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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 4, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the cancellation of claims 1 – 40 and the addition of new claims 41 – 59.
Election/Restrictions
Newly submitted claim 44 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
With regard to claims 43 – 44, previously recited independent claim 1 recited “discrete and/or continuous.” In other words, this limitation fails to provide any species limitation because there are only three options for the debonding zones that are physically possible: discrete, continuous, or a combination of both. Therefore, due to the phrase “and/or”, a species restriction of the originally filed claims would not have been proper because the subject matter of each distinct species was recited in a single claim as optional.
Furthermore, although previous claim 1 recitation of any continuous debonding zones was optional, previous dependent claim 6 recited “the first debonding zones and the second debonding zone are discrete” (i.e., first and second debonding zones do not comprise any continuity). As such, none of the originally filed claims required any or all debonding zones to be continuous. Written as two separate and distinct dependent claims, new dependent claim 43 requires only discrete debonding zones and new dependent claim 44 requires only continuous debonding zones. Each of these limitations are claimed as separate and distinct species that cannot coexist with each other in the same embodiment. Therefore, the examiner considers dependent claim 43 recitation of “the debonding zones are [consist of] discrete” to be elected by original presentation and dependent claim 44 recitation of “debonding zones are [consist of] continuous” to be withdrawn for the reason of separate and distinct species from 43 being elected by original presentation.
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, claim 44 is 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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 41 – 59 are rejected under 35 U.S.C. 103 as being unpatentable over Cui et al. (US 2016/0159042 A1), in view of Simon et al. (U.S. Patent No. 5,547,736).
*Saflex® PVB Interlayer Product Technical Sheet (see claims 46 – 47)
**MatWeb - TPU (see claims 46 – 47)
**Kent Elastomer Products (see claim 55)
With regard to claim 41, Cui et al. teach a multiple layer panel for windows or windshields (paragraph [0067]), such as safety glass, wherein the panel comprises two rigid substrates, such as two sheets of glass (paragraph [0006]), and an interlayer between the substrates (Applicant’s “adhesive polymeric interlayer”), wherein an adhesion stabilizing agent coating (Applicant’s “superbonding layer”) is applied to the polymer sheet (interlayer) in order to enhance adhesion between the surface of the polymer sheet and a glass substrate (paragraph [0020]). The interlayer may be composed of thermoplastic polymers, such as poly(vinyl acetal) resins (e.g. poly(vinyl n-butyral), paragraph [0039]) and acid copolymer such as ethylene/carboxylic acid copolymers and ionomers thereof (paragraphs [0037]).
Cui et al. do not explicitly teach the coating comprising the adhesion stabilizing agent has a sub-micron thickness.
However, Cui et al. teach the surface of interlayers of different working examples were evenly spray coated with the adhesion stabilizing agent until a target silicon concentration was reached (paragraph [0081]). In other words, the thickness of the coating is dependent on the desired concentration of adhesive stabilizing agent on the surface of the interlayer. As shown in Table 4a, interlayer surfaces containing a higher Si concentration (i.e. adhesive stabilizing agent) resulted in improved peel adhesion (N/cm) over the time frame of multiple weeks.
Therefore, based on the teachings of Cui et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to adjust the amount of adhesion stabilizing agent coating applied to the interlayer surface (i.e. the coating thickness) through routine experimentation in order to achieve the desired peel adhesion over the time frame of multiple weeks. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Cui et al. do not teach the adhesive polymer interlayer comprises debonding zones.
Simon et al. teach a laminated glazing (such as window, windshield, or sunroof) comprising a sheet (i.e. “adhesive polymeric interlayer”) (10) composed of plastic, such as PVB for adhering two rigid panels, such as glass panels to each other. When the bond strength between the plastic sheet (interlayer) and rigid (glass) panels is too high, the plastic sheet may undesirably rupture on impact. Furthermore, if the bond strength between the plastic sheet and the rigid panel is too low, the plastic sheet may splinter from the rigid panel, causing injury to a person in the surrounding area (Col. 1, Lines 15 – 26).
Simon et al. suggests resolving this problem by controlling adhesion with protrusions formed between the plastic sheet (interlayer) and the rigid substrate (glass panels). A bonding force (if any) at the contact surface between glass and protrusions/projections (16/56) (Applicant’s “discrete debonding zones”) on the surface of the plastic sheet, which has a lower bonding force compared to the regions between the glass and the interface at the gaps (58) (i.e. area without protrusions) (Col. 2, Lines 45 – 59, Col. 3, Lines 18 – 20, Col. 5, Lines 19 – 22). The adhesion (peel strength) of the plastic sheet 10 to the glass is controlled by the number of projections (16) (Col. 5, Lines 6 – 22).
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Therefore, based on the teachings of Simon et al., it would have been obvious to one of ordinary skill in the art to incorporate projections (“discrete debonding zones”) on the surface of the interlayer taught by Cui et al. for controlling adhesion (i.e. peel strength) between the interlayer and the rigid panel (i.e., glass panel) taught by Cui et al. for avoiding rupturing or splintering of the interlayer on impact.
Based on the teachings of Simon et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the number of projections through routine experimentation in order to achieve the desired adhesion property (i.e. mean peel strength) of the interlayer. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Furthermore, the presence of projections for debonding in the interlayer inherently results in decreased adhesion of the interlayer within an adjacent layer that does not contain debonding zones, such as the adhesion stabilizing agent coating (i.e., “the superbonding layer”) compared to the adhesion strength of the adhesion stabilizing agent coating with the opposing rigid glass layer (i.e., “rigid substrate”) because neither the adhesion stabilizing agent coating or the rigid class substrate contain debonding zones. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP 2112.
With regard to claim 42, Cui et al. teach the interlayers (i.e. “TAPI” and/or “BAPI”) may comprise at least one polymer sheet, such as a single sheet or multiple layers, wherein two or more layers of the interlayer may have similar or different compositions (paragraphs [0019] & [0046]). The adhesive stabilizing coating material can be applied to at last one surface of the polymer sheet, wherein at least one layer of the interlayer is composed of poly(vinyl acetal) resin, such as polyvinylbutyral or ionomeric resin (paragraphs [0025], [0037] – [0040], [0043]).
With regard to claim 43, Simon et al. teach the debonding zones are discrete (Fig. 2, shown above).
With regard to claim 45, Simon et al. teach during autoclave laminating, the interlayer polymer (e.g. PVB) of the sheet melts at an elevated temperature encountered and flows around the projections (i.e. “first debonding zone” and “second debonding zone”) to fill any voids and provide a void-free interface as shown in Fig. 2 above (Col. 5, Lines 2 – 6). Therefore, the projections (“debonding zones”) are located within 10% thickness of the adhesive polymeric interlayer (i.e. “interlayer”) surface.
With regard to claims 46 – 47, as discussed above, Simon et al. teach the projections may also be composed of inorganic material or plastic material, such as crosslinked or uncrosslinked polyurethane, polyvinyl chloride, and epoxies (Applicant’s “first material” of “another debonding zones”). Simon et al. teach partial PVB resin interlayer of the working examples was obtained as commercial grade Saflex® TG sheet (Col. 8, Lines 61 – 65), which has a glass transition temperature of 25°C ± 1 (see *Saflex® PVB Interlayer Product Technical Sheet. Thermoplastic polyurethane (uncrosslinked) has a glass transition temperature of -48°C to -5°C (see **Matweb TPU). Therefore, one of ordinary skill in the art would recognize these other resins (“first polymeric material”), such as thermoplastic (uncrosslinked) polyurethane, inherently has a different glass transition temperature than the polyvinyl butyral of interlayer (“second polymeric material”) (Applicant’s option (iv)).
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 48, as shown in Fig. 2 above, Simon et al. teach at least one of the debonding zones is coplanar to the sheet 10 (Applicant’s “interlayer”).
With regard to claim 49, Simon et al. teach the debonding zones are discrete, and are located in one plane or in more than one plane (Fig. 2, shown above).
With regard to claim 50, Simon et al. teach the discrete debonding zones are distributed in an ordered pattern (Col. 3, Lines 45 – 52 & Fig. 2, shown above).
With regard to claim 51, Simon et al. teach an ordered pattern of projections is preferred, but not essential for resisting adhesion (Col. 3, Lines 45 – 52). Therefore, Simon et al. suggest stochastic distribution of the adhesion-resisting projections as a nonpreferred embodiment.
MPEP 2122 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
With regard to claim 52, Simon et al. teach at least one of the debonding zones is conical, elliptical, oblong, oval, rectangular, square or other similar shape (i.e. “characterized by a regular shape”) (Col. 4, Lines 3 – 7).
With regard to claim 53, Simon et al. teach projections 16 typically extend (i.e. thickness of the discrete debonding zones) at least about 0.5 mils (0.013 mm) from surface 14 (Col. 4, Lines 1 – 3). For example, a circular cross-sectional shaped projection may have an (effective) diameter of about 0.2 mm and a height (thickness) of about 0.03 mm (Col. 4, Lines 7 – 12). As such, the example debonding zones has an effective diameter is 6.7 multiples of the thickness, which is within Applicant’s claimed range of 1 – 150,000,000 multiples.
With regard to claim 54, Simon et al. teach the surface of sheet 10 need not be entirely covered with a pattern of projections. It may be desirable to provide local zones of high adhesion for specific applications by purposely leaving predetermined regions of the sheet free of projections or altering the pattern to leave more uncoated sheet surface between projections during the deposition operation. Projection configuration, projection pattern on the sheet surface and sheet surface area coverage can be conveniently typically set by the gravure plate pattern being used to deposit the projections to provide any desired level of adhesion to a rigid laminating panel or block resistance (Col. 6, Lines 11 – 24).
Therefore, based on the teachings of Simon et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the number of projections or the pattern of projections in local zones through routine experimentation in order to achieve the desired level of adhesion (peel strength) in each local zone (first and second debonding zones). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 55, as discussed above, Simon et al. teach the projections (“first polymeric material” of “first debonding zones”) may also be composed of inorganic material or plastic material, such as polyurethane (Applicant’s “first material” of “another debonding zones”). As evidenced by ***Kent Elastomer Products, Inc., plastic (i.e. “thermoplastic”) polyurethane is a thermoplastic elastomer.
With regard to claim 56, as discussed above, Cui et al. teach the multiple layers of the interlayer may be composed of an acid copolymer such as ethylene/carboxylic acid copolymers and ionomers thereof (paragraphs [0037]). The acid-function copolymers of the ionomeric resins may be partially neutralized with at least one neutralization agent, such as sodium (paragraph [044]).
With regard to claim 57, Simon et al. teach projections 16 (“debonding zones”) typically extend at least about 0.5 mils (0.013 mm) from surface 14 (i.e. thickness) (Col. 4, Lines 1 – 13), which is within Applicant’s claimed range of about 0.001 mm to about 10.0 mm.
With regard to claim 58, the rigid substrate is a glass substrate (paragraphs [0006] & [0020]).
With regard to claim 59, the references cited above do not explicitly teach a ratio of adhesion of (i) adhesion strength between the superbonding layer and the rigid substrate to (ii) adhesion strength between the superbonding layer and the adhesive polymeric interlayer is at least 2.
However, as discussed above for claim 41, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the number of projections through routine experimentation in order to achieve the desired adhesion property (i.e. mean peel/adhesion strength) of the interlayer and the adjoining adhesion stabilizing agent coating (i.e., “the superbonding layer”). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant argues, “Claim 40 was rejected as allegedly lacking sufficient written description. This claim has been canceled and is not re-presented in new form herein. Accordingly, this rejection is moot” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: In light of the cancellation of claim 40, the rejection of claim 40 under 35 U.S.C. §112(a) is withdrawn.
Applicant argues, “Applicant submits that newly present claims 41 – 59 are free from the criticisms outlined on pages 3 and 4 of the office action…In particular, new independent claim 41 is based on cancelled independent claim 1 but rewritten for improved clarity” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: In light of the cancellation of claims 1 – 10, 12, 15 – 16, 20, & 39 – 40 and re-re-writing the subject matter in claims 1 – 10, 12, 15 – 16, 20, & 39 – 40, the rejections of claims 1 – 10, 12, 15 – 16, 20, & 39 – 40 under 35 U.S.C. §112(b) are withdrawn.
Applicant argues, “…these references do not disclose or suggest a submicron-thick superbonding layer having a substantially higher adhesion to a rigid substrate than to an adhesive polymeric interlayer, as recited in independent claim 41.
“…as discussed above, claim 41 recites that the superbonding layer has substantially higher adhesion to the rigid substrate than to the adhesive polymeric interlayer. This is distinguishable from the adhesion stabilizing agent in Cui. Specifically, there is no indication in Cui that the adhesion stabilizing agent would result in a layer having this property (i.e., the property related to controlled debonding). Accordingly, the rejection under 35 U.S.C. § 103 is moot in view of the amendments herein” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. With regard to the recited sub-micron thickness of the superbonding layer, as previously discussed, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to adjust the amount of adhesion stabilizing agent coating applied to the interlayer surface (i.e. the coating thickness) through routine experimentation in order to achieve the desired peel adhesion over the time frame of multiple weeks. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to the recited relative adhesion of the superbonding layer to each of the rigid substrate and interlayer, as previously discussed, the presence of projections for debonding in the interlayer inherently results in decreased adhesion of the interlayer within an adjacent layer that does not contain debonding zones, such as the adhesion stabilizing agent coating (i.e., “the superbonding layer”) compared to the adhesion strength of the adhesion stabilizing agent coating with the opposing rigid glass layer (i.e., “rigid substrate”) because neither the adhesion stabilizing agent coating or the rigid class substrate contain debonding zones. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781