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 .
Response to Amendment
The amendment and response filed on January 29, 2026 has been entered. Claims 1-23 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claims 1-23 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The newly added limitation to claim 1, lines 5 and 6, that “the interlayer subcomponent having a light transmittance of at least about 30% and a haze of less than about 2%” is new matter. The remarks state that support can be found throughout the specification including the drawings and specifically recites paragraphs [0072] and [0074] as providing support. However, no such support for these claimed ranges are present in the specification or drawings. Paragraphs [0072] and [0074] recite two examples that have a light transmission of 37.7% and 39.9%, respectively, and a haze of 1.31% and 1.075%, respectively. These two examples do not provide adequate written support for the entirety of the newly added claimed ranges. Claims 2-23 are rejected due to their dependence upon claim 1.
Claims 9 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 9, lines 4-7, the phrase “further comprising a second thermoplastic polyurethane layer…the second layer being selected from the group consisting of polyvinyl butyral, polymethyl methacrylate, poly(ethylene-co-acrylic acid), alkali metal salts of poly(ethylene-co-acrylic acid), and poly(ethylene-co-vinyl acetate)” is indefinite. Specifically, it is unclear what layer is being referenced by “the second layer” (line 5) because line 4 of defines the second layer as a “thermoplastic polyurethane layer” and the Markush group for the second layer includes other polymers (lines 5-7).
In claim 10, the term “a second thermoplastic polyurethane layer” lacks clear antecedent basis, since claim 9 includes a second thermoplastic polyurethane layer, which is the second layer of the interlayer subcomponent.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1-5, 7, 8, 11, and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakayama et al. (US Pub 2022/0152989).
Regarding the newly added limitation to claim 1 that “the interlayer subcomponent having a light transmittance of at least about 30% and a haze of less than about 2%”, Nakayama discloses that the laminated structure has a visible light transmittance of 60% or more [0073] but is silent as to the haze percentage of the structure. However, as detailed below, Nakayama uses the same materials for the same purpose, i.e., head-up display [0201]. Additionally, Nakayama discloses a desire to enhance the transparency of the laminated structure ([0073], [0077]). Thus, it is reasonable to conclude that the laminated structure of Nakayama would inherently have a haze percentage that is the same as the present invention. See MPEP 2112, which states: “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Alternatively, as set forth in MPEP 2112, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). In the instant application, it would have been obvious to the skilled artisan to have prepared the laminated structure of Nakayama having a haze of less than about 2%, motivated by the desire to enhance the transparency of the laminate structure, as explicitly desired in Nakayama.
Regarding claims 1 and 2, Nakayama discloses an interlayer comprising an infrared reflective carrier layer and at least one thermoplastic polyurethane layer on a side thereof, wherein the thermoplastic polyurethane has adhesive properties when heated the carrier layer is a solar control layer (Figs. 2 and 3, [0110], [0173], [0179]).
Regarding claim 3, the thermoplastic polyurethane layer can be formed by extrusion [0211].
Regarding claim 4, the interlayer can comprise a carrier layer having a thermoplastic polyurethane disposed on opposing sides (Fig. 3; [0110], [0148]).
Regarding claim 5, the thermoplastic layers on opposing sides of the carrier layer can having the same thickness (Table 1).
Regarding claim 7, the interlayer film can have a wedge shape [0200].
Regarding claim 8, the sub-component can form part of a head-up display [0201].
Regarding claims 11 and 12, the embodiment depicted in Fig. 3 has a layer on the second side of the carrier, which would inherently provide some acoustic damping and impact resistance properties to the interlayer subcomponent.
Claim Rejections - 35 USC § 103
Claims 6, 9, 10, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US Pub 2022/0152989).
Regarding claim 6, Nakayama does not specifically disclose an embodiment wherein the first and second thermoplastic polyurethane layers have different thicknesses. However, Figures 2 and 3 appear to illustrate this. Further, Nakayama discloses that the thickness of each resin layer may be adjusted to be within the disclosed range of 0.2 mm to 1.5 mm ([0197]-[0199]) in order to optimize the infrared radiation that is absorbed. It would have been obvious to one of ordinary skill in the art to have used thermoplastic polyurethane layers (11A and 11B) having different thicknesses, motivated by the desire to discover workable or optimal ranges based on the infrared absorption properties desired. See MPEP 2144.05.
Regarding claims 9, 22 and 23, Nakayama does not disclose an embodiment comprising, in order, a thermoplastic polyurethane layer, carrier layer, and a second layer selected from the Markush group of claim 9. However, Nakayama discloses that a plurality of resin layers may be used and the resin layers may be different from each other ([0110], [0148]), the arrangement of a thermoplastic layer/carrier layer/thermoplastic layer, and that the thermoplastic layer can be polyvinyl butyral, polyurethane, or an ethylene-vinyl acetate copolymer (Fig 3, [0110], [0113], [0148]). It would have been obvious to one of ordinary skill in the art to have provided a second thermoplastic layer that is formed of either a polyvinyl butyral or an ethylene-vinyl copolymer on the surface of the carrier layer that opposes the thermoplastic polyurethane layer, motivated by the suggestion in Nakayama to do so and the desire to optimize the desired infrared absorption properties of the interlayer which is associated with the use of such thermoplastic layers.
Regarding claim 10, Nakayama does not disclose an embodiment wherein a second thermoplastic polyurethane layer is disposed on the second layer. However, Nakayama discloses that a plurality of resin layers may be used and the resin layers may be different from each other ([0110], [0148]). It would have been obvious to one of ordinary skill in the art to have provided a second thermoplastic polyurethane layer on the second layer, motivated by the suggestion in Nakayama to do so and the desire to optimize the desired infrared absorption properties of the interlayer.
Claims 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US Pub 2022/0152989) in view of Barr et al. (US Pub 2019/0036480).
Regarding claim 13, Nakayama does not disclose an interlayer subcomponent further comprising a photovoltaic assembly. However, Barr discloses a similar interlayer subcomponent in a window with a photovoltaic assembly ([0060], [0085], [0095], [0120]). It would have been obvious to one of ordinary skill in the art to have used the interlayer subcomponent of Nakayama with a photovoltaic assembly, as taught by Barr, in order to convert solar radiation on windows into electrical energy (Barr: [0003], [0066]), because both Nakayama and Barr are directed towards windows comprising interlayers subcomponents for use in vehicles.
Regarding claim 14, Barr further discloses the interlayer subcomponent according to claim 13, wherein the first side is an outwardly facing side of a window unit ([0004], [0060], photovoltaic integrated into the exterior window pane.).
Regarding claim 15, Barr further discloses the interlayer subcomponent according to claim 13, wherein the photovoltaic assembly comprises a polymeric layer having photovoltaic cells ([0069]-[0072], [0124]).
Regarding claim 16, Barr further discloses the interlayer subcomponent according to claim 13, wherein the photovoltaic assembly comprises a polymeric layer having quantum dots ([0063], [0069]-[0072], [0124]).
Regarding claim 17, Barr further discloses the interlayer subcomponent according to claim 16, further comprising photovoltaic cells arranged along an edge of the carrier layer ([0090]-[0091], [0125]).
Regarding claim 18, Barr further discloses the interlayer subcomponent according to claim 16, further comprising photovoltaic cells arranged on a surface of the carrier layer not relied on for transparency ([0005], [0059], [0064], material selected for desired transmission and light may be absorbed to generate electric current.).
Regarding claims 19-21, Nakayama does not disclose an interlayer subcomponent further comprising an electrochromic assembly. However, Barr discloses a similar interlayer subcomponent in a window with an electrochromic assembly, such as a transparent ion-conductive polymer electrolyte film (Barr: [0064], [0109], [0124], transparent electrode layers a conductive metal oxide with polymer bond layer) or a transparent electrode (para [0064], [0067], [0070], transparent electrodes). It would have been obvious to one of ordinary skill in the art to have used the interlayer subcomponent of Nakayama with the claimed electrochromic assemblies, i.e., transparent ion-conductive polymer electrolyte film or transparent electrode, as taught in Barr, motivated by the desire to convert solar radiation on windows into electrical energy, because both Nakayama and Barr are directed towards windows comprising interlayers subcomponents for use in vehicles.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection.
Regarding the argument directed to the newly added light transmittance and haze percentages, these newly added limitations are addressed above in paragraph 14.
The argument that “Barr fails not teach or suggest an interlayer subcomponent comprising a carrier layer and at least one thermoplastic polyurethane layer, wherein the subcomponent has both (1) a light transmittance of at least about 30% and (2) a haze of less than about 2% as recited in claim 1” is not persuasive. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As detailed above, Nakayama is relied on to teach these claimed features. Barr is relied upon for its teaching that it is known to use similar interlayer subcomponents with a photovoltaic assembly.
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 Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781