/0222827 (hereinafter “Veerasamy”), and further in view of WO 2018/043933 A1 with United States Patent Application Publication No. US 2019/0257571 (hereinafter “Park”) being used as the English language equivalent translation.Regarding claims 1, 7, 8 and 18 Mulet teaches an illuminating glazing unit comprising an encapsulation assembly comprising an encapsulating element (body) 4 located at an edge of two glass sheets 1, 2 (at least one of the two glass sheets correspond to a functional glass) (Figures 1 and 3; and paragraph [0045] and [0049]). Mulet teaches: (1) a first embodiment where a PCB (printed circuit board) (conductive module) 41 is located on a surface of the encapsulating element (body) 4 (Figure 1; and paragraphs [0010] and [0045]); and (2) a second embodiment where the PCB (conductive module) 41 is embedded in the encapsulating element (body) 4 (Figure 3; and paragraphs [0010] and [0049]). Mulet teaches the encapsulating element (body) 4 blocks any parasitic light liable to be emitted toward the interior (paragraph [0046]). Mulet does not explicitly teach the encapsulating element (body) 4 is located at edges of the glass sheets 1, 2 (functional glass). However, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the location of the encapsulating element (body) 4 to be included around all edges of the two glass sheets 1, 2 (functional glass) to provide complete coverage of the parasitic light blocking material to prevent parasitic light from being emitted toward the interior of the illuminating glazing unit. Moreover, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04(VI)(B). Mulet does not explicitly teach a structure of the PCB (conductive module) 41. Specifically, Mulet does not explicitly teach the PCB (conductive module) 41 comprises a conductive trace and a polymer matrix, where the conductive trace is formed on the polymer matrix. Therefore, it would have been necessary and thus obvious to look to the prior art for conventional PCB materials and structures. Qi and Berard provide these conventional teachings. Qi teaches that it is well known for PCBs (conductive modules) to mechanically support and electrically connect to electronic components (functional modules), such as LEDs, via conductive tracks (conductive traces), where the conductive tracks from the PCB are etched onto a non-conductive substrate (conductive trace is formed on a matrix) (paragraph [0067]). Berard teaches that it is known for PCB carriers to be electrically connected to LEDs via electrical supply tracks (conductive traces), where the PCB carrier comprises a flexible material, such as plastic (polymer matrix) (paragraphs [0001], [0002], [0057], [0094] – [0111] and [0154]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to make the PCB (conductive module) 41 of Mulet having a structure and made from materials comprising conductive tracks (conductive traces) and a plastic (polymer matrix), where the conductive tracks (conductive traces) is/are formed on the plastic (polymer matrix), as taught by Qi and Berard, motivated by the expectation of successfully practicing the invention of a PCB carrier (conductive module) suitable for mechanically supporting and supplying power to electronic components (functional modules), which corresponds to the conductive trace comprises an interface coupled to the functional module. Mulet does not explicitly teach the conductive trace comprises an interface coupled to (i) an external power module and/or (ii) an external signal module. Veerasamy teaches an electrical circuit system formed integral with a laminate glass, the system comprising a flexible circuit board (PCB) mountable in or on a window (abstract). Veerasamy teaches connecting wires (conductive traces) that extend from the PCB for power supply (external power module) and/or transmission of data functionality (external signal module) (paragraphs [0194] and [0195]), which corresponds to the conductive trace comprising an interface coupled to an external power module and/or an external signal module. It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the PCB of the encapsulation assembly from the combination of Mulet, Qi, and Berard with the connecting wires that extend from the PCB of Veerasamy to provide the electrical circuit of the encapsulation assembly with a power source and/or data transmission functionality. Mulet also teaches the PCB (conductive module comprising an electronic part) 41 is in direct contact with (electrically connected to) an LED (light-emitting diode) (functional module) 42 on the glass sheets (functional glass) 1, 2 (Figures 1 and 3; and paragraph [0010]). Mulet does not explicitly teach: (i) a functional module being a polymer dispersed liquid crystal module; (ii) an electronic part being arranged on the body or the polymer matrix (of the conductive module) and is electrically connected to the conductive trace to control the polymer dispersed liquid crystal module; and/or (iii) the electronic part comprising at least one of the following: a microcontroller; a voltage converter; and/or a bus receiver, wherein the voltage converter comprises a direct current converter or a direct current alternating current converter. Park teaches a refrigerator comprising transparent panel assembly 70, the transparent panel assembly 70 comprising a PDLC (polymer dispersed liquid crystal) film (functional module being a polymer dispersed liquid crystal module) 75 which is attached to the front surface of a rear glass (functional module located on a functional glass) 76 (abstract; and paragraphs [0459] and [0464]). Park teaches the PDLC film (functional module) 75 may be selectively transparent or opaque according to applying of power. Thus, the user may selectively see the inside of the refrigerator according to the state of the PDLC film 75. Also, a PDLC PCB (conductive module) 751 may be disposed on one side of the PDLC film 75 to control an operation of the PLDC film 75 (conductive module being electrically connected to the functional module) (Id). Park additionally illustrates the PDLC PCB (conductive module) 751 is electrically connected to the PDLC film (functional module) 75 (paragraph [0464] and Figure 52). Park also teaches the use of an adaptor (electronic part comprising a voltage converter, where the voltage converter comprises a direct current converter or a direct current alternating current converter) 143 for converting power supplied to the transparent panel assembly, where DC power may be converted to AC power that is suitable for driving the transparent panel assembly by the adaptor (electronic part electrically connected to the PDLC film (functional module) 75, which is part of the transparent panel assembly 70) 143 (paragraph [0176] and Figure 31). Park also teaches an embodiment where the adaptor (electronic part) 143 is arranged in contact with or on both a main PCB 141 and a PCB 142, among other PCBs (corresponding to the aforementioned PDLC PCB (conductive module) 751), used to control the operation of the transparent panel assembly (paragraphs [0174] – [0176], and Figure 8), which corresponds to the electronic part being arranged on the polymer matrix of the conductive module and is electrically connected to the conductive trace to control the polymer dispersed liquid crystal module. Mulet and Park are analogous inventions in the field of functional glass. It would have been obvious to one skilled in the art at the time of the invention to modify the glazing unit of Mulet with the PDLC PCB (conductive module) 751, the PLDC film (functional module) 75, and the adaptor (electronic part) of Park to impart a functionality to the glazing unit to be selectively transparent or opaque based on user input.Regarding claim 4 In addition, Park does not explicitly teach a structure of the interface between the PDLC PCB (conductive module) 751 and the PDLC film (functional module) 75. Berard teaches PCB carriers (conductive module) are known to electrically connect to electrical components (functional modules), such as LEDs (light emitting diodes), via electrical supply tracks (paragraphs [0001], [0002], [0057], [0094] – [0111] and [0154]). Berard illustrates an interface between the PCB carrier (conductive module) 41 and the LED (functional module) 4 (Figure 1 and paragraph [0181]). Berard teaches the diodes may be soldered to the tracks (of the PCB carrier), and/or a thermally conductive material, such as an adhesive or tape, may fasten or be inserted therebetween for a better dissipation and luminous efficacy and for the longevity of the diodes (paragraph [0154]), which corresponds to the interface comprises a connector or an interface circuit. Park and Berard are analogous inventions in the field of PCB carriers comprising electrical components. It would have been obvious to one skilled in the art at the time of the invention to modify the interface between the PDLC PCB (conductive module) 751 and the PDLC film (functional module) 75 of Park with the solder and/or thermally conductive material of Berard to provide a conventional connecting means between the PDLC PCB and PDLC film modules.Regarding claim 9 In addition, claim 7, the claim from which claim 9 depends, refers to a bus transceiver as an optional feature. Therefore, due to the fact that a bus transceiver is not required to meet the limitations from claim 7, the bus transceiver limitations from claim 9 are also considered to be optional features and are not required to meet the claims.Regarding claim 10 In addition, Mulet teaches the encapsulating element (body) 4 is formed by injection molding (paragraph [0036]). In the alternative, the use of product-by-process limitations has been noted in claim 10, for example, "the body is formed by injection molding". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.Regarding claim 11 In addition, Mulet teaches the encapsulating element (body) 4 is made of polyurethane (paragraph [0036]).Regarding claim 12 In addition, the combination of Mulet, Qi, Berard, Veerasamy, and Park renders obvious the encapsulation assembly of claim 1, as detailed above, and the illuminating glazing unit from said combination corresponds to an encapsulated glass. Furthermore, Park teaches the PDLC (polymer dispersed liquid crystal) film (functional module) 75 is attached to (arranged on) the front surface of a rear glass (functional glass comprising a functional module arranged thereon) 76 (abstract; paragraphs [0459] and [0464]; and Figure 52).Regarding claim 13 As previously noted, Park teaches the PDLC film (functional module) 75 may be selectively transparent or opaque according to applying of power (functional module is used to provide transparency adjustment) (paragraph [0464] and Figure 52).Regarding claim 19 In addition, Mulet illustrates the PCB 41 has a film shape (Figure 1 and paragraph [0045]). Berard also teaches their PCB carrier 41 has a film shape and comprises a plastic (Figure 1, and paragraphs [0154] and [0181]), which corresponds to the polymer matrix is a polymer film.
Claims 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mulet, Qi, Berard, Veerasamy, and Park as applied to claim 5 above, and further in view of United States Patent Application Publication No. US 2016/0359419 (hereinafter “Lin”).Regarding claim 6 The limitations of claim 5 have been set forth above. In addition, Park is silent with regards to specific means for attaching the adaptor (electronic part) 143 to the PCB; therefore, it would have been necessary and thus obvious to look to the prior art for conventional attachment means. Lin provides this conventional teaching showing that it is known in the art to use a surface mount technology for mounting electronic components onto a PCB (paragraph [0070]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to make an attachment means between the adaptor and PCB of Park using a surface mount technology, as taught by Lin, motivated by the expectation of successfully practicing the invention of providing a conventionally known attachment means between a PCB and electronic device disposed thereon.
Response to Arguments
Applicant's arguments filed 30 January 2026 have been fully considered but they are not persuasive.
The applicant argued the applied references do not teach or suggest the limitation requiring the “electronic part … arranged on the body or the polymer matrix.” The examiner respectfully disagrees and contends that Park teaches the adaptor 143 is in contact with (arranged on) adjacent PCBs 141/142, where a disclosure of other PCBs (such as the PDLC PCB (conductive module)) which are located in the sub door may also be located in the main control unit 14.
The applicant argued the reliance on Veerasamy is incorrect and fails to teach the claimed interface. Claim 1 requires a conductive trace that comprises an interface coupling the functional module to external power and/or signal module, and is not merely a requirement that “some wire somewhere supplies power.” The examiner respectfully disagrees and contends the Veerasamy’s teaching of connecting wires that extend from the PCB for power supply and/or transmission of data functionality meets the claim. The connecting wires are considered to correspond to conductive traces due to their capability to provide power and data transmission, and the presence of an interface between modules/parts via the connecting wires is necessarily present because if such was not present then power and/or data transmission would not be possible.
The applicant argued one of ordinary skill would not apply the Mulet/Qi/Berard/Veerasamy modifications to PDLC technology because those references are silent regarding PDLC control requirements. The examiner respectfully disagrees and contends that there is no requirement that each reference relied in a rejection must teach the subject matter of another modifying reference. In other words, Park teaches the use of a PDLC film, controlled by PCBs, etc., to control the transparency of a transparent window. The primary reference, Mulet, teaches a transparent glazing unit. It is the position of the examiner that modifying Mulet with the PDLC control configuration of Park to impart control of glass transparency to said glazing unit provides sufficient motivation for why a person having ordinary skill in the art would make the modifications proposed in the Office action to arrive at the claims.
The applicant argued the proposed modification is improper and lacks a reasonable expectation of success because: (i) the rejection fails to articulate a sufficient rationale to combine references with a reasonable expectation of success; (ii) the rejection is premised on isolated teachings from multiple disparate references, relying on hindsight reasoning; (iii) the modification of Mulet by Park to impart selective transparency/opacity is an impermissibly broad generalization that does not explain why one skilled in the art working on Mulet’s system would look to a PDLC-controlled smart glass system; (iv) even if there is motivation to modify Mulet with Park’s PDLC functionality, the result would not be a simple or predictable substitution; and (v) LED illumination systems are powered and controlled in a materially different manner than PDLC transparency control systems, and the Office action does not identify any teaching in Mulet/Qi/Berard/Veerasamy that would enable or suggest modifying Mulet’s LED PCB into a PDLC controller arranged on the encapsulation body or polymer matrix. The examiner respectfully disagrees and contends: (i) sufficient rationales for modifying the references to arrive at the claims are present; (ii) it is not clear how the applicant can reasonably conclude that the prior art references are disparate references. The examiner has provided explanations showing how the references are analogous references. Regarding the applicant’s position that the Office action relies on impermissible hindsight, 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)); (iii) the explanation for why one skilled in the art would modify the references to arrive at the claims is provided in the rejection of record and the examiner has established teaching, suggestion, and/or motivation for combining the references; (iv) this argument falls short in providing a clear basis of error by the examiner; in other words, it appears the applicant is merely providing an opinion based position without more detail. It is well-settled that unsupported arguments are not a substitute for objective evidence. In re Pearson, 181 USPQ 641 (CCPA 1974); and (v) this argument is not commensurate in scope with the rejection of record. The examiner does not contemplate modifying Mulet’s LED PCB into a PDLC controller, as argued by the applicant; but rather, the examiner has taken the position that it would have been obvious to modify the glazing unit of Mulet with the PDLC transparency control system disclosed by Park to arrive at the claims. Furthermore, one skilled in the art would look to the teachings of Park when considering the power and control requirements for the PDLC control system. However, the placement of Park’s PCB for said PDLC control system in the same area (conductive module being located on a surface of the body or embedded in the body) as the PCB disclosed by Mulet would require nothing more than ordinary skill and/or ordinary creativity (KSR, 550 US at 421).
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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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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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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