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, Species I (Claims 1, 2, 5, 6, 9, and 10 in the reply filed on 7/8/2026 is acknowledged. The traversal is on the ground(s) that the species are not distinct and mutually exclusive. As to Claims 10 and 11, Examiner agrees as upon further consideration, there is overlap, and Claim 11 is examined herein. With regard to the remaining traversal and the argued lack of burden, this is not found persuasive because burden is not considered in unity of invention restrictions. Further, Claim 1 is effectively directed to a tape while Claims 18 and 19 are direction to a solar cell deposition process. These are entirely different fields with distinct examination units Further, Claim 13 is clearly distinct from Claims 10 and 11 as it claims bidirectional reversible thermo-sensitivity that increases in peel strength with heat while Claims 10 and 11 mandate unidirectional irreversible adhesive that decreases in peel stretch with heat. Claims 18 and 19 recite a process while Claim 1 recites a method. Claims 1, 2, 5, 6 and 9-11 are examined herein. Claims 13, 18, and 19 are withdrawn
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 is dependent on Claim 81, which does not exist. Examiner assumes this should be Claim 1.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Husemann et al. (US 2008/0199636).
Examiner notes the claims are directed to a “thin film mask” and only a thin film mask. No solar cells are claimed, only the thin film mask, and the “is used in a deposition of solar cells” language is thus merely an intended use of the thin film mask. The claim does not positively recite the thin film mask adhered to a solar cell, and is not directed to a process. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Further, although absorption coefficient is not typically expressed as a percentage, the use of thickness and absorption coefficient is interpreted to mean the absorption at that thickness. Thus, if a layer would block 20% of green or uv or ir light at the given thickness, it reads on the claim as written. Note this means the thickness range Applicant gives of 200 micron or less is meaningless since 200 microns has the broadest coverage. Note the thickness is not required, but is only a factor of calculating the absorption coefficient as a percentage. Thus, if a 5 micro layer in the prior art had 2% absorption at 530 nm, but would have had 35% absorption if it were 200 nm, it is considered to read on Claim 1 even though the actual absorption is below 20% since the absorption coefficient is in the claimed range. If Applicant desires a different interpretation, the are free to restrict or clarify the claim, but at the current time, this appear the clear broadest reasonable interpretation.
Further, Examiner notes the thin film mask is merely two adjacent layers, one of which must block and absorb light, and one which is adhesive. Any full light absorbing and blocking tape will read on all the high absorption and low transmittance wavelengths since it will absorb and block across all visible wavelengths. As mentioned above, Examiner notes the 200 microns doesn’ actually limit the first layer but only describes the light transmission/absorbing properties if the layer were 200 microns.
Regarding Claim 1 and 2, Husemann et al. teaches a carrier (a), such as 12 microns in thickness, with black light absorbing layers (b) that have nearly complete absorption and less than 1% transmittance of light in the 300-880 nm range, and are directly adjacent an adhesive layer (d) (See page 2, paragraph [0017], page 3, paragraphs [0041], [0045]-[0051], and Fig. 1, teaching “substantially complete light absorption” at over 20% mixing of particles such as carbon black into the binder), thus forming a first layer and a second layer in a layer configuration as claimed. Examiner submits the tape in Husemann et al. is capable of being adhesive to any surface, e.g. such as a solar cell, and masking it from light. Husemann et al. thus teaches a think film mask as claimed. Note if there is substantially complete light absorption at 12 microns, this is even further block at 200 microns, which is how the absorption coefficient is defined.
Regarding Claims 5 and 6, Husemann et al. teaches including light absorbing carbon black is also included in the adhesive layer to absorb and reduce transmission of light (See page 5, paragraph [0074]). Examiner submits carbon black has high absorbency and no light transmission in the visible and especially uv range, and absorbs strongly in shorter ir wavelengths, such as 1045 nm, and even mild loadings in the adhesive would thus absorb well over 50% of green light or uv light or ir light as claimed. This is further supported by the fact the adhesive is getting this desired light absorbance while being as low as 5 microns in thickness (See page 3, paragraph [0038], indicating the adhesive may be 5 microns, which when the “absorption coefficient” is calculated as a percentage a 200 microns, makes it substantially higher than the absorbance at 5 microns; this means even if absorbance were 30% in the 5 micro adhesive, which is unlikely, it would still read on the claim if the adhesive would have had over 50% absorbance at 200 microns).
Examiner submits even 0.1% by weight carbon black in 200 microns adhesive likely would have had over 70% absorbance at 355 nm, and since such loadings at 5 microns imply almost no absorbance, the claimed absorption coefficients are implied (since the claim is such that any adhesive layer absorption coefficient may be determined by the layer absorption percentage at 200 micron thickness; this means the actual absorption percentage can be much lower in a thinner layer and still read on the claims as written). Examiner submits 90%+ 355 nm light absorption in a 200 microns carbon black loaded would have been easily achievable and expected even with mild loadings (e.g. 0.5% by weight). Further, the carbon black is taught as being utilized for the explicit purpose of light absorption in the 300-800 nm range (and note carbon black absorbs better in the UV range). When used for light absorption, the properties of carbon black are such that almost any functional loading at all would absorb at least 50% of 335 nm or green light at 200 microns, especially when the actual layer is thinner, such as Husemann et al teaches (since a thinner layer requires higher loadings to get absorption, thus giving a high absorption coefficient). Thus, loadings to achieve the claimed 50% absorption coefficient at 355 nm are implicit for the intended function since Husemann et al. certainly implies well-over 90% absorption coefficient as claimed for the above stated reasons. At the very least, such loadings are obvious based on the teaching of Husemann et al. to achieve the intended function, i.e. light absorbance using carbon black, since no one would add a light absorbing material for light absorption purposes at loadings too low to achieve any functional light absorption.
Claim Rejections - 35 USC § 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 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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Husemann et al. as applied to Claim 1 above.
Regarding Claim 9, Husemann et al. teaches the thin film mask of claim 1 as described above. Examiner submits peeling strength is typically defined relative to a substrate, and since no substrate is recited, under the broadest reasonable interpretation, any substrate giving the claimed peel strength allows the adhesive read on the claim. Examiner submits Husemann et al. teaches the adhesive as a pressure sensitive adhesive (PSA). Although the PSA when secured to its final surface likely has a peeling strength of well over 50 gf/cm, standard PSAs would have been expected to have peel strengths within the claimed range when adhered to release films at room temperature, which Husemann et al. teaches (See page 8, paragraph [0144]). Examiner submits peeling strength relative to such release films in the claimed range is at least obvious to a person having ordinary skill in the art at the time of invention so as to maintain the adhesive in place on the release surface, but make it easily peelable. Such peel strengths are known to be in the range of 5-8 gf/cm to achieve such easy peelability. Note above 50 gf/cm, peeling would have been difficult and below 1 gf/cm, adhesive will be too weak to maintain the film in place.
Claim(s) 1, 2, 5, 6, 9, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018179703 (wherein all textual citations are to the English machine translation provided) in view of Cok (US 2009/0104785).
Regarding Claims 1, 2, 9, 10, and 11, WO2018179703 teaches a mask that is first layer [30], such as PET, and a second layer [32], which is adhesive (See Fig. 2 and pages 11-12, paragraphs [0017]-[0019]). WO2018179703 teach the base material [30], which is 10-100 microns, i.e. first layer, may be opaque, i.e. have little to no light transmission (See page 13, paragraph [0020]).
WO2018179703 teaches the adhesive [32] should be peelable after being applied to a substrate [1] for masking applications (See page 14, paragraph [0021]), as specifically teach an adhesive whose adhesive strength decreases upon heating to create a non-adhesive region (See page 16, paragraph [0023]), thus implying irreversible drop in peel strength and viscidy upon heating to a temperature. Examiner notes essentially any thermally releasable adhesive renders the adhesive conditions of Claims 10 and 11 obvious. Note the instant specification explicitly indicates temperature and peel conditions are highly controllable (See instant PgPub 2025/0128280, pages 5-6, paragraph [0098]-[0102], wherein the instant specification indicates the conditions of peel strength and peel/debonding temperature are set to production requirements, implying this is highly controllable and within ordinary skill in the art).
As described above, Examiner submits the claimed peeling strength relative to peelable layers in the claimed range is at least obvious to a person having ordinary skill in the art at the time of invention so as to maintain the adhesive in place on the release surface, but make it easily peelable. Such peel strengths are known to be in the claimed range for such easy peelability. Note above 50 gf/cm, peeling would have been difficult and below 5 gf/cm, adhesive will be too weak to maintain the film in place. Further, any temperature above utilization temperature is suitable for thermal release wherein higher temperatures provide greater operating range, but require more energy to release, while lower temperatures are easy to release but may release prematurely if operating temperatures unexpectedly rise.
Examiner submits the claimed release temperature would have predictably been suitable for a heat release adhesive utilized in WO2018179703, and thus would have been obvious as a design choice. Where the general conditions of a claim (i.e. heat releasing/peeling adhesive) are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)(A)). Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to use routine experimentation to arrive at the best composition for the heat release adhesive in terms of release temperature and peel strength, such as that which is claimed, in order to meet customer specifications or consumer demands.
WO2018179703 is silent on light absorbance of the layers, but teaches forming openings in the mask by methods such as laser cutting (See page 28, paragraph [0039]). It is known in laser cutting similar masks to form openings to use the laser to ablate the mask material in the area of the cut, and to thus make the mask material highly absorptive in the laser operating range (See, for example, Cok, page 6, paragraph [0066]), such ranges well-known to have been in uv, green, and ir light as claimed (See, for example, instant USPgPub 2025/0128280, page 5, paragraphs [0086]-[0088] and page 8, paragraph [0157], indicating the claimed wavelength are known operating wavelengths for laser used similarly to ablate masks). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to configure the mask in WO2018179703 to have high absorption characteristics, such as claimed. Doing so would have predictably facilitated high absorption in known laser wavelength ranges thus facilitating patterning of the openings for the mask. Note any absorption over 50% for the first or second layer reads on all claims. Further, the mask is as thin as 10 microns (See page 13, paragraph [0020]), and as above, even 20% total absorption at 10 microns surely reads on the claims because the 50% absorption coefficient is based on the layer being 200 microns, which exponentially increases absorption percentage relative to 10 microns.
Regarding Claims 5 and 6, WO2018179703 teaches stacking multiple masks with different patterns (See page 36, paragraph [0050]), wherein adhesive [42] is provided over the entire surface of the first layer [830] (See fig. 8 and page 39, paragraph [0054]), and an opening cut is made through the adhesive [42] and layer [830] to form opening [412]/[312] (See Fig. 8 and page 37, paragraph [0051]). Thus, when using a laser method, such as is taught in WO2018179703, it will be necessary to cut through the adhesive [42] to form the second opening. Thus, it at least would have been obvious to make the adhesive [42], here interpreted as the second layer, absorptive in the wavelength of the laser, at least in the cutting area, to facilitate ablative cutting in this region for the same reasons as above. Since cutting occurs through adhesive [42], making it highly absorbent in the laser operating range, at least in the cutting area, would have predictably facilitated cutting therethrough. Note Cok explicitly teaches ablating this upper adhesive (See page 3, paragraph [0048] and Fig. 2B, teaching ablating upper adhesive layer [60]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT W DODDS/Primary Examiner, Art Unit 1746
Prosecution Insights