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 .
Election/Restrictions
Newly submitted claims 43-47 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The inventions of Groups I (claims 1-16), Group II (claims 27-32 and 35-36) and Group III (claims 43-47) do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The special technical feature that is commonly shared between the inventions of Groups I-III of a multi-layer coated substrate is taught by Bertolini et al. (U.S. Patent Application Publication No. 2014/0285879) who teaches a pane construction comprising transparent panes, made of glass, ceramic, plastic or organic material, and an IR filtering layer (See Abstract, paragraph [0044]), wherein layers 2.1, 2.6, 3.1, and 3.3 can consist of polyurethane (paragraph [0062]) wherein UV filtering layer means 3 is sandwiched between 3.1 and 3.3. (See Fig. 1). Given that Bertolini et al. teaches the claimed invention, the cited claims fail to define a contribution over the prior art. Therefore, the cited claims fail to constitute a special technical feature and hence lack of unity exists between the cited claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 43-47 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 recites “ATO”. It is suggested the full form of this abbreviation be recited in the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 4 and 9 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.
Claim 4 recites “the optical material either reflects or absorbs light...” which is confusing given that it is not clear whether “the optical material” refers to the optical material recited in claim 1 or the second optical material recited in the claim upon which this claim depends, i.e. claim 3. Further, it is not clear whether “light” refers to IR light recited in claim 1 or UV light recited in claim 3. For the purpose of examination, the recited limitation is considered to refer to the second optical material that reflects or absorbs UV light recited in claim 3 given that the wavelength recited in the claim, i.e. between about 10 and 410 nanometers, corresponds to the UV wavelength.
Claim 9 recites the limitation "the oxide nanoparticles" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
Claim(s) 1, 7-9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bertolini et al. (US 2014/0285879) in view of Anderson et al. (US 2007/0048519).
Regarding claims 1, 7, 8, and 9, Bertolini et al. teaches a pane construction comprising transparent panes, made of glass, ceramic, plastic or organic material (See Abstract), wherein layers 2.1, 2.6, 3.1, and 3.3 can consist of a thermoplastic material or foil material such as polyurethane (paragraph [0062], Fig. 1).
Bertolini et al. fails to teach an optical material within one of the first and second thermoplastic polyurethane layers.
However, Anderson et al. teaches a solar control laminate comprising a solar control film and a polymeric sheet, wherein the solar control film comprises a polymeric film coated on one or both of its sides with a coating comprising inorganic infrared absorbing nanoparticles including nanoparticles of antimony tin oxide (ATO) and indium tin oxide (ITO) (See Abstract, paragraph [0038]) and a matrix material including polyurethane (paragraphs [0023] and [0057]-[0058]). Given that Anderson et al. teaches inorganic infrared absorbing nanoparticles identical to those presently claimed, the inorganic infrared absorbing nanoparticles would necessarily absorb light having a wavelength as presently claimed.
It would have been obvious to one of ordinary skill in the art to include nanoparticles of antimony tin oxide (ATO) and/or indium tin oxide (ITO) in the polyurethane layer of Bertolini et al. in order to provide reduction of the transmission of radiation (Anderson et al., paragraph [0003]).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Bertolini et al. (US 2014/0285879) in view of Anderson et al. (US 2007/0048519) and further in view of Hunter et al. (IT 1186725).
Bertolini et al. in view of Anderson et al. is relied upon as disclosed above.
Regarding claim 2, Bertolini et al. in view of Anderson et al. fails to teach wherein the first and second thermoplastic polyurethane layers comprise an aliphatic thermoplastic polyurethane resin
However, Hunter et al. teaches a thermoplastic polyurethane for use in laminates with glass and plastics (See Abstract and page 5) being formed from aliphatic diisocyanate (pages 8 and 10) which would result in an aliphatic thermoplastic urethane resin as presently claimed.
It would have been obvious to one of ordinary skill in the art to use aliphatic diisocyanate to form the polyurethane layer of Bertolini et al. in view of Anderson et al. in order to impart desired optical transparency and yellowing resistance (Hunter et al., page 10).
Claim(s) 3-4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Bertolini et al. (US 2014/0285879) in view of Anderson et al. (US 2007/0048519) and further in view of Brunion et al. (US 4,540,622).
Bertolini et al. in view of Anderson et al. is relied upon as disclosed above.
Regarding claims 3, 10 and 11, Bertolini et al. in view of Anderson et al. fails to teach wherein the first thermoplastic polyurethane layer comprises an optical material that can either reflect or absorb UV light.
However, Brunion et al. teaches a transparent plastic pane comprising cover layers wherein at least one of said layers comprise a polyurethane foil containing light stabilizer and a UV-absorber (col 1, lines 13-15, col. 4, lines 54-67, claim 1), i.e. optical material.
It would have been obvious to one of ordinary skill in the art to include light stabilizer and a UV-absorber in the first thermoplastic polyurethane layer of Bertolini et al. in view of Anderson et al. in order to impart protection from radiation of the sun (col. 4, line 54-col. 5, line 4).
Regarding claim 4, given Brunion et al. teaches UV-absorber and given UV is in the range of 100 to 400 nanometers, it is clear the UV-absorber absorbs light having a wavelength that overlaps the claimed range of 10 and 410 nanometers.
Response to Arguments
Applicant’s arguments filed 11/11/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant amended claim 1 to recite “the optical material comprises one or more IR light absorbing nanoparticles”.
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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