Election/Restrictions
Claim 8 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 15-17 and 20, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 11 September 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Allowable Subject Matter
Claims 1, 2, 6-9, 13-16 and 20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter.
The closest prior art of record Williams (US 2014/0328078), Cho (US 2009/0154180), Strazzanti (US 2006/0250809), Wehlus (US 2018/0187865), Endo (US 2018/0277780), Traian (WO 2020/232544), and Gordon (US 2018/0023778) while broadly teaching the limitations of the presently claimed invention, do not teach or suggest the combination of limitations as presently claimed in either claim 1, 8, or 15. While the reliance of Williams, Cho, and Strazzanti, Wehlus, Endo, Traian, and/or Gordon appropriately rendered obvious the limitations in the previous set of claims (submitted on 5 November 2025), the amendment to independent claims introduces a scope to the claims which is not obvious over the prior art references made of record. Specifically, the claims now require the auto-shading film being located directly on the thermally conductive multi-layer, which is not taught or obvious over the current record. In other words, there is no apparent reason for why a person having ordinary skill in the art would incorporate the multi-layered thermal pad (thermally conductive multi-layer) of the heat sink, as taught by Cho, to be in direct contact the with film 128, 900 (auto-shading film) disclosed by Williams.
Upon further search and consideration, the additional reference Miller (US 2023/0350240 and WO 2021/229562 A2 publications) was found which is of particular importance as Miller teaches an analogous auto-shading film, referred to as a thermal transparency control device (TTCD) 100, where a multilayer construction which is in direct contact with said device 100 includes a combination of a panel 20 and reflective layer 22. However, these constituent components fail to meet the claimed thermally conductive multi-layer from the claims because the panel 20 and reflective layer 22 are disclosed as reflecting incident thermal radiation transmitted by the TTCD, and fails to provide information which would have led a person having ordinary skill in the art to a reasonable conclusion that such a multilayered construction also conducts thermal energy. See paragraphs [0077] – [0084] and Figures 2A-B from Miller. Therefore, Miller fails to meet the added limitation in question which requires direct contact between the thermally conductive multi-layer and the auto-shading film.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 10, and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 3, 10 and 17 each contain an embodiment which excludes the auto-shading film being in direct contact with the thermally conductive layer. That is, claims 3, 10 and 17 each recite “a moisture barrier coating layer between the auto-shading film and the thermally conductive multi-layer.” Claims 1, 8 and 15, the claims from which claims 3, 10 and 17 respectfully depend, each require “[the] auto-shading film [being] directly on the thermally conductive layer.” As such, claims 3, 10 and 17 are each inconsistent with the claims from which they depend, claims 1, 8 and 15, respectfully, and, indeed contradicts claims 1, 8 and 15, respectfully. See Multilayer, 831 F.3d at 1362 (“A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid.”) (citing 35 U.S.C. §112(d) (requiring that “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed” (emphasis added)). Other cases have held claims invalid under pre-AIA 35 U.S.C. § 112, fourth paragraph for claiming subject matter that was “non-overlapping” with the claim from which it depended. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1391-92 (Fed. Cir. 2006); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (noting that a dependent claim can be invalid for failing to comply with pre-AIA 35 U.S.C. § 112, fourth paragraph).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant’s arguments, see pages 7-9, filed 4 March 2026, have been considered. However, these arguments are moot because the previous prior art rejections were withdrawn due to an amendment not addressed in this portion of the applicant’s response. See the examiner’s statement of reasons for the indication of allowable subject matter, under the “Allowable Subject Matter” heading provided above.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783