DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed on August 28, 2026 has been entered in the above-identified application. Claims 1, 2, 4, 7, 8, 10, 11, 19, and 20 are amended. Claims 6 and 15-18 are canceled. Claims 1-5, 7-14, 19, and 20 are pending, of which claims 8, 19, and 20 are withdrawn. Claims 1-5, 7, and 9-14 are now under consideration.
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.
3. Claim 7 is 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.
The term “movable” in claim 7 is a relative term which renders the claim indefinite. The term “movable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction or clarification is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. Claims 1-5, 7, and 9-14 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(1) as being anticipated by Kiyoto et al. (US 2014/0004338 A1).
Kiyoto et al. disclose a heat ray-shielding material, including: a metal particle-containing layer including at least one type of metal particles; and an overcoat layer in close contact with at least one surface of the metal particle-containing layer. The heat ray-shielding material includes a metal particle-containing layer and an overcoat layer, and if necessary, further includes other layers such as an adhesive layer, an ultraviolet light absorption layer, a substrate and a metal oxide particle-containing layer. As shown in FIG. 1, examples of the layer structure of the heat ray-shielding material 10 includes a layer structure including a metal particle-containing layer 14 including at least one type of metal particles and including an overcoat layer 13.
Also, as shown in FIG. 2, examples of the layer structure (equivalent to the layer structure of the claimed invention) of the heat ray-shielding material 10 include a substrate 15 (equivalent to the first member of the claimed invention), a metal particle-containing layer 14 on the substrate (equivalent to the filling member of the claimed invention), an overcoat layer 13 (equivalent to the second member of the claimed invention), on the metal particle-containing layer, an ultraviolet absorbing layer 12 on the overcoat layer and an adhesive layer 11, on the ultraviolet absorbing layer. The metal particles are not particularly limited and can be appropriately selected according to the intended purpose; however, from the viewpoint of the high reflectance of heat ray (near-infrared ray), for example, silver, gold, aluminum, copper, rhodium, nickel and platinum are preferable. The medium in the metal particle-containing layer is not particularly limited, and can be appropriately selected according to the intended purpose; examples of such a medium include: polymers such as polyvinyl acetal resin, polyvinyl alcohol resin, polyvinyl butyral resin, polyacrylate resin, polymethyl methacrylate resin, polycarbonate resin, polyvinyl chloride resin, saturated polyester resin, polyurethane resin, and natural polymers such as gelatin and cellulose; and inorganic substances such as silicon dioxide and aluminum oxide. The overcoat layer is not particularly limited, can be appropriately selected according to the intended purpose, and includes, for example, a binder, a matte agent and a surfactant, and if necessary, other components. The binder of the overcoat layer is not particularly limited, can be appropriately selected according to the intended purpose; examples of the binder include thermosetting or photocurable resins such as acrylic resin, silicone-based resin, melamine-based resin, urethane-based resin, alkyd-based resin and fluorine-based resin. The binders quoted as examples for the ultraviolet absorbing layer can also be used. The function as the overcoat layer may also be imparted to the ultraviolet absorbing layer. The thickness of the overcoat layer is preferably 0.01 to 1,000 microns (equal to 1.0x105 to 1 mm) (meeting the limitations of claims 5 and 12-14). The adhesive layer may be an adhesive layer having the function of the ultraviolet absorbing layer, or alternatively may be an adhesive layer not including the ultraviolet absorber. The materials usable for the formation of the adhesive layer is not particularly limited and can be appropriately selected according to the intended purpose; examples of such materials include polyvinyl butyral (PVB) resin, acrylic resin, styrene/acryl resin, urethane resin, polyester resin and silicone resin (meeting the limitations of claim 3 and 9). The substrate is not particularly limited and can be appropriately selected according to the intended purpose as long as the substrate is an optically transparent substrate; examples of such a substrate include a substrate having a visible light transmittance of 70% or more or preferably 80% or more, and a substrate having a high transmittance in the near infrared ray region. The material of the substrate is not particularly limited and can be appropriately selected according to the intended purpose; examples of such a material include: polyolefin-based resins such as polyethylene, polypropylene, poly4-methylpentene-1 and polybutene-1; polyester-based resins such as polyethylene terephthalate and polyethylene naphthalate; polycarbonate-based resin; polyvinyl chloride-based resin; polyphenylene sulfide-based resin; polyether sulfone-based resin; polyethylene sulfide-based resin; polyphenylene ether-based resin; styrene-based resin; acrylic resin; polyamide-based resin; polyimide-based resin; and cellulose-based resins such as cellulose acetate, and examples of the substrate include films made of these resins or layered film made of these films (meeting the limitations of claim 3 and 9). The heat ray-shielding material is suitably usable, for example, as films or laminated structures for vehicles such as automobiles and buses, films or laminated structures for building materials, and various members required to prevent the transmission of heat ray (meeting the limitations of claim 7). (See Abstract and paragraphs 0013, 0033-0041, 0044-0046, 0058, 0060, 0071, 0072, 0079, 0080, 0091-0093, 0129-0136, 0145-0146, 0163, 0235, 0324). With regards to the difference between a value of a relative permittivity of a member with a largest relative permittivity and a value of a relative permittivity of a member with a lowest relative permittivity among the first member, the second member and the filling member is 1.0 or less and the limitiosn that the relative permittivity of the first member and a relative permittivity of the second member is independently from 2.5 to 3.3, the Examiner takes the position that such property limitations are inherent in the laminated structure taught by Kiyoto et al. given that the structure and the chemical composition of each layer as taught by Kiyoto et al. and that of the claimed invention are identical.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1, 3, 5, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 5, and 8 of copending Application No. 18/275,760 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the laminate structure in copending Application No. 18/275,760 (reference application) and the scope of the laminate structure of the instant application overlap. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the laminate structure of both the instant claims and the laminate structure in copending Application No. 18/275,760 (reference application). As a result, the claims are rejected under obviousness-type double patenting.
With regards to the difference between a value of a relative permittivity of a member with a largest relative permittivity and a value of a relative permittivity of a member with a lowest relative permittivity among the first member, the second member and the filling member is 1.0 or less and the limitation that the relative permittivity of the first member and a relative permittivity of the second member is independently from 2.5 to 3.3, the Examiner takes the position that such property limitations are inherent in the laminated structure of copending Application No. 18/275,760 given that the structure and the chemical composition of each layer as recited in copending Application No. 18/275,760 and that of the claimed invention are identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
6. Applicant's arguments filed on August 28, 2026 have been fully considered but they are not persuasive.
Applicants traverse the rejection of under 35 U.S.C. § 102(a)(1) as being anticipated by Kiyoto et al. (US 2014/0004338) and submit that amended independent claim 1 recites a filling member is in direct contact with each of the first member and the second member and in contrast the prior art teaches intervening layers.
However, as stated in the above rejection, and as shown in FIG. 2, examples of the layer structure (equivalent to the layer structure of the claimed invention) of the heat ray-shielding material 10 include a substrate 15 (equivalent to the first member of the claimed invention), a metal particle-containing layer 14 on the substrate (equivalent to the filling member of the claimed invention), an overcoat layer 13 (equivalent to the second member of the claimed invention), on the metal particle-containing layer, an ultraviolet absorbing layer 12 on the overcoat layer and an adhesive layer 11, on the ultraviolet absorbing layer. In other words, the substrate is now equivalent to the first member of the claimed invention, the metal particle-containing layer 14 on the substrate is now equivalent to the filling member of the claimed invention, and the overcoat layer 13 is now equivalent to the second member of the claimed invention.
Applicants state that the inherency position taken on page 5 of the previous Office Action fails to supply the missing limitation however Applicants fail to point out which limitation is specifically missing given that claim 1 simply recites a first member, a filling member, and a second member. Furtehrmore, the limitation “such that a difference is 1.0 or less between: (i) a value of a largest relative permittivity among the first relative permittivity, the second relative permittivity and the third relative permittivity; and (ii) a value of a lowest relative permittivity among the first relative permittivity, the second relative permittivity and the third relative permittivity” leads to the question that when the relative permittivity is zero (i.e., difference is 1.0 or less) is the first member, a filling member, and a second member the same material?
Applicants state the Office Action has not identified which specific materials from Kiyoto's broad teachings would result in the claimed permittivity range. Again, leading to the question of what are the material compositions of the claimed laminated structure?
Once a product appearing to be substantially identical is found and a 35 USC 102 or 35 USC 103 rejection is made, the burden shifts to the Applicant to show an unobvious difference. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. If it is applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that a sound basis has been provided in the rejections of record for believing that the claimed products and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e. naturally flow from the prior art).
Conclusion
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787
Prosecution Insights