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 .
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 12/10/2025.
Claim(s) 1-10 and 15-29 are currently pending.
Claim(s) 1 has been amended.
Claim(s) 11-14 have been cancelled.
Claim(s) 26-29 have been added
Response to Arguments
Applicant’s arguments, see Remarks filed 12/10/2025, with respect to the rejection(s) of claims 1-25 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The amendments to claim 1 overcome the previous rejection(s). Accordingly, the rejection(s) of claims 1-25 under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see Remarks filed 12/10/2025, with respect to the rejection(s) of claims 1 and 19-25 under 35 U.S.C. 102(a)(1) as being anticipated by Kyougoku have been fully considered and are persuasive. Accordingly, the rejection(s) of claims 1 and 19-25 under 35 U.S.C. 102(a)(1) has been withdrawn.
Applicant’s arguments, see Remarks filed 12/10/2025, with respect to the rejection(s) of claims 1-18 under 35 U.S.C. 103 over Stark in view of Kyougoku have been fully considered and are persuasive. Accordingly, the rejection(s) of claims 1-18 under 35 U.S.C. 103 has been withdrawn.
New claim 29 is rejected under 35 U.S.C. 112(b) and 35 U.S.C. 102 as set forth below.
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 29 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.
Regarding claim 29
The limitation “the second criterion” in line 15 is unclear and therefore renders the claim indefinite. There is no prior recitation of a second criterion in the claim. Accordingly, the limitation lacks antecedent basis. Further, one of ordinary skill in the art could not reasonably ascertain if the unitary film is required to satisfy the first criterion, the second criterion, or both. For purposes of examination on the merits, it is interpreted that the unitary film satisfies at least one of the first or second criterion.
Appropriate correction and clarification is required.
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.
Claim(s) 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2016/158543, Kyougoku et al.
Regarding claim 29
Kyougoku teaches a unitary film (corresponding to resin layer B 120) for an electrode assembly of a solar cell (see conductive lines 150 and 150b, and conductive portions 160a and 160b) [Figs. 1-2, 4 and 6, Pages 5-6], wherein the unitary film (B120) is configured to be arranged on a surface of the solar cell (any one of 305a and 305b) and a plurality of electrically conductive elements (150a/150b and 160a/160b) of the electrode assembly are interposed between the unitary film (B120) and the surface of the solar cell (305a or 305b) [Figs. 4-6, Pages 5-6];
wherein the unitary film (B120) is formed of a polymeric material (e.g., EVA) and is characterized by satisfying at least one of a first criterion and a second criterion:
the second criterion requires that the unitary film has a peel strength of at least 5N per 10mm width of the unitary film (15 N/10 mm or more) [Pages 13-14]; and
wherein the polymeric material is formed from a polymer resin which comprises at least one of a polyvinylbutyral (PVB) hydrocarbon ionomer, thermoplastic organo-silicon, silicon rubber and thermoplastic silicone elastomer (TPSE) [Page 10].
The following limitations are considered product-by-process and, accordingly, to not differentiate the claimed product from the prior art:
measured by differential scanning calorimetry using the following method: heating the unitary film, sequentially, in a first thermal cycle and a second thermal cycle according to Standard Test Method ASTM D3418 to produce a first heating trace and a second heating trace, respectively; and identifying and determining a first endothermic peak and a second endothermic peak, in each of the first and second heating traces, in the temperature range between 40°C and 200°C; and
the peel strength determined by 180-degree peel test according to the following method: thermally bonding the unitary film to a surface of a substrate; peeling the unitary film from the surface according to Standard Test Method ASTM D903 to provide a peel-force trace; and determining, from the peel-force trace, that the unitary film has a peel strength of at least 5N per 10mm width of the unitary film.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113]
Examiner notes that Kyougoku teaches determining the peel strength by a 180-degree peel test comprising the step of thermally bonding the resin layer B to the surface an adherent layer (reading on “a substrate”), peeling the resin layer B to provide a peel-force trace, and determining a peel strength of at least 15 N/mm [Page 13].
Allowable Subject Matter
Claims 1-10 and 15-28 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1
The prior art of record, whether alone or in combination, fails to teach or fairly suggest the limitation: “the polymeric material is characterized by satisfying a first criterion, wherein the first criterion requires that the polymeric material has at least two endothermic peaks in a temperature range between 40°C and 200°C in each of a first heating trance and a second heating trance”, in the context of other limitations in the claims.
Kyougoku discloses a unitary film (B120) comprising a polymeric material (EVA) having a peel strength of 15/N/10 mm or more [Pages 13-14], thereby satisfying the second criterion.
However, while Kyougoku discloses the polymeric material comprising EVA, Kyougoku is silent to the polymeric material having at least two endothermic peaks in a temperature range between 40°C and 200°C in each of a first heating trance and a second heating trance.
Stark discloses a unitary film comprising EVA [see Intro], wherein the unitary film comprises a polymeric material having at least two endothermic peaks in a temperature range between 40°C and 200°C [See Fig. 12]. However, as seen in Fig. 12 of Stark, the polymeric material has a single endothermic peak in the second and third heating traces in the temperature range between 40°C and 200°C.
Accordingly, the cited art fails to teach or fairly suggest the polymeric material having at least two endothermic peaks in a temperature range between 40°C and 200°C in each of a first heating trance and a second heating trance, and the claim is allowed.
Regarding claims 2-10 and 15-28
Claims 2-10 and 15-28 are allowed for their dependency on claim 1.
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721