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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14, and within that Group Applicants additionally elected Species I(a) and Species II(a), in the reply filed on March 6, 2026 is acknowledged.
Note that in view of the election, claims 1-9, 11-12 and 14 will be pending examined and claims 10 and 13 will be withdrawn as being drawn to a non-elected species and claims 15-19 will be withdrawn as being drawn to a non-elected method.
The traversal is on the ground(s) that,
Applicants assert that the Examiner has provided no reasons to conclude the species or Groups are patentably distinct as required by MPEP 803.
This is not persuasive because note that distinction (MPEP 803) is US Practice and the present Application is a 371 which is directed to lack of unity not distinction. In the instant case, the Examiner did indicate that unity of invention was lacking between the Groups and the species.
Applicants argue that that the Examiner has not provided any indication that the claimed content was interpreted in light of the description in asserting lack of unity and therefore has not met the burden necessary to support the assertion of lack of unity.
This is not persuasive. The Examiner did interpret the claimed content in light of the description but note that claims are not to be read in a vacuum. In the instant case, regarding the claims themselves, the common feature present in all Groups is met by the prior art discussed in the restriction requirement. As such, this feature is not Applicants’ contribution over the art and unity is therefore, lacking.
Applicants argue that unity of invention does exist between the Groups because there is a technical relationship involving the same special technical feature which defines the contribution which each group, taken as a whole, makes over the prior art.
This is not persuasive. As discussed above, regarding the claims themselves, the common feature present in all Groups is met by the prior art discussed in the restriction requirement. As such, this feature is not Applicants’ contribution over the art and unity is therefore, lacking.
Applicants argue that there would not be serious burden to Examine all Groups and the Office has not considered the relationship of the inventions with respect to MPEP 806.03.
This is not persuasive because burden and consideration of relationships is US Practice and the present Application is a 371 which is directed to lack of unity not distinction. In the instant case, the Examiner did indicate that unity of invention was lacking between the Groups and the species.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 5, 12 and 14 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by USPub20070216768.
Regarding claim 1: ‘768 teaches an embodiment of a glazing comprising a main body 20’ having opposing outer and inner surfaces and an edge that defines a cut-out portion 78 extending from the outer surface to the inner surface (see structure Fig 4A and the cross section of this embodiment shown by Fig 5).
An insert 80 having the shape of the cut-out is inserted inside the cut-out and is coupled to the main body wherein at least the outer surface of insert 80 and the outer surface of the body 20’ is flush (see Figure 5).
Regarding claim 5: The glazing further includes a mount (bracket) 86 mounted to insert 80 to support at least one camera (sensor) 46 and arranged facing an inner surface of insert 80 (see Fig 5).
Regarding claim 12: The glazing is a windshield for a vehicle (see entire document).
Regarding claim 14: The edge is a first of the main body 20’ is arranged proximate to and along a vehicle roof 30 (see Figures and 0037) and the cut out is defined substantially centrally to the first edge (see Figure 4A).
While ‘768 may not explicitly mention the insert being “adapted to” support a rear-view mirror of the vehicle, given that the structure is the same as claimed, it would be expected to have the same capabilities/suitabilities/functionalities as claimed (MPEP 2112).
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by USPub20070216768 or, in the alternative, under 35 U.S.C. 103 as obvious over USPub20070216768, or further in the alternative, as obvious over USPub20070216768 in view of WO20210148571 (rejection based on corresponding English document USPN12,035,056.
Regarding claim 6: While ‘768 may not explicitly recite the insert 80 of their embodiment relied upon to meet claim 1 being IR transparent glass, given that ‘768 does mention that the insert 80 of their embodiment can be formed of IR transmissive material described previously in their disclosure (i.e. the materials discussed from their previously discussed embodiments) (see 0035) and in previously discussed embodiments, ‘768 discusses IR transmissible chalcogenide glass as a desirable insert material (see 0032), one skilled in the art would reasonably consider ‘768 to be anticipating, or alternatively at the very least render obvious, making the insert 80 being that if IR transmissible glass.
Further in the alternative, as discussed above, ‘768’s insert 80 material is an IR transmissive material to be inserted into an upper edge cut out of a vehicle windshield.
As ‘056, who similarly teaches an insert that is IR transmissive to be inserted into an upper edge cut out of a vehicle windshield, suggests that suitable and desirable IR transmissive materials used for such a purpose include that of chalcogenide glass (see Col. 5, lines 64-67), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include their insert being that of IR transmissive chalcogenide glass to obtain a both suitable and desirable IR transmissive insert material.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by USPub20070216768 or, in the alternative, under 35 U.S.C. 103 as obvious over USPub20070216768, or further in the alternative, as obvious over USPub20070216768 in view of either one of WO20210148571 (rejection based on corresponding English document USPN12,035,056 or GB2271139
Regarding claims 8 and 9: While ‘768 may not explicitly recite the insert 80 of their embodiment relied upon to meet claim 1 being coupled to the body with adhesive, given that ‘768 discloses in their discussion of other embodiments that inserts can be coupled to the body by adhesive (see 0028, 0032 for instance), one skilled in the art would reasonably consider ‘768 to be anticipating, or alternatively at the very least render obvious, coupling insert 80 with adhesive.
Further in the alternative, as discussed above, ‘768’s insert 80 material is an IR transmissive material to be inserted into an upper edge cut out of a vehicle windshield.
As ‘056 and ‘139, who each similarly teach an insert that is IR transmissive to be inserted into an upper edge cut out of a vehicle windshield, suggests that such inserts can be coupled to a body with a an adhesive such as a urethane or acrylic adhesive (see Col. 3, lines 6-9 in ‘056 and page 5, lines 18-20 in ‘139), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include their insert 80 being coupled to their body with an adhesive as desired for increased adhesion.
Note regarding the limitation of claim 9 of a “damping” material that the claim nor the specification define what is meant by damping (i.e. what degree of damping?). In the instant case, given that adhesives exhibit viscoelastic behavior, one skilled in the art would reasonably conclude that they will necessarily include some degree of damping no matter how negligible. As such, the adhesive mentioned above will be expected to have some degree of damping and thereby, be considered to be a damping material in as much as the term has been defined.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20070216768 as applied to claim 1 above or alternatively in further view of GB2271139
Regarding claim 2: While ‘768 may not explicitly recite the inner surface of insert 80 of their embodiment relied upon to meet claim 1 being flush with the inner surface of main body 20’ and ‘768 provides an example drawing of the embodiment as by Fig 5 wherein it appears to not be flush, given that ‘768 does not anywhere in their disclosure appear to place any limits on whether the inner surface needs to be flush or not and does suggests in discussions of other embodiments that the inner surface can be made flush with the body as desired (see 0034), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include making the inner surface of their insert flush with the inner surface of the body as desired.
Alternatively, 768’s insert 80 material is an IR transmissive material to be inserted into an upper edge cut out of a vehicle windshield.
As ‘139, who similarly teaches an insert that is IR transmissive to be inserted into an upper edge cut out of a vehicle windshield, suggests it being desirable to make the outer and inner surfaces of such inserts be flush with the outer and inner surfaces of the body (see Pg. 2 lines 14-16 and Fig 1), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include both the outer and inner surfaces of their insert 80 being flush with both the outer and inner surfaces of their body to obtain a desirable insert configuration.
Claim(s) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20070216768 as applied to claim 1 above in view of WO20210148571 (rejection based on corresponding English document USPN12,035,056) as evidenced by North American Coating Laboratories.
Regarding claims 3 and 11: 768 does not discuss the claimed features, however, 768 does not exclude them and instead, only generally teaches an insert 80 material which is an IR transmissive material to be inserted into an upper edge cut out of a vehicle windshield.
As ‘056, who similarly teaches an insert that is IR transmissive to be inserted into an upper edge cut out of a vehicle windshield, suggests it being desirable for the inner surface of such an insert to include an antireflection layer with the exterior having a hard layer for scratch protection such as a DLC layer (Col. 6 , lines 60-67 bridged to Col. 7, lines 1-11), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include an antireflection layer on the inner surface with a DLC layer on the exterior for antireflection and protection.
Note for the record that DLC is inherently hydrophobic (see North American Coating Laboratories as evidence) and therefor will be considered to meet the limitation of being water repellent.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20070216768 as applied to claim 1 above in view of any one of WO20210148571 (rejection based on corresponding English document USPN12,035,056), USPub20200254731, USPub20200282922 or USPub20200290319.
Regarding claim 4: 768 does teach an opening 82 defining a transparent zone for a camera (sensor) 46 (see Fig 4A and Fig 5) but just does not explicitly discuss a black print defining the opening. However, 768 does not exclude this and instead, only generally teaches an opening defining a transparent zone for a camera to be used in vehicle windshields.
As ‘056, 731, ‘922 and ‘319, from the same field of endeavor, suggests it being well known and desirable in the art to include a black print camera obscuration to this portion around the opening (see Col. 5, lines 29-45 and Fig in ‘056 and Figures and entire disclosures in ‘731, ‘922 and ‘319), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include a black print camera obscuration to this portion around their opening as desired.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20070216768 or, in the further alternative USPub20070216768 and WO20210148571 (rejection based on corresponding English document USPN12,035,056) as applied to claim 6 above, in view of GB2271139.
Regarding claim 7: ‘768 does not discuss the different in IR transmission as required by claim 7, however, ‘768 does not appear to place limits on the IR transmission. Instead, 768 only generally teaches an insert 80 material which is an IR transmissive material to be inserted into an upper edge cut out of a vehicle windshield.
As ‘139, who similarly teaches an insert that is IR transmissive to be inserted into an upper edge cut out of a vehicle windshield, suggests it being desirable to make the glass body have IR transmission of <50% and even < 30% and to make the IR transmissive insert portion have an IR transmission of >50 and even >60% (see Pg. 3, last 3 lines bridged to Pg 4, lines 1-6), it would have been obvious to one having ordinary skill at the time of invention to modify ‘768 to include the glass body have IR transmission of <50% and even < 30% and to make the IR transmissive insert portion have an IR transmission of >50 and even >60% in order to obtain a desirable IR transmission relationship over their windshield.
Note that the body having <30% IR transmission with the IR transmission insert portion having >60% will provide for a difference of > 30%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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