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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 30, 2025, has been entered.
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.
Claims 1-3, 5, 8, 10, 11, 13 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0159041 Lu.
Regarding claim 1, Lu teaches a polymer film (paragraph 0002), comprising
a polyvinyl acetal resin (paragraph 0029) and
a plasticizer (paragraph 0033),
wherein the polymer film is single-layer or multilayer (paragraph 0106),
wherein the polyvinyl acetal is a polyvinyl butyral (paragraph 0148) and the plasticizer is 3GO (paragraph 0131),
wherein when the polymer film is single-layer (paragraph 0032),
wherein the polymer film comprises 38 phr of the plasticizer (Table 4, CL-2) and has a number average molecular weight ranging from 50,000 to 600,000 (paragraph 0029);
wherein when the polymer film is multilayer, the polymer film is a three-layer structure consisting of an upper protective layer, a lower protective layer, and an interlayer sandwiched between the upper protective layer and the lower protective layer (paragraph 0133),
wherein each said protective layer comprises 38 phr of the plasticizer (Table 7, example DI-1 for example, and table 4 teaching CL-2 having 38 phr) and has a number average molecular weight ranging from 50,000 to 600,000 (paragraph 0029).
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 50,000-600,000 reads on the claimed range of 106,000-116,000.
Lu does not explicitly teach the mol% of the hydroxyl content, only wt%. However, since the instant specification is silent to unexpected results, the specific hydroxyl content is not considered to confer patentability to the claims. As the physical and acoustic characteristics are variables that can be modified, among others, by adjusting the hydroxyl content in the product (Lu paragraph 0042), the hydroxyl content would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed hydroxyl content cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the hydroxyl content in the film to obtain the desired physical and acoustic characteristics (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II. Please note that Lu teaches a hydroxyl content of 14 to 45 wt% (paragraph 0038), a range that likely overlaps the claimed range of 27 to 31 mol%.
Lu does not explicitly teach the smallest value of loss factor at the temperature at which it occurs. However, as Lu satisfies all of the previous limitations, Lu’s materials (pvb resin, paragraph 0029, 3GO, paragraph 0131) are indistinguishable from the claimed materials (pvb resin, paragraph 0034, and 3GO, paragraph 0035). Therefore, it is reasonable to expect that Lu's smallest value of a loss factor of the polymer film would also occur at a temperature ranging from 40°C to 60°C. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 2, Lu teaches that the smallest value of the loss factor is at least 0.10 (paragraph 0095). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of at least 0.10 reads on the claimed range of from 0.13 to 0.19.
Regarding claim 3, Lu teaches both single layer and multilayer embodiments (paragraph 0106). Lu does not explicitly teach the smallest value of loss factor at the temperature at which it occurs. However, as Lu satisfies all of the previous limitations, Lu’s materials(pvb resin, paragraph 0029, 3GO, paragraph 0131) are indistinguishable from the claimed materials (pvb resin, paragraph 0034, and 3GO, paragraph 0035). Therefore, it is reasonable to expect that Lu's smallest value of a loss factor of the polymer film would also occur at a temperature higher than that of the glass transition temperature of the single layer polymer film or at a temperature higher than a highest glass transition temperature of the multilayer polymer film. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 5, Lu teaches that the polymer film has a thickness ranging from 0.25 mm to 2.54 mm (paragraph 0106). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.25 to 2.54 mm reads on the claimed range of 0.2 to 2 mm.
Regarding claim 8, Lu teaches the single layer polymer film, but does not explicitly teach the mol% of the acetate content, only wt%. However, since the instant specification is silent to unexpected results, the specific acetate content is not considered to confer patentability to the claims. As the physical and acoustic characteristics are variables that can be modified, among others, by adjusting the acetate content in the product (Lu paragraph 0042), the acetate content would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed acetate content cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the acetate content in the film to obtain the desired physical and acoustic characteristics (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Regarding claim 10, Lu teaches that when the polymer film is single-layer, the polymer film is a film for use in a head-up display (HUD) (paragraph 0106, where Lu’s silence on specifically single layer embodiments for HUD applications suggests that either single layer or multilayer films may be used in HUD applications).
Regarding claim 11, Lu teaches that the polymer film has a thick end and a thin end, and the thin end has a smaller thickness than the thick end (paragraph 0106, tapered).
Regarding claim 13, Lu teaches the multilayer polymer film, but does not explicitly teach the mol% of the acetate content, only wt%. However, since the instant specification is silent to unexpected results, the specific acetate content is not considered to confer patentability to the claims. As the physical and acoustic characteristics are variables that can be modified, among others, by adjusting the acetate content in the product (Lu paragraph 0042), the acetate content would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed acetate content cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the acetate content in the film to obtain the desired physical and acoustic characteristics (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Regarding claim 16, Lu teaches that in a core layer, the plasticizer is in an amount of 50 to 120 parts by weight while the polyvinyl acetal resin in the polymer film is in an amount of 100 parts by weight (paragraph 0074, where the lower hydroxyl content layer is the higher plasticizer layer, which is the core layer). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 50-120 phr reads on the claimed range of 60-90 phr.
Regarding claim 17, Lu teaches that the polymer film is used as an intermediate film in laminated glass (paragraph 0004) and has a thickness ranging from 0.25 mm to 2.54 mm (paragraph 0106). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.25 to 2.54 mm reads on the claimed range of 0.5 to 2 mm.
Regarding claim 18, Lu teaches that the thickness of the polymer film is 0.8 mm (33 mils, paragraph 0140), with the upper protective layer having a thickness of 0.356 mm (14 mils, paragraph 0140), the interlayer having a thickness of 0.13 mm (5 mils, paragraph 0140), and the lower protective layer having a thickness of 0.356 mm (14 mils, paragraph 0140). However, “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” (MPEP 2144.04 Section IV Part A). Therefore, without a showing of criticality, the claimed dimensions do not impart patentability to the claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0159041 Lu as applied to claim 1 above, and further in view of WO 2004/011271 Smith et al.
Regarding claim 6, Lu teaches the polymer film but does not teach the thermal shrinkage. Smith teaches an interlayer film for laminated safety glass, where, in the conventional example, after receiving heat treatment at 60°C for 30 minutes, the shrinkage for a pvb layer that was 0.76 mm thick was 2% (page 8, lines 17-20). Because the shrinkage of a material is dependent on the material property and the processing conditions, and the processing conditions are similar to that of the claim, it would be reasonable to expect the polymer layer of Lu, dried at the conditions in Smith to have the same shrinkage percentage. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the drying conditions of Smith because these are the conventional parameters (“comparative” page 8, line 15).
Please note, claim 6 includes product by process language (heat treatment at 50°C for 1 hour). The discussion above tends to show the claimed product is the same as what is taught by the prior art. “[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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, 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), MPEP 2113. In this case, the process of Lu in view of Smith appears to form the same product as that of the instant invention. Applicant may provide evidence proving an unobvious difference between the products.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0159041 Lu as applied to claim 1 above, and further in view of US 3,612,745 Warren.
Regarding claim 7, Lu teaches the polymer film but does not teach the elongation percentage. Warren teaches a vehicle transparency, where a pvb film plasticized with dibutyl sebacate (also taught by Lu, paragraph 0035) in an amount of 5-65 wt% (Warren column 5, lines 69-71, and Lu teaches 5-120 phr, paragraph 0033) exhibits an ultimate elongation of 250% (Warren column 6, lines 4-10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the plasticizer, amount and material, and therefore the elongation, of Warren in the product of Lu because this results in a better “head catch” capability and therefore better safety glass performance (column 5, line 71 – column 6, line 10).
Response to Arguments
Applicant's arguments filed October 23, 2025, have been fully considered but they are not persuasive.
Applicant argues that the data provided illustrates criticality of the hydroxyl content. However, the data provided in the specification is not sufficient to establish criticality of the features. The data provided is sufficient to establish a trend for the plasticizer amount, but not for the molecular weight. The data only includes points within the 106,000 to 116,000 of the claim, but the data does not include points above or below the claimed range such that examiner may establish a trend against which to determine criticality. Therefore, the data provided is not sufficient to establish criticality of the claimed invention at this time.
Conclusion
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781