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 § 112
1. 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.
2. Claims 1, 3, 4, 11, 13, 15, 16, 18, 26, 33, 39, 40, 41, 45, 46 and 47 are 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.
3. With specific regard to claims 3,11,13,15 and 16, there is a lack of antecedent basis for the limitation of “the polymeric adhesion promoter”. Claim 1 recites polymeric adhesion promoter particles, but not the limitation of “the polymeric adhesion promoter”. It is unclear if this is a separate adhesion promoter from the adhesion promoter particles.
4. With specific regard to claim 3, there is a lack of antecedent basis for the limitation of “the adhesion promoters”. Claim 1 recites polymeric adhesion promoter particles, but not the limitation of “the adhesion promoters”. It is unclear if these are separate adhesion promoters from the adhesion promoter particles.
5. Claim 11 is further indefinite for the recitation of “such as”. The phrase “such as” in is a relative term which renders the claim indefinite. The term “such as” 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.
6. Claim 16 is further indefinite because it is not clear what is meant by the limitation “is at a level of up to 20 wt. %”. Do Applicants intend to limit the amount of polymeric adhesion promoter particles to an amount of up to 20 wt. %. It is additionally noted that the phrase up to 20 wt. % would also include a value of zero. Such a recitation renders claim 1 and 16 ambiguous since it is not clear if zero amount of polymeric adhesion promoter particles are included in the range.
7. Claim 18 is indefinite because it is not clear what is meant by the limitation of “wherein the outer coating when present”. The limitation of “when present” is not considered a definite limitation. In other words, it is not clear is the particles are coated with a coating layer or if the coating layer is optional. Rather, it appears Applicants are attempting to claim some kind of middle ground wherein if the particles are coated, said coating is independent of the component (b) adhesion promoter particles of claim 1. As such, the scope of this claim is not clear to the Examiner.
8. Claim 26 is indefinite because the phrase “wherein the amount of the polymer or film forming material in the outer coating is from 25-100% based on the total weight of the outer coating” lacks antecedent basis. There is insufficient antecedent basis for this limitation in the claim.
9. With regard to claim 29, the Examiner is of the position that claim 29 is not further limiting of claim 1.
10. Claim 33 is indefinite because of the limitation of “wherein the outer coating when polymeric” is not clear. The limitation of “when polymeric” is not considered a definite limitation. In other words, it is not definite if the outer coating is limited to a polymeric comprising coating. Rather, it appears Applicants are attempting to claim some kind of middle ground wherein “when” the outer coating is polymeric. As such, the scope of this claim is not clear to the Examiner.
11. Claims 1 and 39 are indefinite because the limitation of “inorganic particles” lacks antecedent basis. Claim 1 does recite inorganic interleavant particles but there is lack of antecedent basis for “inorganic particles”. As such, it is not clear if these “inorganic particles” are the same as the inorganic interleavant particles of claim 1.
12. Claim 40 is indefinite because the limitation of “the core” lacks antecedent basis. Claim 1 does recite inorganic interleavant particles and organic adhesion promoter particles but there is lack of antecedent basis for “the core”. Applicants are not claiming the structure of the particle or that the particle comprises a “core”. It is also not clear what is meant by “the core of the coated interleavant particle is from 50-99 w/w coated inorganic interleavant particles”. The Examiner is not able to determine the scope of this limitation for the purpose of searching applying prior art.
13. Claim 41 is indefinite because of the limitation of “wherein when coated” is not clear. The limitation of “wherein when coated” is not considered a definite limitation. In other words, it is not definite if the particle is coated or not. Rather, it appears Applicants are attempting to claim some kind of middle ground wherein “when” the particle is coated. It is also not clear if the coating is made up of 50-99 % w/w of coated inorganic interleavant particles. As such, the scope of this claim is not clear to the Examiner.
14. Claim 45 is indefinite because of the limitation “suitably”. The phrase “suitably” in is a relative term which renders the claim indefinite. The term “suitably” 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.
15. Claims 46 and 47 is indefinite because it is not clear if these claims are meant to be an independent claim or dependent claims. It appears that Applicants have lined through the both numbers 44 and 45 (claim 46) and both numbers 44 and 46 (claim 47).
Claim Rejections - 35 USC § 102/103
16. 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.
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.
17. Claim(s) 1-2, 4, 7-8, 10, 16-18, 21-22, 26-27, 29-30, 32-34, 39-49, 53-55 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP2000347191A.
With regard to claims 1 and 53, the published JP patent teach a applying a spacer composition comprising a mixture of solid fine particles and a binder and composite organic-inorganic particles between two glass substrates (paragraph 0017 and 0044). Said inorganic particles can be glass, silica or alumina (paragraph 0022). Said organic particles include organic crosslinked polymer particles (paragraphs 0021-0022). The Examiner is of the position that the inorganic particles meet the limitation of the claimed inorganic interleavant particles and the organic cross-linked polymer particles sufficient to meet the limitation of the claimed organic adhesion promoter particles. With regard to the limitations pertaining to the temperature, compressive strength and mass density as recited in claim 1, the Examiner is of the position that since the published JP reference teach the claimed inorganic interleavant particles and the polymeric adhesion promoter particles, the Examiner is of the position that the temperature, compressive strength and mass density limitations/properties are expected to be also be present. Applicants are invited to evidence otherwise.
With regard to claim 2, the published JP patent further teach coating the particles with a binder (paragraph 0038). Said binder can be in the form of a powder (paragraph 0040). The Examiner is of the position that powdered binder would also read on the limitation of the claimed polymeric adhesion promoter particles.
With regard to claim 4, the published JP patent does not teach the claimed charge density. However, the Examiner is of the position that the polymeric adhesion promoter particles would have the claimed charge density. Applicants have not limited the polymeric adhesion particles to a specific polymeric composition. Applicants are invited to prove otherwise.
With regard to claim 7, the published JP patent teach that the size of the solid fine particles/inorganic-organic particles ranges from 1-30 microns (paragraph 0018).
With regard to claim 8, the published JP patent does not teach the claimed density. However, the Examiner is of the position that the polymeric adhesion promoter particles would have the claimed density. Applicants have not limited the polymeric adhesion particles to a specific polymeric composition. Applicants are invited to prove otherwise.
With regard to claims 10 and 16, the published JP patent does not expressly teach the claimed amount of polymeric adhesion promoter particles. Absent unexpected results it would be obvious to a person of ordinary skill in the art to optimize the amount of polymeric adhesion promoter particles in the composition as a function of desired adhesive properties. Absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed weight percentages of the polymeric adhesion promoter particles, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). However, it is noted the published JP patent teach that the binder powder can be present in amount ranging from 1-200 wt. % (paragraph 0037).
With regard to claim 17, the published JP patent teach that binder coating can be a powder (paragraph 0040).
With regard to claim 18, the published JP patent teach mixing the solid fine particles/inorganic-organic composite particles with the powder binder (paragraph 0040). As such, the Examiner is of the position that the binder coating is separate from the polymeric adhesion promoter particles of component (b) in claim 1.
With regard to claim 20, the published JP patent also teach that the solid fine articles/inorganic-organic composite particles can be dispersed in a solution of the binder or the binder can be melted and mixed with the particles (paragraph 0039). The Examiner is of the position that either of these mixing/coating methods would form a film like layer over the particles.
With regard to claim 21, binder can be a polyester or an epoxy resin (paragraph 0031).
With regard to claim 22, the published JP patent teach polyester (paragraph 0031).
With regard to claim 26, the published JP patent teach the binder coating to particle ratio ranges from 1-200 % (paragraph 0037).
With regard to claim 41, the published JP patent does not expressly teach the claimed amount of coating. Absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed weight percentages of the outer coating, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With regard to claims 27 and 29, the Examiner is of the position that since the published JP reference teach the claimed inorganic interleavant particles and the polymeric adhesion promoter particles, the Examiner is of the position that the is expected that the compressive strength and density limitations would be present. Applicants are invited to evidence otherwise.
With regard to claim 30, the published JP patent teach that the size of the solid fine particles/inorganic-organic composite particles ranges from 1-30 microns (paragraph 0018).
With regard to claim 32, the published JP patent teach that the thickness of the outer coating ranges from .01-5 microns (paragraph 0038).
With regard to claim 33, the published JP patent teach that the binder used for the outer coating has a Tg ranging from 50-160°C (paragraph 0035).
With regard to claim 34, the published JP patent teach that said inorganic particles can be glass, silica or alumina (paragraph 0022).
With regard to claim 39, the Examiner is of the position that binder coated inorganic glass particles meets the limitations of this claim.
With regard to claim 40 and 41, in view of the 112 2nd paragraph rejection set forth above, the Examiner unable to determine the scope of this claim for the purpose of searching and applying prior art.
With regard to claim 42 and 43, the published JP patent teach further adding an additive (paragraph 0042). The published JP patent teach a buffer solution and defoaming agent. The Examiner is of the position these additives would function in the capacity of a “flow modifier”. Applicants have not set forth any specific type of “flow modifier”.
With regard to claims 44 and 45, the Examiner is of the position that the published JP patent meets the method limitations of providing a spacer particle composition, applying the composition to the glass substrate, applying a second glass substrate over the spacer composition thereby sandwiching the spacer particle composition between the glass substrates. Support for this supposition is found in the teachings above. The published JP patent does not expressly teach stacking additional glass substrate layers. The Examiner is of the position that it would be within the skill of worker in the art to employ the method disclosed in the published JP patent using a plurality of glass substates with the spacer composition between each layer. Motivation to employ multiple layers of glass and space composition is found the ease and efficiency of packing, storage and transport. Applicants are invited to prove otherwise.
With regard to claims 46 and 54, the published JP patent teach using glass substrates but does not teach the specifically claimed glass substrates. However, the Examiner is of the position that since the invention of the published JP patent and the instant application are of the same field of using spacer compositions between glass substrates it reasonable to expect that the disclosed glass substrates are one of specifically claimed glass substrates. Applicants are invited to prove otherwise.
With regard to claim 47, the published JP patent teach applying spacer composition to the glass substrate but fails to teach the claimed amount. Absent unexpected results it would be obvious to a person of ordinary skill in the art to optimize the amount of spacer composition applied to the glass substrate. Absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed amount of spacer composition applied to the glass substate, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With regard to claim 48, the published JP patent teach applying spacer composition to the glass substrate via in an inkjet and microdot method and teaches that the composition is electrically charged and sprayed (paragraphs 0009-0011).
With regard to claims 49 and 55, the published JP patent does not teach the claimed thickness of the glass. Absent unexpected results it would be obvious to a person of ordinary skill in the art to optimize the thickness of the glass substrate. Absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed thickness of the glass substate, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
18. Claim(s) 3, 11, 13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the published JP2000347191A as applied to claim 1 above and further in view of Yamaguchi et al., US 2006/0001824 A1.
The published JP patent does not teach the claimed biodegradable polymers.
The patent issued to Yamaguchi et al., teach fabricating a liquid crystal display that includes providing a spacer on a substrate (title and abstract). Figure 1, illustrates the claimed interleaved arrangement. Said substrate can be glass or resin (column 10, 63-64). Said substrate can further include a polyamide resin alignment layer to control the alignment of the liquid crystal molecules (column 10, 65-column 11, 5), Said spacers can be particles of inorganic silica or organic polymer particles (column 4, 29-36). Said spacer particles are dispersed in a medium such as water soluble or hydrophilic liquid (column 7, 55-60). Yamaguchi et al., teach that suitable mediums include water, mono-alcohols, oligomers and ethers (column 8, 5-40). With regard to claim 3, Yamaguchi et al., teach several biodegradable polymers such as polyethylene glycol (column 8, 5-40). The mediums of Yamaguchi et al., also meet the limitation of natural and synthetic biopolymers as recited in claim 11. It would be obvious to a person of ordinary skill in the art to formulate the polymeric adhesion promoter particles with a biodegradable polymer motivated by the desire to provide an environmentally friendly composition. Applicants are invited to prove otherwise.
With specific regard to claim 13 and 15, neither the published JP patent or patent issued to Yamaguchi et al., teach the claimed polymeric material. However, the Examiner is of the position that it would be within the skill of worker in the art to select a known polymeric material as a function of desired adhesion properties, cost, availability, material combability and ease of use.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1395 (2007).
The selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960).
Double Patenting
19. 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.
Claim 1-4, 7-8, 10-11, 13, 15-18, 21-22, 26-27, 29-30, 32-34, 39-49, 53-55 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10, 12, 14-23, 29-33, 36-38, 40, 42-53 and 57-59 of co-pending Application No. 18/270985(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instantly claimed subject matter substantially overlaps the claims co-pending Application No. 18/270985.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789