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 of Group I, claims 1-7 and 12 in the reply filed on 05/08/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-11 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/08/2026.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06/04/2024, 07/29/2025, and 02/25/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
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 7 is 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 7 recites “the transparent panel” and there is insufficient antecedent basis for this limitation as the claim does not positively recite the presence of the transparent panel.
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.
Claims 1, 2, 5, and 12 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Von Der Weiden et al. (US 2015/0298431).
Regarding claim 1, Von Der Weiden discloses a composite switchable pane array comprising an intermediate laminated layer between first and second transparent panes (0015). The intermediate layer comprising first and second thermoplastic polymer films (3a and 3c) and an electrically switchable transmittance-variable SPD film (3b; instant sheet-shaped object) embedded therebetween (0046, Fig. 2).
Please note, the recitation in the claims that the composite interlayer film is “for use in an application in which the composite interlayer film is sandwiched between a pair of transparent panels and integrated therewith to manufacture the laminated panel” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Von Der Weiden discloses an intermediate layer as presently claimed, it is clear that the intermediate layer of Von Der Weiden would be capable of performing the intended use, i.e. in a laminated panel and for manufacture of a laminated panel, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, Von Der Weiden does not expressly teach a compression ratio of the first and second thermoplastic polymer films. However, Von Der Weiden teaches the films contain PVB and/or EVA (0021). EVA is taught as an exemplary thermoplastic material having a compression ratio when held at 90oC and 0.08 MPa for 5 min within the claimed range (specification page 7, lines 1-2), and thus the material of Von Der Weiden would be expected to have the same or overlapping compression ratio.
A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established."
Regarding claim 5, Von Der Weiden teaches the DPD film having a thickness of preferably 150 to 400 µm (0027), anticipating the thickness of 100 µm or more (MPEP 2131.03).
Regarding claim 7, Von Der Weiden teaches the same of the intermediate film conforming to the shape of the transparent panel (Fig. 2-4).
Regarding claim 12, Von Der Weiden discloses a composite switchable pane array comprising an intermediate laminated layer between first and second transparent panes (0015). The intermediate layer comprising first and second thermoplastic polymer films (3a and 3c) and an electrically switchable transmittance-variable SPD film (3b; instant sheet-shaped object) embedded therebetween (0046, Fig. 2).
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.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Von Der Weiden.
Regarding claim 3, Von Der Weiden discloses an edge set back of 1 mm to 4 mm or more (0025), overlapping the claimed 8mm or more.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 4, Von Der Weiden teaches a thickness of each carrier film of from 0.1 to 1 mm (100 to 1000 µm) and SPD film thickness of 100 to 500 µm (0017 and 0027). Thus a total thickness of the intermediate layer will range form 300 to 2500 µm, overlapping the claimed thickness of 1000 or more and 2500 µm or less (MPEP 2144.05).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Von Der Weiden as applied to claim 1 above, and further in view of Smith et al. (US 2005/0118401).
Regarding claim 6, Von Der Weiden discloses the limitations of claim 1 as discussed above. Von Der Weiden is silent as to the surface roughness of the intermediate layer.
Smith, in the analogous field of laminated glass (0002), teaches an interlayer film having a surface roughness (Rz) of between 5 and 15 µm (0017), overlapping the claimed surface roughness (Rz) of 1 µm or more and 120 µm or less.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the intermediate layer of Von Der Weiden to have a surface roughness (Rz) of between 5 and 15 µm, as taught by Smith, proving the ability for printing higher resolution for a desired surface pattern (0013).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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, Frank Vineis can be reached at 571-270-1547. 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.
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
Prosecution Insights