The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
Claim Objections
Claims 1-5, 7-8, and 11-19 are objected to because of the following informalities in claim 1, line 14: the language “and satisfies one of the following…” is not an acceptable Markush group listing. One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being "selected from the group consisting of A, B and C." See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925). Suitable language to include would be “wherein the X are selected from the group consisting of”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-5, 7-8, and 11-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over US 20170136742 A1 to Oota et al. in view of US 4020217 to Karasudani et al.
Re claims 1-5, 7-8, and 11-19, Oota essentially teaches the claimed invention wherein a polymer film [42] of polyvinyl acetal resin and a plasticizer ([52], Table 1) is in each of a first and second layer (Fig. 3 and associated text). The properties as claimed are not explicitly taught; however the layers and their properties are inherent as the same composition is taught (re claims 1-5, 13-18). Oota teaches overlapping ranges (re claims 6-7, 9-10, [58] 30-100 parts plasticizer overlaps applicant’s range of 30-60 parts (second layer) and 50-90 parts (first layer)), [49, 72] 100 parts PVA, [48] aldehyde (greater than 12% as 100% is used), polymerization degree is 500 -4000 [2300 dp - 117] (overlapping 2000 to 4000) and [44-45] [42-50], Oota and 10-32 mol% hydroxyl group (overlapping applicant’s range of greater than 26 mol%). Oota also teaches thicknesses of less than 100 microns to 3000 microns ( [25-28, 39], Abstract) effecting luminescence (re claim 19). Oota teaches the three-layer construction first upper second layer 32/film 31/second lower 33, Fig. 3, [37-39].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05. Further thickness of the individual layers and overall laminate is within the skilled artisan to have modified it would have been obvious to one of ordinary skill in the art to use interlayers and films with thickness, including that presently claimed, in order to produce aforesaid layers with effective functionality of luminescence, sound insulation and high frequency.
Further to claim 12, the film and what happens when is directed to intended use and suggestive language.
Oota doesn’t disclose the exact range of degree of acetalization of 52.7 to 69.7 mol% as claimed.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05. Further by substitution, use or addition of the acetylation degree of Shimamoto in the film of Oota, increasing the degree aids in achieving sound insulation, same as applicant.
The properties not explicit are found inherent as the materials are identical, the properties are inherent (i.e. loss factor).
Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over US 20170136742 A1 to Oota et al. in view of US 4020217 to Karasudani et al. and further in view of JP 2020050713 (JP ‘713).
Oota is relied upon above.
Re claim 8, Oota doesn’t teach bulk density as claimed.
However, JP ‘713 teaches bulk density that overlaps that claimed JP ‘713. The reference discloses polyvinyl acetal with bulk density of 0.15 g/m3 or more in order to produce polyvinyl acetal that has excellent transportability (0056).
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date and modify the PVA of Oota with the specific PVA of JP ‘713 for transportability.
Response to Arguments
Applicant's arguments 09/11/25 have been fully considered but they are moot as they are not convincing for the following reasons.
Applicant points to the specification and comparative examples to argue the loss factor parameter and other properties are not inherent; while the exact same composition is used, and therefore the properties are deemed inherent absent convincing evidence to the contrary.
Applicant argues that the cited prior art does not disclose the loss factors technical feature and does not recognize the criticality the polyvinyl acetal resin technical feature. As evidence to support this position, applicant points to the examples in the present specification as well as the Reference Example in the Declaration filed 09/11/2025.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the data in both the specification and the Declaration use specific type of polyvinyl acetal and specific type of plasticizer each in specific amounts while the present claims broadly encompass any polyvinyl acetal and any plasticizer with no data at the upper and lower end points of the claimed amount of plasticizer. Further, the data in both the specification and the Declaration use polyvinyl acetal with specific degree of acetylation, specific degree of polymerization, and specific hydroxyl group content while the claims recite broader range for each of the degree of acetylation, degree of polymerization, and hydroxyl group content. There is no data at the upper and lower end points of the claimed degree of acetylation, the degree of polymerization (with the exception of data at 2400), and the hydroxyl group content (with the exception of data at 23.8 mol%). While it is agreed that there is no explicit disclosure in the prior art of the loss factors, within the overlapping ranges, it is the examiner’s position that such loss factors would necessarily inherently be present.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20130323516 A1 to Shimamoto et al. Shimamoto teaches overlapping ranges of degree of acetalization in Fig. 3, [37] a sound-insulating property in a high frequency range can be enhanced.
US 2014/0227537 to Shimamoto et al. teaches essentially teaches (see Fig. 1 and associated text) the claimed invention [0016] save the exact ranges, including the use of successive portions polyvinyl acetates of similar polymerization degree ranges; and further teaching an interlayer exact first, second, and third polyvinyl acetal resins and layers ([0043]) with an overlapping amount of plasticizer ([0013-0017], [0023]) of inclusion of parts by weight for improvement of sound insulation property. Shimamoto discusses the problem of using too much plasticizer [0013] in that the use of the excessive amount of the plasticizer, however, may cause the plasticizer to bleed out to the surface of the interlayer film. See examples 1-14 and tables.
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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787