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 .
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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 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 1-9, and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi et al. (WO 2007/116688 A1) in view of Hong et al. (US 20120063952 A1) in view of US 20120240986 A1 in view of Zehentmaier et al. (US 2011/0249325 A1) and further in view of Klerks et al. (US 20200373875).
Re claims 1-7 and 11-19, Higuchi et al. is directed to a laminate having excellent weather resistance comprising a fluororesin film and an adhesive layer containing an ultraviolet absorber (paragraphs 0013-0015). The total light transmittance of the laminate is 85% or more and 90% or less (paragraphs 0055-0056). The fluororesin may be an ethylene-tetrafluoroethylene having a thickness of 0.05 mm (paragraph 0081), i.e. 50
m. The ultraviolet absorber is preferably present in the adhesive layer at a concentration of 0.5 to 20 parts mass per 100 parts adhesive (paragraph 0037). The laminate may be used as a protective sheet for a solar cell (paragraph 0016).
Higuichi doesn’t disclose up to 70 wt% fluropolymer as claimed.
Hong discloses all fluoropolymer material in the layer and thus 100 wt% (overlapping applicant’s wt% range of 70 wt% or more) to aid in high performance (see [427-35].
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 wherein the wt% aids in bonding strength. MPEP 2144.05.
While Higuchi et al. teach the incorporation of ultraviolet absorber to provide the laminate with improved weather resistance, the reference is silent regarding the transmission at 200 to 360 nm and 360 to 380 nm.
Zehentmaier et al. is directed to a multilayer optical film (paragraph 0001) that may be used in solar cells (paragraph 0079). The optical film of Zehentmaier et al. may comprise a ultraviolet-absorbing layer to shield ultraviolet radiation of wavelengths 280 to 400 nm that are known to cause degradation of plastics in outdoor applications (paragraph 0054). The ultraviolet-absorbing layer can absorb greater than 99% of incident light from 180 to 400 nm (paragraph 0058).
It would have been obvious to one of ordinary skill in the art to incorporate ultraviolet absorbers into the adhesive layer of Higuchi et al. such that the resulting layer absorbs greater than 99% of incident light from 180 to 400 nm to improve the weather resistance by protecting the laminate from ultraviolet radiation known to cause degradation in outdoor applications.
Higuchi is silent to glass substrate (claims 1, 8-9), while Zehentaier teaches glass [77] where the multilayer optical film is on the glass or between two or more panes for providing reflective properties, neither teach the thickness of the glass as claimed.
Klerks teaches a similar photovoltaic multilayer laminate with an overlapping range of glass thickness of 50-500 μm, to provide flexibility [33].
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 wherein the glass thickness aids in flexibility. MPEP 2144.05.
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.
Claims 1-9, and 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-20 of copending Application No. 18/067,366.
Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-20 represent a genus of which the inventions described by claims 1-7 and 10-20 of copending Application No. 18/067,366 are species. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). The invention recited in claims 1-7 and 10-20 of copending Application No. 18/067,366 represent a species of the invention recited in instant claims 1-19 since the multilayer film of the instant claims is written with open language that permits, but does not require, the inclusion of other components (e.g. a glass substrate having a thickness of not greater than 300 m).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, and 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/067,413.
Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-20 represent a genus of which the inventions described by claims 1-7 and 10-20 of copending Application No. 18/067,413 are species. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). The invention recited in claims 1-19 of copending Application No. 18/067,413 represent a species of the invention recited in instant claims 1-19 since the multilayer film of the instant claims is written with open language that permits, but does not require, the inclusion of other components (e.g. glass substrate having a thickness of not greater than 300 mm).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments
Applicant’s arguments are considered but not persusasive. Applicant’s summilarily argue the amended wt% fluoropolymer layer. However, the new limitations are addressed above given the new reference applied. See action above.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The best time to reach the examiner is in the mornings on Monday through Friday.
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 on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
Prosecution Insights