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 § 103
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 – 6, 8, & 10 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over McCarthy et al. (US 10,202,183 B2).
With regard to claim 1, McCarthy et al. teach an aircraft window assembly comprising an aircraft window incorporating a thickness variation across a length or width of the window (i.e. “glazing unit”). The thickness variation can help counteract the lensing effect caused by the deflection of the panels (12, 18) of the aircraft window assembly 10 (Col. 10, Lines 36 – 44).
The first panel (12) is thicker at the periphery and thinner toward the center. Alternatively, the first panel (12) could be thinner at the periphery and thicker toward the center (Figs. 8 & 21 – 22 & Col. 10, Lines 36 – 44).
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McCarthy et al. teach the first thickness (i.e. “h1”) varies in the direction of length (i.e., “as a function of a coordinate x, along the first length l minimum”), but do not teach the function in proportion to a value of xn.
Applicant’s specification discusses this function as follows:
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It is worth noting that the mathematics of Applicant’s formula (1) is only valid when h1min = 0 at x = 0 (in other words, when the glazing unit contains a through-hole). If there is no hole then h is greater than 0 at x=0 and doesn’t represent a minimum because the function ε xn approaches zero as x approaches zero for all values of n>1.
If a value for ε (proportionality value) is selected that makes the function valid, a smaller value for X can be chosen that would invalidate the function. Only one embodiment h1min = 0 at x = 0 which is taught in Applicant’s specification (Figs. 6 – 7 containing through-holes 8) meets the requirements of the function. Applicant is invited to clarify with a specific example showing how the function is valid for h1min >0 at x=0.
The Examiner has interpreted the claim as requiring h1(x) = ε xn where ε is a proportionality factor such that h1min/h1max < 1/3 and n>1.
McCarthy et al. teach the first panel or second panel may contain at least throughbore (i.e., h1min = 0) (Col. 2, Lines 13 – 14). As shown in Fig. 8 above, the first panel (12) has one or more holes (72) to provide pressure equilibrium between the exterior of the aircraft and the air gap (24) between the first and second panels (Col. 8, Lines 44 – 57). As shown in Fig. 9, a plurality of mounting holes 76 may be present around the periphery of the first panel (12) (Col. 8, Line 59 – Col. 9, Line 4).
As such, McCarthy et al. teach a thickness h1min is less than or equal to one third (1/3) of the maximum thickness h1max.
Simply because the panel contains a through bore and mounting holes, does not necessarily mean that the thickness surrounding said bore/hole is proportional to the function xn.
However, as discussed above, McCarthy et al., teach the thickness variation can help counteract the lensing effect caused by the deflection of the panels (12, 18) of the aircraft window assembly 10 (Col. 10, Lines 36 – 44).
Therefore, based on the teachings of McCarthy et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the minimum thickness (h1min) relative to the maximum thickness (h1max) of the window panel (12) (“glazed unit”) as a function of x through routine experimentation in order to achieve the desired counteraction of the lensing effect caused by the deflection of the panels (12, 18) of the aircraft window assembly (10). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
McCarthy et al. do not explicitly teach a soundproofing zone.
However, a window (glazing unit) inherently has some degree of soundproofing properties and thus inherently has a soundproofing zone.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 2, as shown in Fig. 8 above, comprising a central part and a peripheral part, the peripheral part being arranged at a periphery of the central part relative to the main surface and directly in contact with the central part, wherein the central part has a thickness h1max of the material in contact with the peripheral part of lesser thickness (h1).
With regard to claim 3, as shown in Fig. 21 above, the window panel (12) is a monolithic aircraft glazed unit.
With regard to claim 4, as discussed above for claim 1, an alternative panel could be thinner at the periphery and thicker towards the center (i.e., “a thinning of the glazed unit from the central part until a border of the glazed unit”).
With regard to claim 5, as shown in Figs. 8, 17 – 20, & 22, the window panel (12) comprises a central part that has two opposite edges, and wherein the peripheral part is arranged in contact with the two edges.
With regard to claim 6, as shown above in Fig. 21, the soundproofing zone has at least one recess.
With regard to claim 8, McCarthy et al. teach a window assembly (10) (i.e., “glazed element”) comprising a second panel (18) are superimposed and at an elastomeric seal (28) located around the periphery (i.e., “least one spacer”) and configured to separate two panels (i.e., “glazed units”) (Col. 4, Lines 45 – 46 & Figs. 1 – 2, 5, 8, & 10).
McCarthy et al. teach both the first and second panels may comprise at least one throughbore (Col. 2, Lines 13 – 14). The second panel can also have a thickness variation across a width of the panel (18), as described above for the first panel (12) (Col. 10, Lines 45 – 47).
With regard to claim 10, as discussed above for claim 1, McCarthy et al. teach the window panel 12 (i.e., “glazed unit”) is a component of an aircraft window.
With regard to claim 11, as discussed above for claims 1 & 10, McCarthy et al. teach the window panel 12 (i.e., “glazed unit”) is a component of an aircraft window. It would be obvious to one of ordinary skill in the art to use the panel as any window within the aircraft, including a windshield.
Claim(s) 7 & 12 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over McCarthy et al., as applied to claim 1 above, and further in view of Boure (US 2009/159362 A1).
With regard to claim 7, McCarthy et al. fail to teach the glazed unit comprises a visco-elastic dissipator, wherein the dissipator is mounted secured in contact with at least one part of the soundproofing zone, the dissipator being made of a visco-elastic material having a first loss factor n1 strictly greater than 0.05.
Boure et al. teach an acoustic laminated glazing (2) comprising a viscoelastic plastic insert (3) composed of at least two damping films (30/31) (i.e., “visco-elastic dissipator”) applied to the inside surface of two glass sheets (20/21) of the glazing for a vehicle (paragraph [0050] & Figs. 1 – 2). The damping films provide effective optimum sound damping performance over a wide range of temperatures (paragraph [0028]), such that the each of the damping films has a loss factor (tan δ) greater than 0.5 (paragraphs [0036] & [0042]).
Therefore, based on the teachings of Boure et al., it would have been obvious to one of ordinary skill in the art to incorporate a viscoelastic plastic insert composed of at least two damping films, wherein each of the damping films has a loss factor (tan δ) greater than 0.5, on the inner surface of panels for forming a laminated window (glazing) taught by McCarthy et al. for providing optimum sound damping performance over a wide range of temperatures.
With regard to claim 12, as discussed above for claim 7, each of the damping films taught by Boure et al. has a loss factor (tan δ) greater than 0.5 (paragraphs [0036] & [0042]), which is strictly greater than 0.10.
With regard to claim 13, as discussed above for claim 7, each of the damping films taught by Boure et al. has a loss factor (tan δ) greater than 0.5 (paragraphs [0036] & [0042]), which is strictly greater than 0.15.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over McCarthy et al., as applied to claim 8 above, and further in view of Taga et al. (WO 2014/162481 A1).
With regard to claim 9, McCarthy et al. teach the seal (28) (i.e., “spacer”) is elastomeric, but do not teach the spacer is formed by a visco-elastic material having a value of the real part of the Young’s modulus E’ less than 20 MPa.
Taga et al. teach a multilayered glass (3), such as a double-glazed glass (translation, pg. 1), comprising a sealing composition as spacers (1) (Figs. 2 & 11(a)). The sealing material (1) between the end portions of the glass for sealing the intermediate layer (translation, pg. 2) The sealing material (1) has a storage modulus (G’) (i.e., “Young’s modulus”) obtained by dynamic viscoelastic measurement of 1.5 x 105 Pa (0.15 MPa) or more. If G’ is less than the lower limit, the sealing material is too soft and the sheet shape cannot be sufficiently maintained (translation, pg. 6).
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Therefore, based on the teaching of Taga et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the Young’s modulus of a viscoelastic sealing material through routine experimentation in order to achieve the desired softness for maintaining the shape of the window assembly (i.e., “glazing member”). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Double Patenting
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.
Claims 1, 6 – 7, & 12 – 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 4, & 17 – 18 of copending Application No. 18/557,702 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
With regard to claim 1, ‘702 claims a device for a sound proofing plate (i.e., “a glazed unit”) extending along a main surface and formed by a first material, the glazed unit comprising a (i.e., “a soundproofing part”) soundproofing zone that extends along a first length/along the main surface, the sound proofing zone having a first thickness h1 of the material, the first thickness h1 varying, as a function of a coordinate x, along the first length l in proportion to a value of xn, where n is a real number strictly greater than 1, from a minimum thickness h1min to maximum thickness of h1max, the first length l being predetermined such that the minimum thickness h1min is less than or equal to one third (1/3) of the maximum thickness h1max.
With regard to claim 6, ‘702 claims the soundproofing park (“zone”) has at least one recess (‘702 claim 3).
With regard to claim 7, ‘702 claims the device comprises a visco-elastic dissipator, wherein the dissipator is mounted secured in contact with at least one part of the soundproofing part (“zone”), the dissipator being made of a visco-elastic material having a first loss factor n1 strictly greater than 0.05 (‘702 claim 4).
With regard to claim 12, ‘702 claims the first loss factor n1 is strictly greater than 0.10 (‘702 claim 17).
With regard to claim 13, ‘702 claims the first loss factor n1 is strictly greater than 0.15 (‘702 claim 18).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues, “The rejection acknowledges that ‘McCarthy et al. do not explicitly teach a soundproofing zone.’ See Office Action, page 5. Instead, the Office Action asserts that any aircraft window inherently has ‘some degree of soundproofing properties and thus inherently has a soundproofing zone.’ Id. Respectfully, this inherency argument is misplaced. Inherency requires inevitability. See MPEP 2112. A prior art reference only inherently discloses a feature if that feature is necessarily present (not merely possibly present) in the prior art structure. Id. While it is true that any solid window will incidentally block some sound, it does not follow that McCarthy inherently contains the specific ‘soundproofing zone’ as claimed – i.e., a define region with a deliberate thickness profile of a window (some sound attenuation) with the specific structured zone required by claim 1.
“Importantly, the claimed soundproofing zone is defined by structural parameters (length l, variable thickness profile, and a substantial thickness gradient). These structural features are not inevitably present in McCarthy’s window. McCarthy’s disclosure of a thickness variation for lensing correction (see McCarthy, col. 10, lines 36 – 44 and Figure 21) does not inherently produce a ‘soundproofing zone’ as claimed, particularly since McCarthy’s purpose and optimization criteria have nothing to do with acoustics. The Federal Circuit has cautioned that inherency in the obviousness context must be supported by evidence that the prior art necessarily functions in the claimed manner. In In re Napier, 55 F.3d 610 (Fed. Cir. 1995) (see MPEP 2112), for example, inherency was found only where a prior art system inherently (by physical necessity) refracted sound waves, supported by a reference teaching that physical principle. Here, by contrast, there is no evidence that McCarthy’s window inherently includes a sound-damping region of the form claimed. On the contrary, McCarthy’s thickness variation is taught for a different reason (to counteract optical lensing), and no acoustic benefit is recognized or guaranteed” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the term “inherent” means that the reference does not explicitly teach or define a property is present in the disclosed product. Applicant’s argument that the soundproofing zone is not inherent in the cited reference because the reference does not teach “a defined region with a deliberate thickness profile for acoustic attenuation” is a contradiction of what it means for a property to be “inherent.” If the reference explicitly taught the same reason (soundproofing) for the structural feature of thickness variation as claimed, then the rejection of a “soundproofing zone” would not have been based on inherency, but rather would have been a rejection based on an explicit teaching of soundproofing in the reference.
Second, neither Applicant’s claims or specification explicitly define “soundproofing zone” as limited to a specific, quantitative sound (acoustic) value (e.g. maximum decibels). According to Resilmount® Sound Isolation Solutions, “Soundproofing is a critical process in building construction and design, aimed at reducing or eliminating the transmission of sound waves between rooms or floors.” The broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). See MPEP 2111. Another way of saying a zone reduces transmission of sound waves is to say there is some sound attenuation. Therefore, one of ordinary skill in the art would come to the conclusion that the broadest reasonable interpretation of the term “soundproofing zone” is a region of the glass aimed at reducing the transmission of sound waves from one side of the glass to the other. As previously discussed, any window (glazing unit) inherently has some degree of reducing the transmission of sound waves.
Third, Applicant’s claim 1 recites, “the soundproofing zone having a first thickness h1 of the material, the first thickness h1 varying, as a function of a coordinate x…” In other words, Applicant’s claim 1 recites the soundproofing zone contains particular structural features, but does not recite any quantitative sound limitations. Therefore, a reasonable rejection of the recited structural features is a proper rejection of the recited soundproofing zone containing said structural features.
Applicant argues, “McCarthy contains no teaching or suggestion of any particular functional form for thickness variation. McCarthy states generally that ‘the first panel 11 has a thickness variation across a length or width of the panel’ and exemplifies a panel ‘thicker at the periphery and thinner toward the center’. See McCarthy, col. 10, lines 36 – 44. However, McCarthy never teaches that the thickness varies ‘in proportion to xn’ for n > 1, nor does it disclose any specific mathematical relationship for the thickness profile. In fact, McCarthy appears to contemplate a simple gradual change (for example, a roughly linear gradient or unspecified curvature) solely to alleviate optical distortion. There is no indication that McCarthy’s inventors considered or implemented a higher-order power-law profile. The claimed profile h1(x) α xn (n > 1) is therefore a distinct structural feature absent from McCarthy.
“The rejection seems to imply that since McCarthy has some thickness variation, the exact profile shape would have been an obvious design choice. Applicant respectfully disagrees. Without any teaching in McCarthy of an xn relationship (or any non-linear gradient geared towards acoustics), one of ordinary skill in the art would not be motivated to arbitrarily selected a power-law profile > 1. The selection of non-linear exponent (n>1) is not a mere workshop variation; it is a purposeful choice tied to the functional goal of soundproofing – a goal nowhere mentioned or suggested by McCarthy. Absent any teaching or recognition in the prior art that a power-law thickness profile affects a desired result (such as acoustic attenuation), it canoe be said that choosing an h1(x) α xn profile would have been obvious. As discussed further below, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (see MPEP 2144.05II.B) instructs that optimizing a parameter is not ‘routine’ unless the parameter was known to be result-effective for the desired outcome. Here, the specific thickness exponent n (and its impact on sound attenuation) was not known in the art; thus McCarthy no roadmap or suggestion to arrive at the claimed h1(x) α xn profile” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). See MPEP 2123.
Furthermore, the teachings of a reference include the drawings and are not limited to the words alone. Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. In re Bager, 47 F.2d 951, 953, 8 USPQ 484, 486 (CCPA 1931). The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP 2121.04 & 2125.
Fig. 21 disclosed by McCarthy (shown below) clearly discloses a glass panel with a degree of thickness variation that is has a convex curvature.
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According to “Geeks for Geeks” tutorial for convex functions, the convex function that best matches the convex curvature of McCarthy’s Fig. 21 is f(x) = x2, which is a power-law function.
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In other words, based on the evidentiary reference of Geeks for Geeks, McCarthy et al. teach an explicit example of the glass panel that has a thickness variation that is a power-law function of f(x) α xn, wherein n is a positive number.
Furthermore Fig. 21 taught by McCarthy et al. is shown below next to Applicant’s Fig. 10 that has (f(x) = x2 a h1(x) xn thickness variation.
McCarthy’s glass panel Applicant’s glazed unit
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Therefore, McCarthy, contrary to Applicant’s assertion, McCarthy et al. explicitly teaches in Fig. 21 a glass panel that has a degree of thickness variation in terms of a power-law function (i.e., f(x) α xn). Furthermore, based on the teachings of McCarthy et al., it would have been obvious to one of ordinary skill in the art to adjust the value for n, as well as the thickness height maximum and minimums based on the desired optical properties.
With regard to In re Antonie, As shown in McCarthy’s Fig. 21 above, the curvature of the glass thickness variation does not decrease at a constant rate. It has a convex curvature that is best described as f(x) = xn. McCarthy et al. teach adjusting the thickness variation (i.e., f(x) or h1(x)) based on the desired optical properties. It is understood in the art that "optimization" includes routine experimentation of all species within a genus taught by the reference. Therefore, the rejection based on the teachings of McCarthy et al. has met the requirements of In re Antonie with regard to a rejection based on optimization.
It is worth noting that Applicant’s Figs. 1 & 5 do not meet the recited function of claim 1 wherein h1(x) α xn.
Applicant argues, “McCarthy does not disclose, teach or suggest any such quantitative thickness relationship. McCarthy’s discussion of thickness variation is qualitative: e.g., ‘thicker at the periphery and thinner toward the center’. Nowhere does McCarthy disclose the degree of thickness variation in terms of ratios or fractions. There is no mention that the thinnest region is one-third (or less) of the thickest region’s thickness. In fact, given McCarthy’s goal (minimizing optical distortion), one would expect McCarthy’s thickness variation to be relatively mild – likely a small different in thickness just enough to counteract lensing. A drastic variation where h1min ≤ 1/3 h1max is counter-intuitive for optical purposes (it could itself introduce optical aberrations). Thus, not only is McCarthy silent on any ‘≤ one-third’ ratio, but McCarthy’s context suggests it would not have contemplated such an extreme gradient” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, it would have been obvious to one of ordinary skill in the art to optimize the minimum and maximum thickness values based on the desired optical properties.
Second, the rejection notes that a through-bore taught by McCarthy et al. satisfies h1min = 0.
Third, Applicant’s assertion that a drastic variation is counter-intuitive for optical purposes is mere attorney argument where evidence is necessary. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.") See MPEP 2145.I.
Third, one of ordinary skill in the art would interpret the term “gradient” of the thickness variation (h1) to refer to Applicant’s exponential “n” value, not the maximum and minimum thickness (h1min & h1max) values.
Applicant argues, “First, through-hole is not a ‘thickness of the material’ as contemplated by claim 1. Claim 1’s thickness h1 refers to the thickness of the first material in the soundproofing one, varying along the length. A hole is an absence of the material (thickness = 0 because the material is not present). Therefore, it is inappropriate to treat a void as the ‘minimum thickness’ of a continuously varying material layer. The claim requires the material’s thickness to vary from h1min to h1max alone the length l. In context, this implies a continuous gradient of the material’s thickness within that zone, not a sudden jump to an empty hole. McCarthy’s hole (used for pressure equalization) is not part of a continuous thickness variation profile – it is simply a puncture through the panel at a localized point, serving a different function (pressure relief). Thus, a throughbore cannot satisfy the claim’s requirement of a thickness that ‘varies… from a minimum thickness to a maximum thickness’ along the zone” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as previously discussed, the mathematics of Applicant’s formula (1) is only valid when h1min = 0 at x = 0 (in other words, when the glazing unit contains a through-hole). If there is no hole then h is greater than 0 at x=0 and doesn’t represent a minimum because the function ε xn approaches zero as x approaches zero for all values of n>1.
If a value for ε (proportionality value) is selected that makes the function valid, a smaller value for X can be chosen that would invalidate the function. Only one embodiment h1min = 0 at x = 0 which is taught in Applicant’s specification (Figs. 6 – 7 containing through-holes 8) meets the requirements of the function. Applicant is invited to clarify with a specific example showing how the function is valid for h1min >0 at x=0.
Therefore, contrary to Applicant’s assertion that h1min = 0 is not contemplated by claim 1, the claim explicitly requires h1min = 0.
Second, Applicant’s claim recites a thickness variation described by a mathematical function and zero is a mathematical value less than 1/3. Therefore, a through-hole that has an h1min = 0 is contemplated by Applicant’s claim 1 as a minimum thickness.
Third, Figs. 6 – 7 containing through-holes 8 is disclosed by Applicant’s specification as an embodiment of the invention. By arguing that claim 1 does not contemplate h1min = 0, Applicant has argued that their own Figures 6 – 7 are not embodiments of their invention, which contradicts their claims and specification.
Fourth, Applicant’s claims do not recite h1min > 0. Applicant’s claims also do not recite the glazing is continuous. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., continuous glazed unit or h1min > 0) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues, “Second, even if one were to consider the hole as yielding a numerical h1min = 0, McCarthy still does not suggest configurating a thickness gradient intentionally to satisfy h1min ≤ 1/3 h1max. The hole in McCarthy is described as a small aperture (e.g., a ‘small hole 38’) to equalize pressure. It is not presented as part of a thickness profile over a length l. In fact, McCarthy’s thickness variation and McCarthy’s through-holes are separate aspects: one relates to panel geometry for optical reasons, the other relates to pressure management by adding holes. McCarthy never combines these teachings to describe a region that tapers to a very thin section (let alone a hole) along a length for any functional purpose. Therefore, respectfully, it is improper to cherry-pick separate features (a generic gradient and an unrelated hole) to fabricate the claimed gradient. The claim requires an integrated structural zone with the specified min/max thickness relationship, which McCarthy simply does not provide” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, if the hole is not the beyond the boundary of the glaze unit (which could not exist as a hole in the glaze unit), then the hole is part of the thickness profile over a length and meets the claim requirement.
Second, McCarthy et al. teach optical features and pressure management co-exist in the same glaze unit. Therefore, the hole and the thickness variation co-exist.
Third, a rejection under 35 U.S.C. 103 for obviousness does not require the cited prior art reference to explicitly teach a working embodiment containing both features in the same embodiment. McCarthy et al. discloses Figs. 8 – 9 which teaches an embodiment of thickness variation, wherein h1min is at the perimeter and the presence of through-holes along the perimeter of the glazing, as well as Fig. 21 which teaches thickness variation that has a thickness variation of f(x) α xn, wherein the h1min is in the center of the glazing, as evidenced by “Geeks for Geeks.” The reference is considered for all that it teaches, including combining different structural features into a single embodiment. Therefore, based on the teachings of McCarthy et al., it would have been obvious to one of ordinary skill in the art to apply the thickness variation of f(x) α xn shown in Fig. 21 to the perimeter region comprising through-holes.
Applicant argues, “Because McCarthy is silent on acoustics, a person of ordinary skill in the art would find no motivation in McCarthy to modify the window for improved soundproofing. The rejection has not pointed to any teaching in McCarthy of using thickness profiles for sound damping – because none exists. The only rationale provided is a generalized assertion that an aircraft window inherently has some sound blocking ability (address and refuted above) and that adjusting thickness is a routine design parameter. However, without recognition in the art of an acoustic problem or the effectiveness of a thickness gradient in solving it, there is no reason the skilled artisan would arrive at the claimed invention” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). See MPEP 2144.IV.
Applicant argues, “First, as explained above, thickness profile for sound attenuation was not recognized in the prior art as a result-effective variable. The case law is clear that only variables known to affect a particular result can be deemed ‘result-effective’ and thus obvious to optimize. The Boesch line of cases (echoing In re Aller) holds that optimizing a known result-effective variable is within ordinary skill. However, In re Antonie is directly on point here and provides a critical limitation to that rule: ‘a particular parameter must first be recognized as a result effective variable… before determination of the optimum or workable ranges of that variable might be characterized as routine experimentation.’ See MPEP 2144.05II.B. If the prior art is silent or does not appreciate that a parameter impacts the relevant result, then it is not obvious to experiment with that parameter’s values. Antonie reversed an obviousness rejection where the claimed invention was defined by a certain ratio of variables that the prior art had not recognized as significant. This is precisely our situation” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, when discussing result-effective variables, one must first recognize the difference between a variable and a result. The variable is the physical feature (e.g., thickness variation) and the result is the property that is effected by adjusting (varying) the physical feature (variable). Applicant has confused two completely different scenarios with regard to “result-effective variable” rejections: (1) “ratio of variables that the prior art does not recognize as significant” (In re Antonie) and (2) “prior art recognizes the ratio of the variables the prior art recognizes as significant (i.e., thickness variation) with regard to a result (i.e., optical properties), but discusses a different result than the result applicant is trying to resolve” (the current situation). Therefore, Applicant’s discussion of In re Antonie is not the proper case law for the current situation.
Second, as previously discussed, the cited prior art (McCarthy et al.) clearly articulates a variable (thickness variation) that is known to affect a particular result (optical properties). Applicant does not deny that McCarthy et al. teach the thickness variation impacts the optical properties.
Third, as discussed above, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). See MPEP 2144.IV.
Applicant argues, “In the Office Action, claims 1, 6, 7, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 17 and 18 of copending Application No. 18/557,702 (reference application). The rejection is respectfully traversed.
“Applicant respectfully requests that this rejection be held in abeyance until otherwise patentable subject matter is identified” (Remarks, Pg. 13).
EXAMINER’S RESPONSE: The rejection has been maintained.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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