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/Restrictions
Newly submitted claim 21-23 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 21 includes limitations directed to an independent and distinct species from the invention originally elected and claimed
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 Accordingly, claims 21-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03 (See also restriction requirement mailed 12/10/2025).
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.
Response to Amendment
Claims 4-23 are currently pending. Claims 8-9, 18 and 21-23 are currently withdrawn from further consideration as being drawn to a non-elected species. In response to the Office Action mailed 3/25/2026 Applicant amended Claims 4 and 13-14 canceled claims 1-3 and newly added claims 21-23
Claim Rejections - 35 USC § 102
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 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.
Claims 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200332592 A1 to Mun et al.
Regarding Claim 4. Mun discloses a dimming member, wherein the dimming member comprises a dimming film (Fig. 1 window 100), and the dimming film comprises a first substrate (Fig. 1 film 10, para 56), a functional layer (Fig. 1 light modulating layer 30), and a second substrate (Fig. 1 film 40, para 56) that are stacked in sequence; and the functional layer is provided with a sealing structure at a periphery of the functional layer (See Fig. 1 seal line 20), and the sealing structure is formed by wrapping the functional layer with the first substrate and the second substrate (As shown in Fig. 1); wherein the sealing structure is integrally formed with part of the first substrate and part of the second substrate that are at a periphery of the dimming member (As shown in Fig. 1).
Regarding Claim 5. Mun further discloses the first substrate and the second substrate each comprise a substrate body portion and a substrate edge portion (See at least Fig. 1), the functional layer is disposed between the substrate body portion of the first substrate and the substrate body portion of the second substrate (See at least Fig. 1), and the sealing structure is formed by the substrate edge portion of the first substrate and the substrate edge portion of the second substrate and configured to wrap the functional layer (See at least Fig. 1).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mun as applied to claim 4 in view of US 20090086325 A1 to Liu et al.
Regarding Claim 6. As stated above Mun discloses all the limitations of base claim 4.
Mun does not specifically disclose that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other (it is noted that this limitation may be a product-by-process limitation "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
However, Liu discloses that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other (See at least para 39), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other.
Claims 7 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mun as applied to claim 4 in view of US 20200259114 A1 to Jiang.
Regarding Claim 7. As stated above Mun discloses all the limitations of base claim 4.
Mun does not specifically disclose that the dimming member defines at least one groove structure at a periphery of the dimming member, and the sealing structure is disposed at the at least one groove structure.
However, Jiang discloses that the dimming member defines at least one groove structure at a periphery of the dimming member (See Fig. 7c sealing holes k), and the sealing structure is disposed at the at least one groove structure (See Fig. 2), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the dimming member defines at least one groove structure at a periphery of the dimming member, and the sealing structure is disposed at the at least one groove structure.
Regarding Claim 11. Jiang further discloses the at least one groove structure extends through the functional layer at the periphery of the functional layer, and is in communication with a surface of the functional layer close to the first substrate and/or a surface of the functional layer close to the second substrate (See Fig. 2).
Regarding Claim 12. Jiang further discloses the at least one groove structure comprises a stepped structure or a trench structure (See Fig. 2).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mun and Jiang as applied to claim 7 in view of US 20090086325 A1 to Liu et al.
Regarding Claim 10. As stated above Mun and Jiang discloses all the limitations of base claim 7.
Jiang further discloses the at least one groove structure is defined by the first substrate and/or the second substrate (See at least Fig. 7c).
Mun and Jiang do not specifically disclose that the first substrate and/or the second substrate being melted and contracted towards the functional layer (it is noted that this limitation may be a product-by-process limitation "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
However, Liu discloses that the first substrate and/or the second substrate being melted and contracted towards the functional layer (See at least Fig. 1 and para 39), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the first substrate and/or the second substrate being melted and contracted towards the functional layer.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mun and Jiang as applied to claim 12 in view of US 20150062524 A1 to Kim et al.
Regarding Claim 13. As stated above Mun and Jiang discloses all the limitations of base claim 12.
Mun and Jiang do not specifically disclose a dam structure is disposed around a periphery of the at least one groove structure, and a width of the dam structure ranges from 0.5 mm to 10 mm.
However, Kim discloses a dam structure is disposed around a periphery of the at least one sealing structure (See at least Fig. 4 layer 410), and a width of the dam structure ranges from 0.5 mm to 10 mm (See para 123, 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). (See MPEP 2144.05)), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include a dam structure is disposed around a periphery of the at least one groove structure, and a width of the dam structure ranges from 0.5 mm to 10 mm.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 20200332592 A1 to Mun et al. in view of US 20190270284 A1 to Couillard et al.
Regarding Claim 14. Mun discloses a vehicle, comprising a dimming member; the dimming member comprises a dimming film (Fig. 1 window 100), and the dimming film comprises a first substrate (Fig. 1 film 10, para 56), a functional layer (Fig. 1 light modulating layer 30), and a second substrate (Fig. 1 film 40, para 56) that are stacked in sequence; and the functional layer is provided with a sealing structure at a periphery of the functional layer (See Fig. 1 seal line 20), and the sealing structure is formed by wrapping the functional layer with the first substrate and the second substrate (As shown in Fig. 1), and the sealing structure is integrally formed with part of the first substrate and part of the second substrate that are at a periphery of the dimming member (As shown in Fig. 1).
Mun does not specifically disclose a light-transmitting assembly, wherein the light-transmitting assembly comprises a first light-transmitting member, a second light-transmitting member, and the dimming member is disposed between the first light-transmitting member and the second light-transmitting member.
However, Couillard discloses a light-transmitting assembly (See at least Fig. 1 pane 100), wherein the light-transmitting assembly comprises a first light-transmitting member (Fig. 1 panel 130), a second light-transmitting member (Fig. 1 panel 140), and the dimming member is disposed between the first light-transmitting member and the second light-transmitting member (See Fig. 1 transmission control layer 110), as the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP2143(I)(B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include a light-transmitting assembly, wherein the light-transmitting assembly comprises a first light-transmitting member, a second light-transmitting member, and the dimming member is disposed between the first light-transmitting member and the second light-transmitting member.
Regarding Claim 15. Mun further discloses the first substrate and the second substrate each comprise a substrate body portion and a substrate edge portion (See at least Fig. 1), the functional layer is disposed between the substrate body portion of the first substrate and the substrate body portion of the second substrate (See at least Fig. 1), and the sealing structure is formed by the substrate edge portion of the first substrate and the substrate edge portion of the second substrate and configured to wrap the functional layer (See at least Fig. 1).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Mun and Couillard as applied to claim 14 in view of US 20090086325 A1 to Liu et al.
Regarding Claim 16. As stated above Mun and Couillard discloses all the limitations of base claim 4.
Mun and Couillard do not specifically disclose that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other (it is noted that this limitation may be a product-by-process limitation "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
However, Liu discloses that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other (See at least para 39), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the sealing structure is formed by the first substrate and the second substrate being melted and abutting against each other.
Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mun and Couillard as applied to claim 14 in view of US 20200259114 A1 to Jiang.
Regarding Claim 17. As stated above Mun and Couillard discloses all the limitations of base claim 14.
Mun and Couillard do not specifically disclose that the dimming member defines at least one groove structure at a periphery of the dimming member, and the sealing structure is disposed at the at least one groove structure.
However, Jiang discloses that the dimming member defines at least one groove structure at a periphery of the dimming member (See Fig. 7c sealing holes k), and the sealing structure is disposed at the at least one groove structure (See Fig. 2), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the dimming member defines at least one groove structure at a periphery of the dimming member, and the sealing structure is disposed at the at least one groove structure.
Regarding Claim 20. Jiang further discloses the at least one groove structure extends through the functional layer at the periphery of the functional layer, and is in communication with a surface of the functional layer close to the first substrate and/or a surface of the functional layer close to the second substrate (See Fig. 2).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Mun, Couillard and Jiang as applied to claim 17 in view of US 20090086325 A1 to Liu et al.
Regarding Claim 19. As stated above Mun, Couillard and Jiang discloses all the limitations of base claim 17.
Jiang further discloses the at least one groove structure is defined by the first substrate and/or the second substrate (See at least Fig. 7c).
Mun, Couillard and Jiang do not specifically disclose that the at least one groove structure is defined by the first substrate and/or the second substrate being melted and contracted towards the functional layer (it is noted that this limitation may be a product-by-process limitation "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
However, Mun, Couillard and Jiang in view of Liu discloses that the first substrate and/or the second substrate being melted and contracted towards the functional layer (See at least Fig. 1 and para 39), as applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to one of ordinary skill in the art (MPEP2143(I)(D), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Therefore, it would have been obvious to a person having ordinary skill in the art before Applicant’s effective filing date to include that the at least one groove structure is defined by the first substrate and/or the second substrate being melted and contracted towards the functional layer.
Response to Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive. Applicant argues that the prior art of record fails to disclose that “the sealing structure is integrally formed with part of the first substrate and part of the second substrate.”
Applicant’s arguments are not persuasive, as the prior art of record discloses the aforementioned limitation (from Fig. 1 it can be seen that the sealing structure attached the first substrate and the second substrate).
Conclusion
THIS ACTION IS MADE FINAL. 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 EDMOND C LAU whose telephone number is (571)272-5859. The examiner can normally be reached M-Th 8am-6pm EST.
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/EDMOND C LAU/ Primary Examiner, Art Unit 2871
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