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 .
Information Disclosure Statement
Acknowledgement is made of receipt of Information Disclosure Statement(s) (PTO-1449) filed 10/28/2024. An initialed copy is attached to this Office Action.
Election/Restrictions
Applicant's election with traverse of claims 1-14 in the reply filed on 2/3/2026 is acknowledged. The traversal is on the ground(s) that Applicant argues that there is no serious burden. This is found to be persuasive. The Examiner agrees that Claims 15-20 discloses similar limitations as Claim 1 and claims 1-20 have been examined below. The restriction has been withdrawn.
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 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams (2014/0328078) in view of Strazzanti (2006/0250809).
Regarding claims 1, 8, and 15, Williams disclose a vehicle (100, vehicle headlamp assembly) (paragraph 0027) comprising: an outer lens (104, lens) (paragraph 0028 comprising: a bottom lens (108, outer lens) with a first coating conductive layer (paragraphs 0028-0029); a top lens (110, inner lens) with a second coating conductive layer (paragraphs 0028-0029), the top lens (110, inner lens) fixed to the bottom lens (108, outer lens) (figure 1A and paragraph 0028); an auto-shading material (128, film) embedded between the bottom lens (108, outer lens) and the top lens (110, inner lens) (paragraph 0031), the auto-shading material comprising discrete substructures (910, particles) which vary in alignment in response to an electric field (Figure 9A and 9B and paragraphs 0031 and 0038), thereby varying at least one of a transmittance and an emitted color through the outer lens (see figure 9A-9B and paragraph 0037 discloses an electrochromic device). Williams further disclose the film (128) includes a transparent conductor (138, transparent conductor) (figure 8 and paragraph 0037).
Williams does not specifically disclose a wire electrically coupled to the auto-shading material; and a controller electrically coupled to the wire; the controller configured to direct a switching voltage to a switch to change a state of the switch, thereby causing the wire to deliver the electric field to the discrete substructures to change at least one of the transmittance and the emitted color through the outer lens.
Williams and Strazzanti are related as headlamp assemblies for a vehicle.
Strazzanti teaches a vehicular headlamp assembly (10, headlamp assembly) (paragraph 0056 and figures 1 and 9A) that includes a light transmissive portion or lens (16) for emitting light from a headlamp bulb (12) (paragraph 0056); the lens (16, lens or 260, taillamp lens) further include wires (62, lead wires and 264, wires) (figures 7 and 9A and paragraphs 0062 and 0088) and a controller (30, drive circuit) electrically coupled to the wire (figure 3 and paragraph 0057); controller configured to direct a switching voltage to a switch to change a state of the switch, thereby causing the wire to deliver the electric field to the discrete substructures to change the transmittance of the film (paragraph 0058). Further regarding claim 15, Williams discloses receiving a call for the second state; and responsive to the call, directing the switching voltage to the switch, thereby causing the switch to change from the first state to the second state (paragraphs 0057-0058).
Therefore it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of Williams with the wires and controllers of Strazzanti for the purpose of selectively controlling the light transmissive characteristics of the liquid crystal region.
Also in regards to claim 1, Examiner notes that the recitations after "thereby" are functional/intended use language. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiated the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations if the prior art apparatus if the prior art teaches all the structural limitations of the claim (Ex parte Mashim, 2 USPQ2d 1647 (1987)). The Applicant needs to claim the physical structure of the claimed "optical element" that gives rise to these functions/characteristics/intended uses as these are apparatus claims. The limitations are as follows: in claims 1 and 8, "thereby varying at least one of a transmittance and an emitted color through the outer lens" and " causing the wire to deliver the electric field to the discrete substructures to change at least one of the transmittance and the emitted color through the outer lens". The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.
Regarding claims 2, 9, and 16, Williams discloses wherein the auto-shading material (128, film) comprises a film (paragraph 0056).
Williams does not specifically disclose wherein the auto-shading film is filmless.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to wherein the auto-shading film is filmless, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. that a mere reversal of the working parts of the essential working parts of a device involves only routine skill in the art this being reasonably based upon its ability to enhance image quality and efficiency. In re Leshin, 125 USPQ 146
Regarding claim 3, Williams discloses wherein the top lens (110, inner lens) is fixed to the bottom lens (108, outer lens) via one or more sealing caps (paragraph 0029).
Regarding claims 4, 10, and 17, Williams discloses wherein top lens (110, inner lens) and the bottom lens (108, outer lens) include transparent materials (paragraph 0028 and 0029).
Regarding claims 5, 11, and 18, Williams discloses wherein top lens (110, inner lens) include transparent materials and the bottom lens (108, outer lens) includes opaque materials (paragraphs 0004 and 0031).
Regarding claims 6, 13, and 19, Williams discloses wherein the auto-shading materials (128, film) comprises a first transmittance when the switch is in a first state and a second transmittance greater than the first transmittance when the switch is in a second state (paragraphs 0030-0031).
Regarding claims 7, 14, and 20, Strazzanti discloses wherein the outer lens emits a first color when the switch is in a first state and a second color different that the first color when the switch is in a second state (paragraph 0022 discloses the color switches between a color and an opaque state).
Regarding claim 12, Strazzanti teaches a vehicular headlamp assembly (10, headlamp assembly) (paragraph 0056 and figures 1 and 9A) that includes a light transmissive portion or lens (16) for emitting light from a headlamp bulb (12) (paragraph 0056); the lens (16, lens or 260, taillamp lens) further include wires (62, lead wires and 264, wires) (figures 7 and 9A and paragraphs 0062 and 0088) and a controller (30, drive circuit) electrically coupled to the wire (figure 3 and paragraph 0057); controller configured to direct a switching voltage to a switch to change a state of the switch, thereby causing the wire to deliver the electric field to the discrete substructures to change the transmittance of the film (paragraph 0058).
Also in regards to claim 12, Examiner notes that the recitations after "thereby" are functional/intended use language. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiated the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations if the prior art apparatus if the prior art teaches all the structural limitations of the claim (Ex parte Mashim, 2 USPQ2d 1647 (1987)). The Applicant needs to claim the physical structure of the claimed "optical element" that gives rise to these functions/characteristics/intended uses as these are apparatus claims. The limitations are as follows: in claim 12, "thereby causing the wire to deliver the electric field to the discrete substructures to change at least one of the transmittance and the emitted color through the lens". The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDI N THOMAS whose telephone number is (571)272-2341. The examiner can normally be reached Monday - Friday 7:30 - 3:30.
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, Stephone Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRANDI N THOMAS/ Primary Examiner, Art Unit 2872
Prosecution Insights