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 .
Response to Arguments
Applicant has amended independent claim 36 to correct the number of the recited steps. The objection to claim 36 is withdrawn.
Claims 39 and 40 were rejected under 35 U.S.C. § 112(b) for indefiniteness whereby each claim had recited a broad range of limitations together with a narrow range or limitation that falls within the broad range or limitation due to the presence of the terms “preferably” and “more preferably”. These terms have been eliminated and the rejections of claims 39 and 40 under § 112(b) are hereby withdrawn.
New claim 46 introduces the feature that was eliminated from claim 39 due to the amended § 112(b) correction. Claims 25-35 and 45 are withdrawn.
Applicant argues that regarding step (vii) [Note: see above, this step number is previously corrected from step (vi)], which recites “weakening a portion of the primary sealant and/or a portion of the secondary sealant in at least one area”, that the primary reference used for rejection of independent claim 36 under 35 U.S.C. § 103, Schwankhaus (US 2015/0360446 A1), does not disclose this step because it discloses only the weakening of the fire-resistant intermediate layer bonding to the glass facing the fire while the cohesion of the of the fire-resistant layer is greater than its adhesion to the glass pane near the heat source such that this fire-resistant intermediate layer adhesion is the one element that is significantly reduced.
The applicant concludes that the manufacturing method of Schwankhaus is silent as to teaching or suggesting a step of adhesion or weakening of the primary and/or secondary sealant [underlining by applicant]. Moreover, Schwankhaus teaches a method whereby the primer layer creates adhesion between the glass pane and the fire-resistant intermediate layer and that this adhesion at normal temperatures (50° C) prevents a detachment of the glass and the fire-resistant intermediate layer from one another (paragraph [0011]).Therefore, if the primer of Schwankhaus has any effect on the sealant this would be to create adhesion so as to not weaken the sealant and thus any weakening in Schwankhaus caused by a fire or fire testing is not relevant to the recited claim 36 manufacturing method. (Applicant arguments/remarks 05/04/2026 pp. 8-13).
The examiner counter argues that, under broadest reasonable interpretation, step vii of claim 36 cannot be limited in this way, such that it is not met by the fire reaction mechanism as taught by Schwankhaus (paragraphs [0013] [0014]). The examiner submits that the portions of the primer of Schwankhaus, broadly interpreted, must be considered as a primary sealant (paragraph [0011]) that creates an adhesion, acts as a sealant, and must be considered as a whole with the intermediate fire resistant layer which, under broadest reasonable interpretation, is weakened in at least one area. This is in keeping with the mechanism’s effect of preventing destructive failure of the fire-resistant glazing, while still providing an edge seal of integrity, just as the applicant reads from the specification (paragraph [0026] of instant application) and this appears to bring out the same effect of this reading of the claim, under broadest reasonable interpretation, of the primary sealant of Schwankhaus (paragraph [0013]).
Applicant argues that the secondary reference, Suzuki (CN1898829A) with machine translation, used in the rejection of claims 37-44 under 35 U.S.C. § 103, is not either in the applicant’s field of endeavor or reasonably pertinent of a particular problem with which the invention is concerned. Suzuki teaches the disassembly of fuel cells and is not pertinent to the problem of manufacturing a fire-resistant glazing that is less susceptible to failure. The applicant contends that there is no reason that a method disassembling fuel cells using liquids would or could work with the sealants of a fire-resistant glazing and no reason to believe that the nature of the sealants of a fire-resistant glazing and fuel cells are similar. Moreover, even if one would attempt to combine Suzuki with Schwankhaus, the result would be the breaking and dismantling of the sealant not the weakening of the primary and/or secondary sealants. This would be the opposite of a method of manufacturing. (Applicant arguments/remarks 05/04/2026 pp. 14-15).
The examiner counter argues In response to applicant's argument that Suzuki is nonanalogous art and is not in the same field of endeavor and is not reasonably pertinent to the particular problem of the applicant’s invention, that under broadest reasonable interpretation a step of weakening of a portion of the primary and/or a portion of the secondary sealant, which comprise an edge seal deteriorating solution to the primary sealant in at least one area, is clearly met by the solution of Suzuki which does include a solution with surfactants having a function of dissolving or softening a sealant (sealing layer) and is, therefore, reasonably pertinent (paragraph [0070]).
Moreover, in addressing applicant’s other argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here the functionality of the deteriorating solution would meet the requirement of weakening the portion of the primary and/or secondary sealant and would motivate one with ordinary skill in the art to use this mechanism as it specifically addresses this step in the manufacturing of a fire-resistant glazing.
Claim Rejections - 35 USC § 103
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(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwankhaus (US 2015/0360446 A1) IDS 12/21/2023.
Regarding Claim 36, Schwankhaus discloses a method of manufacturing a fire-resistant glazing (Fig. 1 abs, paragraph [0023] fire-resistant composite glass – 1) comprising the steps of:
(i) providing a first sheet of glazing material (Fig. 1 paragraph [0023] one of two first glass panes – 2.1) comprising a first major face, a second major face and at least one edge face (See Fig. 1 paragraph [0023] with a peripheral edge face; edge seal or sealing – 5);
(ii) arranging a primary sealant upon the first major face of the first sheet of glazing material proximate to the at least one edge face of the first sheet of glazing material (Figs. 1, 2 paragraphs [0011] [0024] [0030] where a primary layer prevents detachment of the glass and fire-resistant intermediate (intumescent) layer, made of polyethylene or paraffin wax, which acts as a sealant, primer layer – 6 present at boundary surface of glass pane facing fire-resistant intermediate layer);
(iii) providing a second sheet of glazing material (Fig. 1 paragraph [0023] one of two first glass panes – 2.2) comprising a first major face, a second major face and at least one edge face (See Fig. 1 paragraph [0023] with a peripheral edge face; edge seal or sealing – 5);
(iv) forming an assembly by arranging the first and second sheets of glazing material in a spaced-apart face-to-face arrangement with the first major faces of the first and second sheet of glazing material facing each other to form a cavity and wherein the edge faces of the first and second sheets of glazing material are substantially aligned to form a glazing edge (See Fig. 1 paragraph [0023] where the two first glass panes 2.1, 2.2 face each other to form a cavity and the edge faces of the first and second sheets are aligned with the spacer – 4 and edge seal or sealing – 5) ; and
(v) providing an intumescent layer precursor solution in the cavity between the first and second sheets of glazing material (Fig. 1 abs, paragraphs [0008] [0023] fire-resistant intermediate layer can be a foaming/swelling fire-resistant layer; intermediate layer – 3 foams in the case of fire)
(vii) and Schwankhaus further discloses the weakening a portion of the primary sealant in at least one area (paragraphs [0013] [0014] primer layer being designed such that the adhesion reduces at conditions that prevail with a fire safety test).
But while Schwankhaus discloses a secondary sealant provided between the first and second sheets of glazing material and at least partially between the primary sealant and the glazing edge (Fig. 1 paragraph [0023] edge seal or sealing – 5), Schwankhaus is silent that this secondary seal is provided in a step (v) following step (iv) where the intumescent (fire-resistant) layer is provided.
However, this would be obvious to try as a step after the provision of the fire-resistant (intumescent) layer as a choice from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP § 2143 I. E.) This would be obvious to try especially with the motivation of effectively sealing the intumescent layer to the surrounding air (paragraph [0023]).
Moreover, the transposition of process steps where the processes are substantially equivalent in terms of function, manner and result, was held to not patentably distinguish the processes (MPEP § 2144.04 IV.C).
Claim(s) 37-44 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwankhaus (US 2015/0360446 A1) IDS 12/21/2023 as applied to claim 36 above, and further in view of Suzuki (CN1898829A) with machine translation.
Regarding Claims 37 and 38, Schwankhaus does not disclose a step of weakening a portion of the primary sealant by applying an edge seal deteriorating solution to the primary sealant in at least one area nor a step of weakening a portion of the primary sealant and a step of weakening a portion of the secondary sealant in a co-located area.
Suzuki discloses, in an analogous art, the dismantlement or disassembly methods of fuel cells (abs) where these fuel cells have a sealing layer surrounding an electrode assembly with separators sandwiching the electrode assembly and bonded to the sealing layer (paragraphs [0031] [0067]). The disassembly involves the weakening of portions of the bonded electrodes by expansion and the separation of the sealing layer from the resin coatings of the partitions that bond the electrode assembly to the sealing layer, correlating to a primary sealant (Fig. 4 paragraph [0063]) and further includes the weakening of an edge seal correlating to a secondary sealant in at least one area (Fig. 7 paragraph [0068]). In the case of the secondary sealant, this can be accomplished by applying an edge seal deteriorating solution to the primary sealant in at least one area which is co-located to a secondary sealant (See Fig. 7(a)(b) paragraph [0070] solvents, surfactants).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Schwankhaus with the teaching of Suzuki whereby a method of manufacturing a fire-resistant glazing having a step of applying a primary sealant and secondary sealant between first and second sheets of glazing material and the glazing edge would further include a step of weakening portions of the primary sealant and secondary sealant with an edge seal deteriorating solution to the primary sealant in at least one area, as taught by Suzuki.
One with ordinary skill in the art would use this method step to weaken a portion of the primary sealant and/or a portion of the secondary sealant because a deteriorating solution applied to these sealants has the function of dissolving or softening the sealants (paragraph [0070]). This would enable the primary and second sealants to be designed such that the adhesion reduces at conditions that prevail with a fire safety test (Schwankhaus, paragraph [0013]).
Regarding Claim 39, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 38 and Suzuki further discloses that the edge seal deteriorating solution comprises surfactant (paragraph [0070])
Regarding Claim 40, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 38 and Suzuki further discloses that the edge seal deteriorating solution comprises a solvent (Fig. 7(b) paragraph [0070] methanol., ethanol, butanol; function is to reduce the adhesion of the sealing layer – 8).
Regarding Claim 41, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 38 and while Suzuki further discloses that a fluid (edge seal deteriorating solution) is supplied to the interface between the electrodes and sealants (Fig. 7(b) gas passages – 6g, 7g not limited to hot water), which can be considered an injection apparatus, as an alternative recited by the claim.
Regarding Claim 42, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 38 and Suzuki further discloses that the edge seal deteriorating solution is applied onto a surface of the primary sealant orientated away from the cavity, and/or wherein the edge seal deteriorating solution is applied onto a surface of the primary sealant orientated towards the cavity (See Figs. 6(a), (b), paragraph [0067] liquid supplied to each gas passage – 6g, 7g raises the pressure inside the passage which can involve the sealing layer – 8 oriented towards or away from the cavity because it supplies pressure of the deteriorating solution around the sealant – see arrows).
Regarding Claim 43, Schwankhaus discloses all the limitations of claim 36, but does not disclose a step of weakening a portion of the secondary sealant by forming a groove parallel to the glazing edge in the surface of the secondary sealant.
Suzuki discloses a step of weakening a portion of the secondary sealant (Fig.(a) paragraph [0072] sealing layer – 8) which comprises forming a groove parallel to the glazing edge in the surface of the secondary sealant (Figs. 10 (a), (b) paragraph [0072] continuous or spaced grooves – 40 formed on the inner surface of the partitions 6, 7 along their periphery (parallel to the sealing layer – 8). The motivation to add this feature is that the groove can act as a fracture guide (See Fig. 10 (b) paragraphs [0011] [0072] fracture guide serves as the starting point to reduce the adhesion between the sealing layer (secondary sealant) and the electrode assembly (glazing edge) where groove is propagated in the sealing layer itself).
Regarding Claim 44, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 43 and Suzuki further discloses the step of forming a groove parallel to the glazing edge in the surface of the secondary sealant comprises tooling the secondary sealant before, during or after curing (Fig. 10(b) paragraphs [0059] [0072] where the grooves are formed after curing and are propagated with the secondary sealant (sealing layer – 8).
Regarding Claim 46, the combination of Schwankhaus and Suzuki disclose all the limitations of claim 38 but Suzuki is silent as to the concentration of the surfactant in the edge seal deteriorating solution.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use an edge seal deteriorating solution comprising surfactant, from 0.01 % to 10 % surfactant,
since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to these ranges of surfactant concentrations for the purpose of dissolving the boundary between the sealant and the glazing material (paragraph [0016]). (MPEP § 2144.05 IIA).
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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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