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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1–15 and 17–20, drawn to a panel and method of controlling its temperature.
Group II, claim(s) 16, drawn to a panel.
The groups of inventions listed above 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:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. The technical feature of Group I is the transmissibility of, or beam with, a near infrared band of 800 nm to 2000 nm. The technical feature of Group II is the foreign material sensor.
During a telephone conversation with Asaf Batelman on 24 April 2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1–15 and 17–20. Affirmation of this election must be made by applicant in replying to this Office action. Claim 16 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 8 (fig. 2).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses phrases which can be implied (“The present disclosure relates to”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The amendment filed 18 May 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the European Application No. 20208540.3 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 1 October 2021. See MPEP 1893.03(b). Therefore, the specification amendment of 18 May 2023 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is objected to because of the following informalities:
In ¶ 75 of the submitted specification, “heating beam 512” should be “heating beam 518.”
Claim Objections
Claim 20 is objected to because of the following informalities:
In claim 20 on line 2, the comma should be struck.
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.
Claims 1–15 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 provides, first, a series of transmission rates (40% to 60%) depending on a hypothetical thickness of the base layer (3 mm to 1 mm). The claim then provides transmission rates for the outer layer, depending on the thickness of the base layer. The claim is indefinite because, being a separate layer, the transmission rate of the outer layer itself should be unaffected by the thickness of the base layer. It’s unclear if the claim is intended to be understood such that the transmission rate of the outer layer is intended to mean the transmission rate of the outer layer and the base layer collectively, or some other understandable interpretation, which is how the claim will be interpreted; but as written, the claim is too unclear.
Claim 20 has the same limitations mentioned for claim 1 above, particularly in combination with claim 19 from which it depends, and this claim is indefinite for the same reason.
Comment: Claim 1 (and other claims with similar limitations) is unusual because it defines the base layer by what its transmission rate would be if as thick as claimed. Therefore, the claim is not actually claiming the thickness of the base layer, which means that the mutually exclusive groups (1 mm, 2 mm, and 3 mm versus 4 mm and 5.4 mm) do not render the claim indefinite.
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.
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.
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, 2, 7, 9–11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nagashima et al. (US Pat. 5,683,804).
Claim 1: Nagashima discloses a panel for a vehicle (col. 1, l. 7, “vehicles”), the panel for transmitting a sensor beam having a sensing wavelength and absorbing a heating beam having a heating wavelength (understood as intended use), the panel comprising:
a base layer (12) defining a base inner major surface and a base outer major surface (appreciable from fig. 2), the base layer formed of a base layer polymer (col. 10, l. 16, “polycarbonate”) selected to transmit a heating wavelength band within a near infrared band 800 nm to 2000 nm (generally appreciable from fig. 1, where that figure’s applicability to this embodiment is appreciable from col. 10, ll. 15–40); and
an outer layer (14) formed onto the base outer major surface of the base layer (see fig. 2), the outer layer (14) formed of an outer layer polymer (col. 4, ll. 33, “synthetic resins”) selected to transmit the heating wavelength band (see fig. 1),
wherein at least one of the base layer and the outer layer is at least one of lidar-transparent and radar-transparent (the polycarbonate base layer would be transparent to each).
Nagashima never explicitly discloses that its polycarbonate base layer, or outer layer, would transmit a heating wavelength band at the transmission rates claimed.
However, Nagashima’s overall disclosure clearly suggests that the transmission rate of the base layer would be equal to or greater than 40% when the base layer thickness is 3 mm, as col. 10, ll. 16–17, provide for a thickness of the base layer of 3 mm, and this same section of the document explains that “The same evaluation tests as those of Example 1 were conducted. Similar to Example 1, the results of the tests were satisfactory.” Given the transmission rates for the “glass substrate” (analogous to the polycarbonate base layer) and “Example 1” in fig. 1, it is more likely than not that the base layer transmission rate would be equal to or greater than 40% for a thickness of 3 mm, while the outer layer transmission rate would be less than 60% as analogous to Example 1 in fig. 1.
Claim 2: Nagashima discloses that the sensor beam is a lidar beam having a wavelength in the range of 900–910 nm or in the range of 1540–1560 nm, and the heating beam has a wavelength of one of approximately 1190–1210 nm, 1480–1500 nm and 1710–1730 nm (each of these features is not positively recited, and do not meaningfully affect the claim).
Claim 7: Nagashima discloses that the outer layer polymer includes a thermoplastic material (col. 4, l. 35, “acrylic resin”) that includes absorber molecules (see the list from col. 3, l. 66 to col. 4, l. 4).
Claim 9: Nagashima discloses that the outer layer is formed of a silicone containing an absorber and/or of a polyurethane outer layer (col. 4, ll. 33–34, “urethane resin”).
Claim 10: Nagashima does not disclose that the outer layer is overmolded onto the base layer.
However, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to overmold the outer layer on to the base layer to absorb IR at the edge of the base layer.
Claim 11: Nagashima discloses that the outer layer is a wrap or paint (col. 3, l. 32, “primer coating solution” qualifies as a paint).
Claim 13: Nagashima does not disclose that the outer layer is not co-extensive with the base layer.
However, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to leave the outer layer off of any part of the base layer where it had an obviously undesirable effect.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US Pub. 2020/0094788) in view of Sartenaer et al. (US Pub. 2021/0084716)
Claim 17: Takahashi discloses a method of controlling a temperature of a panel comprising:
sensing a vehicle condition (via 11, see ¶ 32);
communicating the vehicle condition to a controller (¶ 32, “electronic control unit”);
associating the vehicle condition with a temperature control requirement (to be effectuated by infrared irradiation portion 23);
generating a temperature control signal (¶ 32, “the electronic control unit selectively turns on and off the infrared irradiation portion 23”);
communicating the temperature control signal to a beam generator (23); and
generating an infrared beam (via 23).
Takahashi never explicitly discloses that its beam has a near infrared band of 800 nm to 2000 nm, and instead only describes it as “infrared radiation.”
However, one of ordinary skill in the art would have understood that Takahashi would likely be employing a near infrared band. For example, Sartenaer discloses a similar system and uses a near infrared band (¶ 74, “near infrared radiation,” “750 nm to 1650 nm”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the near infrared band taught by Sartenaer in the infrared beam of Takahashi as radiation known to produce the desired effect, i.e. de-icing or de-fogging.
Claim 18: Takahashi discloses that the signal is based on the temperature control requirement (this is clear from ¶ 32) and generation of the beam is in association with the control signal (ibid.).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Takahashi in view of Sartenaer as applied to claim 18 above, and further in view of the Covestro NPL.
Takahashi does not explicitly disclose that the beam transmits through a base layer of the panel at a transmission rate of one or more of: equal to or greater than 40% when the base layer thickness is 3 mm; equal to or greater than 50% when the base layer thickness is 2 mm; and equal to or greater than 60% when the base layer thickness is 1 mm.
However, Takahashi discloses that its “base material layer 26 and the sealing layer 28 are composed of a transparent plastic such as polycarbonate (PC) plastic, polymethacrylic acid methyl (PMMA) plastic, or cycloolefin polymer (COP) plastic, and have transparency to millimeter waves, infrared light, and visible light.”
The Covestro NPL shows an example of a polycarbonate near infrared transmission rates of above 80% with a thickness of 4 mm (see p. 5).
Therefore, given the Covestro NPL’s teachings, it is more likely than not that at least the polycarbonate embodiment of Takahashi has a near infrared transmission rate as claimed.
Allowable Subject Matter
Claims 3–6, 8, 12, 14, and 15, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claims 3–6, 8, 12, 14, and 15, Nagashima is not at all directed to the use of a sensor beam and a heating beam as is the disclosure (and claim 14), but it incidentally renders obvious, on its own, the claimed layer structure. The limitations in each of claims 3, 8, and 12 are too specific to be found obvious in view of Nagashima alone, and Nagashima does not form any ground upon which to modify it with other references because it is not so analogous with the claimed invention except for its bare mention of usability for vehicles.
Dependent claims 4–6 each depend from claim 3, and dependent claim 15 depends from claim 14.
Groothues et al. (US Pub. 2004/0191485) has many similarities with Nagashima.
Regarding claim 20, Takahashi does not disclose the combination in each of these claims because its outer layer would not have a transmission rate equal to or less than the values claimed, since its materials are meant to transmit the near infrared beam.
A reference like Eichhorn (DE 102010013559 A1, cited by Applicant) is similar to Takahashi but discloses a combination of infrared transparent layer and an infrared absorbing layer, but it does not disclose any use of polymers.
Gasworth (DE 10110142 B4, cited by the Office), Bradley et al. (US Pub. 2021/0141217), and Bertram et al. (WO 2005/003047 A1, cited by the Office) are also generally cited as relevant prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/ Primary Examiner, Art Unit 3761
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