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 .
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) 1-10, 12, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Thiel et al. (US 2007/0020465) in view of Yabune et al. (TW 201348138).
Regarding claims 1, 2, 3, 5, 6, 7, 8, 9, 10, 16, 18, 19 and 20, Thiel et al. teaches a heatable transparency comprising a first ply, an electrically conductive coating including three or more metallic silver layers, which corresponds to the functional film as presently claimed, and a second ply (See Abstract, paragraph [0030]). Thiel et al. further teaches interlayer 24 made of polyvinylbutyral (paragraph [0025]), which corresponds to the thermoplastic intermediate layer as presently claimed.
Thiel fails to teach wherein the thermoplastic intermediate layer contains refractive-index-reducing agents.
However, Yabune et al. teaches a substrate having a low refractive index layer containing magnesium fluoride particles (page 5), wherein the average particle diameter of the magnesium fluoride particles is 1 nm to 100 nm (page 7), wherein the refractive index of the magnesium fluoride particles is 1.20 to 1.40 (page 7), and wherein the content of magnesium fluoride particles is 20% to 90% by mass (page 15). Yabune et al. further teaches binder including thermoplastic resin (page 14).
It would have been obvious to one of ordinary skill in the art to include magnesium fluoride particles in the thermoplastic intermediate layer of Thiel in order to provide a layer having a low refractive index and excellent film forming property (Yabune et al., page 3).
Given that Thiel in view of Yabune et al. teaches thermoplastic intermediate layer including materials and structure as presently claimed, the magnesium fluoride particles, i.e. refractive- index-reducing agents would necessarily reduce the refractive index of the thermoplastic film as presently claimed, absent evidence to the contrary.
Regarding claim 4, Thiel et al. teaches wherein the functional layer includes first dielectric layer 40, first reflective layer 46 including silver, and second dielectric layer 50 (paragraphs [0033]-[0035] and [0038], Fig. 1).
Regarding claim 12, Thiel et al. teaches wherein the interlayer can include one or more layers or plies including any material such as polyvinylbutyral, plasticized polyvinyl chloride, or multi-layered thermoplastic materials including polyethyleneterephthalate, etc. The interlayer helps provide energy absorption, reduces noise, and increases the strength of the laminated structure and can have a solar control coating provided thereon or incorporated therein or can include a colored material to reduce solar energy transmission (paragraph [0025]). Therefore, it would have been obvious to one of ordinary skill in the art to choose an interlayer including any combination of two or more thermoplastic films such as, for example, polyvinylbutyral layer and a solar control coating, which would necessarily have different refractive indices in order to achieve desired properties such as reducing noise and solar energy transmission.
Claim(s) 11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Thiel et al. (US 2007/0020465) in view of Yabune et al. (TW 201348138) and further in view of Clock et al. (3,762,988).
Thiel et al. in view of Yabune et al. is relied upon as disclosed above.
Regarding claim 11, Thiel et al. fails to teach wherein the thermoplastic film has a thickness as claimed.
However, Clock et al. teaches a safety glass interlayer (See Abstract) comprising an interlayer made of a thermoplastic film (col. 2, lines 43-47) and having a thickness of approximately 0.1 to 5.08 mm (about 4 to 200 mils, col. 8, lines 20-30) which overlaps the claimed range of at least 0.1 mm to a maximum of 2 mm.
It would have been obvious to one of ordinary skill in the art to choose a thickness including that presently claimed for the thermoplastic film of Thiel et al. in view of Yabune et al. in order to impart the desired strength (col. 8, lines 20-30).
Regarding claim 21, Thiel et al. teaches interlayer 24 in contact with the first/second ply and the metallic silver layers. Thiel et al. in view of Yabune et al. teaches wherein the refractive index of the magnesium fluoride particles is 1.20 to 1.40 (Yabune et al., page 7).
Thiel et al. fails to teach wherein the thermoplastic sheet has a thickness as claimed.
However, Clock et al. teaches a safety glass interlayer (See Abstract) comprising an interlayer made of a thermoplastic film (col. 2, lines 43-47) and having a thickness of approximately 0.1 to 5.08 mm (about 4 to 200 mils, col. 8, lines 20-30) which overlaps the claimed range of at least 0.1 mm to a maximum of 2 mm.
It would have been obvious to one of ordinary skill in the art to choose a thickness including that presently claimed for the thermoplastic sheet of Thiel et al. in view of Yabune et al. in order to impart the desired strength (col. 8, lines 20-30).
Given that Thiel in view of Yabune et al. and Clock et al. teaches thermoplastic intermediate layer including materials and structure as presently claimed, the magnesium fluoride particles, i.e. refractive- index-reducing agents would necessarily reduce the refractive index of the thermoplastic film as presently claimed, absent evidence to the contrary.
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive.
Applicant amended claims to include new claim 21.
Applicant argues that Thiel fails to disclose or suggest the claimed "thermoplastic film that contains refractive-index-reducing agents" or the claimed reduction in refractive index of at least 0.05.
However, it is agreed which is why Thiel is used in combination with Yabune, which discloses refractive- index-reducing agents identical to those presently claimed, i.e. magnesium fluoride particles having average diameter and refractive index, is used to meet the claimed limitations.
Applicant argues that Yabune does not disclose, teach or suggest: (a) a laminated glass composite pane; (b) a thermoplastic intermediate layer between two panes; (c) a bulk thermoplastic film (e.g., a 0.3-0.8 mm PVB interlayer) containing refractive-index-reducing agents; or (d) reducing the refractive index of such a thermoplastic film by at least 0.05 in the visible range.
However, note that while Yabune does not disclose all the features of the present claimed invention, Yabune is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely use of refractive- index-reducing agents, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that while Yabune mentions that various resins (including butyral resins) may be used as binders in coating formulations, this disclosure is made solely in the context of forming a thin coating layer, not a structural interlayer film used to laminate glass panes.
However, both Thiel and Yabune teach compositions comprising thermoplastic resin used on glass substrates. Therefore, the motivation of Yabune, namely to provide a layer having a low refractive index and excellent film forming property, would be applicable to Thiel.
Applicant argues that where a claimed feature is a quantitative functional limitation, inherency requires proof that the claimed result is unavoidably present in the prior art structure.
However, it is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the reference teaches all of the claimed components. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. 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 it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the applicant 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), and thus, the burden is properly shifted back to applicant to show that they are not.
Applicant argues that the 0.05 reduction occurs depends on numerous variables not addressed in the prior art, including (i) the starting refractive index of the base polymer (e.g., PVB typically ~1.50); (ii) the volume fraction (not merely weight percent) of MgF2; (iii) particle dispersion and agglomeration; (iv) particle size relative to the wavelength of visible light; and (v) the effective medium behavior of the composite.
However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the prior art not meeting the 0.05 reduction value must be supported by a declaration or affidavit.
Applicant argues that the Examiner has provided no calculations, empirical data, or technical analysis demonstrating that the claimed 0.05 reduction would inevitably result from the proposed combination.
However, the Examiner has provided technical analysis establishing why the claimed property would be inherent. Namely, given that Thiel in view of Yabune et al. teaches thermoplastic intermediate layer including materials and structure as presently claimed, the magnesium fluoride particles, i.e. refractive- index-reducing agents would necessarily reduce the refractive index of the thermoplastic film as presently claimed, absent evidence to the contrary.
Applicant argues that Thiel does not identify any deficiency in the refractive index of its interlayer, nor does it suggest that lowering the interlayer's refractive index would improve performance. Yabune's advantages relate to forming crack-free surface coatings, not bulk interlayer films.
However, prior art need not solve the same problem as Applicant. The primary reference does not need to explicitly indicate that it needs to be improved in a particular way or is deficient in a particular way for the related benefits of a secondary reference to be applicable and obvious to the primary reference. While Yabune may not be drawn to a bulk interlayer, the fact remains that both Thiel and Yabune teach compositions comprising thermoplastic resin used on glass substrates.
Applicant argues that the Office Action's reasoning effectively uses Applicant's own disclosure of the benefits of refractive-index- modified interlayers as a roadmap to reconstruct the invention from unrelated teachings. Such hindsight-driven reasoning does not satisfy the requirement for a reasoned motivation to combine under KSR.
However, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that Yabune ties the thinness of layer 410 to performance and mechanical integrity (e.g., controlling cracking/strength and preserving antireflection performance).
However, the motivation for using Yabune is specifically related to magnesium fluoride, namely, to provide low refractive index and excellent film forming property. Yabune is only used as teaching reference in order to teach use of refractive- index-reducing agents. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant argues that the dependent claim requires that the refractive-index-reducing agents are nanoparticles (n < 1.4 in the visible range) that are dispersed in the volume of the thermoplastic sheet-i.e., a bulk distribution throughout the thickness of the sheet.
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., bulk distribution throughout the thickness of the sheet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the dependent claim is not satisfied by merely producing a surface coating layer whose overall index falls in a range; it requires the refractive- index-reducing agents themselves to be nanoparticles with n < 1.4 in the visible and bulk-dispersed in a thick thermoplastic sheet.
However, the fact remains that Yabune does teach particles having refractive index as presently claimed. Further given that Yabune teaches particles in a binder, it is not clear why the particles would not be dispersed throughout the layer. Additionally, Yabune is only used for its disclosure of refractive- index-reducing particles and when combined with Thiel, the particles would be distributed throughout the interlayer of Thiel.
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