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 .
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.
1. Claim(s) 1-5, 7, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Padiyath (USPub20080160321).
Regarding claims 1-3: Padiyath teaches a composite pane comprising an outer pane having an outer side surface and interior side surface (110, 210 in Figs), an inner pane having an outer side surface and interior side surface (120, 220) and a thermoplastic interlayer, formed from thermoplastic film layers (130, 140, 230, 240), joining the interior side of the outer pane to the outside side of the inner pane (see Figures and 0032).
Between the outer and inner panes, there is an infrared reflective coating (150, 250) (0022, 0025), on the interior side of the inner pane (120, 220) there is a low e coating (160, 260) (0021, 0025) and the thermoplastic film layers are formed from polyvinyl butyral such as that under the trade name BUTVAR.RTM resin (0032).
While Padiyath may not explicitly mention recycled content in the resin, initially note that BUTVAR is the same resin used by Applicants (see Applicants’ publication 0059). Additionally, BUTVAR resin, based on Applicants’ own admittance (see last two lines of page 6 of Applicants’ remarks filed July 16, 2026), was available in both recycled and non-recycled forms at the time of the present Application’s filing, and one having ordinary skill would have been justified and found it obvious when presented with the two options, to use either option as desired.
Even further, the Examiner notes for the record that it is readily well known to use recycled materials for ecological reasons (note this is a logical fact) and one skilled in the art would have clearly recognized selection of the recycled form out of the two BUTVAR options to be an obvious and desirable choice as recycled forms are better for the economy, etc.
Given that Padiyath’s layer now includes the recycled form of BUTVAR which is the same material as by Applicants, it would be concluded to have the same content of recycled material and have the same transmittance properties (MPEP 2112).
Regarding claims 4 and 5: The low e coating (160, 260) can include a layer of fluorine doped tin oxide (0031).
Regarding claim 7: As shown in the Figures, the infrared reflecting coating (150, 250) is on a film embedded in the overall interlayer.
Regarding claim 13: Padiyath teaches a method of obtaining the above composite pane which will include the step requirements claimed (see 0048 and Examples for instance).
2. Claim(s) 12 is/are rejected under 35 U.S.C. 103(a) as being obvious over Padiyath (USPub20080160321) as applied to claim 1 in view of USPub20100190001.
Regarding claim 12: Padiyath does teach that their panes can be clear (0029) but just do not explicitly mention them being soda lime. However, Padiyath does not appear to place limits on their glass and instead, only generally teaches a composite pane comprising outer and inner panes used in automobiles.
Given that ‘001, who similarly teaches a composite pane comprising outer and inner panes used in automobiles, suggests that such panes can be made of clear soda lime glass as desired (See entire document), it would have been obvious to one having ordinary skill at the time of invention to modify Padiyath to include their soda lime glass panes being clear as desired.
3. Claim(s) 1-5, 7-9, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagen (USpub20200384739) in view of either one of Padiyah (USPub20080160321) or Kobayashi (WO2018225860, rejection using corresponding English document USPN11,518,147).
Regarding claims 1-3: Hagen teaches a composite pane comprising an outer pane having an outer side surface and interior side surface (1 in Figs), an inner pane having an outer side surface and interior side surface (2) and a thermoplastic interlayer, formed from a thermoplastic film layer (3), joining the interior side of the outer pane to the outside side of the inner pane (see Figures and 0062).
Between the outer and inner panes, there is an infrared reflective coating (4) (0023-0024, 0063), on the interior side of the inner pane (2) there is a low e coating (5) (0029-0035, 0064) and the thermoplastic film layer is formed from polyvinyl butyral which can have a light transmittance of 2-80% (0020-0021).
While Hagen does not explicitly disclose the presence of at least 10% recycled material in their thermoplastic film, Hagen does not does not place limits on their PVB material and instead, only generally teach it being that of an interlayer for laminated glass used in vehicles (see entire document).
As Padiyah, who similarly teaches interlayers for laminated glass used in vehicles, discloses that such interlayers can be formed from polyvinyl butyral such as that under the trade name BUTVAR.RTM resin as desired (0032), it would have been obvious to one having ordinary skill at the time of invention to modify Hagen to include their interlayer of PVB being that of BUTVAR.RTM resin to obtain a desirable interlayer material for their laminate.
Note that in the above modification, BUTVAR resin is the same resin used by Applicants’ (see Applicants’ publication 0059). While Padiyath may not explicitly mention recycled content in the resin, BUTVAR resin, based on Applicants’ own admittance (see last two lines of page 6 of Applicants’ remarks filed July 16, 2026), was available in both recycled and non-recycled forms at the time of the present Application’s filing, and one having ordinary skill would have been justified and found it obvious when presented with the two options, to use either option as desired.
Even further, the Examiner notes for the record that it is readily well known to use recycled materials for ecological reasons (note this is a logical fact) and one skilled in the art would have clearly recognized selection of the recycled form out of the two BUTVAR options to be an obvious and desirable choice as recycled forms are better for the economy, etc.
Given that the layer now includes the recycled form of BUTVAR which is the same material as by Applicants, it would be concluded to have the same content of recycled material and although Hagen already itself suggest the motivation to obtain a low transmittance in the interlayer as discussed above, given that the recycled form of BUTVAR is the same material as Applicants’ it would also have been expected to have the same transmittance (MPEP 2112).
Alternatively, again, Hagen does not does not place limits on their PVB material and instead, only generally teach it being that of an interlayer for laminated glass used in vehicles.
As Kobayashi, who similarly teaches that an interlayer for laminated glass, can be made to be 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material as it is excellent in ecology and economic performance (see Col. 22, lines 45-50, 62-67, Col. 23, lines 45-67- Col. 24, lines 1-18, and Examples), it would have been obvious to one having ordinary skill at the time of invention to modify Hagen to include their interlayer film layer being that of 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material for its excellence in ecology and economic performance.
Regarding claim 4 and 5: Hagen’s low e coating (5) can include a TCO layer as claimed (0029-0035, 0064).
Regarding claim 7: Hagen’s infrared reflective coating can be directly on the interior side of the outer pane or arranged on a carrier film embedded in the interlayer (0023, Figures).
Regarding claims 8-9: The infrared reflective coating comprises at least one, but in some case two, three or even four infrared reflective metallic layers embedded between at least one dielectric layer each (see 0024) (see 0023-0024, 0063, Examples).
Regarding claim 13: Note that given the structure or Hagen’s composite pane, Hagen would be implicit with regards to steps of providing each pane, interlayer, coatings and then assembling them as claimed.
4. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagen (USpub20200384739) and either one of Padiyah (USPub20080160321) or Kobayashi (WO2018225860, rejection using corresponding English document USPN11,518,147) as applied to claim 4 above in view of WO2013131667 (rejection based on corresponding English document USPub2015146286).
Regarding claim 6: As Hagen suggests that their low e coating can be that according to those disclosed in WO2013131667 (0028), it would have been obvious to one having ordinary skill at the time of invention to include the coatings of ‘667 as the low e coating coating.
Note that the coatings of ‘667 generally have the sequence a low index adhesion promoting layer (see 0031-0033, 0068, 0091) /a TCO layer of ITO (0069, 0091) /a barrier layer (0070, 0091) / a second low index layer (0043, 0071, 0091) but a layer of TiO2 (first high index layer) can be placed under the low index adhesion layer (0036) meeting the requirements of claim 6.
5. Claim(s) 10-11, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagen (USpub20200384739) and either one of Padiyah (USPub20080160321) or Kobayashi (WO2018225860, rejection using corresponding English document USPN11,518,147) as applied to claim 1 and 9 above in view of WO2013104439 (rejection based on corresponding English document USPub2014319116).
Regarding claims 10-11, 15 and 16: As Hagen suggests that their IR reflective coating can be that according to those disclosed in WO2013104439 (0025), it would have been obvious to one having ordinary skill at the time of invention to include the coatings of ‘439 as the IR reflective coating.
Note that the coatings of ‘439 include IR reflective layers embedding between dielectric layers wherein each dielectric layer comprises several layers as required by claim 10 of varying composition of oxides as required by claim 15 and 16 and includes a topcoat as required by claim 11.
6. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagen (USpub20200384739) and either one of Padiyah (USPub20080160321) or Kobayashi (WO2018225860, rejection using corresponding English document USPN11,518,147) as applied to claim 1 in view of USPub20100190001.
Regarding claim 12: Hagen does teach their panes being soda lime but just do not explicitly mention them being clear. However, Hagen does not appear to place limits on their glass and instead, only generally teaches a composite pane comprising outer and inner panes used in automobiles.
Given that ‘001, who similarly teaches a composite pane comprising outer and inner panes used in automobiles, suggests that such panes can be made of clear soda lime glass as desired (See entire document), it would have been obvious to one having ordinary skill at the time of invention to modify Hagen to include their soda lime glass panes being clear as desired.
Response to Arguments
Applicant’s arguments filed July 16, 2026 regarding Padiyath have been considered but are moot in view of new grounds of rejection making the present Office Action Non-Final.
However, the Examiner would like to respond to Applicants’ argument. While Applicants argue that the mere mention of Butvar in Padiyath does not mean it inherently discloses a recycled interlayer as Butvar was available in both recycled and non-recycled forms at the time of filing, the Examiner notes that even if it is not inherent, it would have at the very least been rendered obvious.
Specifically, as discussed in the Office Action, Padiyath teaches their interlayer being polyvinyl butyral such as that under the trade name BUTVAR.RTM resin (0032).
While the Examiner agrees that Padiyath may not explicitly mention recycled content in the resin, initially note that BUTVAR is the same resin used by Applicants (see Applicants’ publication 0059). Additionally, BUTVAR resin, based on Applicants’ own admittance (see last two lines of page 6 of Applicants’ remarks filed July 16, 2026), was available in both recycled and non-recycled forms at the time of the present Application’s filing, and one having ordinary skill would have been justified and found it obvious when presented with the two options, to use either option as desired.
Even further, the Examiner notes for the record that it is readily well known to use recycled materials for ecological reasons (note this is a logical fact) and one skilled in the art would have clearly recognized selection of the recycled form out of the two BUTVAR options to be an obvious and desirable choice as recycled forms are better for the economy, etc.
Applicant's arguments filed July 16, 2016 regarding Hagen in view of Padiyath or Kobayashi have been fully considered but they are not persuasive.
Applicants initially argue that Hagen in view of Padiyath would not render obvious the claimed invention for the same reasons argued regarding Padiyath above. This is not persuasive for the same reasons already mentioned above.
Applicants argue that Hagen in view of Kobayashi would not render obvious the claimed invention because the citations in Kobayshi’s specification do not provide any explanation as to why the recycled materials are economical and in fact, states that a film having between 0.1-100% recycled material is “more excellent” in some unknown way than some unknown comparison. Applicants argue that such a conclusionary statement would not motivate a person skilled in the art to selected recycled interlayer based on Kobayashi.
This is not persuasive. The Examiner initially provides the following except from the rejection in the Office Action.
“Hagen does not does not place limits on their PVB material and instead, only generally teach it being that of an interlayer for laminated glass used in vehicles.
As Kobayashi, who similarly teaches that an interlayer for laminated glass, can be made to be 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material as it is excellent in ecology and economic performance (see Col. 22, lines 45-50, 62-67, Col. 23, lines 45-67- Col. 24, lines 1-18, and Examples), it would have been obvious to one having ordinary skill at the time of invention to modify Hagen to include their interlayer film layer being that of 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material for its excellence in ecology and economic performance.”
While Applicants argue that Kobayashi does not provide any explanation as to why the recycled materials are economical and Kobayashi’s conclusionary statement would not motivate one skilled in the art to use recycled materials is not persuasive. Initially, note that Kobayashi does not have to explicitly provide a long explanation as to why the recycled materials are economical as this is merely understood. Specifically, note that it is a logical fact and readily well known to use recycled materials for ecological reasons and contrary to Applicants argument that one skilled in the art would not have been motivated, note that one skilled in the art would have clearly found it obvious to use such materials when the situation calls for it as recycled materials are better for the environment, etc.
Further, while Applicants argue that Kobayashi teaches their film having between 0.1-100% recycled material is “more excellent” in some unknown way than some unknown comparison, this is not persuasive. Initially, as provided in the except from the rejection above, as Kobayashi clearly teaches 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material being excellent in ecology and economic performance, it would have been obvious to one having ordinary skill at the time of invention to modify Hagen to include their interlayer film layer being that of 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material for its excellence in ecology and economic performance.
While Applicants appear to be arguing that Kobayashi’s specification allows for a range of 0.1-100%, note that simply because a broadly disclosed range may be large is irrelevant if the content as claimed is still rendered obvious. In the instant case, while Kobayashi’s broad disclosure may allow for a broad range, again as discussed above, Kobayashi clearly teaches 10% or more, at least 20% at least 60% or even 100% recycled interlayer PVB material being excellent in ecology and economic performance.
Further, while Applicants argue that Kobayashi’s specification is merely concluding that the inclusion of recycled material is “more excellent” in some unknown way than some unknown comparison, note that Kobayashi does not have to provide any known comparisons nor do they need to explicitly describe in what way recycled material is more excellent in comparison to another material as this is all merely understood. Specifically, it is a logical fact and readily well known that recycled materials are better for ecological reasons compared to non-recycled materials and not only is Kobayashi clearly suggesting to one skilled in the art that inclusion of such materials are excellent in ecology, economic performance, etc., but it would have been obvious to use such materials when the situation calls for it as recycled materials are better for the environment, etc. compared to its non-recycled counterparts.
Applicants argue that as none of Kobayashi’s examples identify a recycled material percentage, one of ordinary skill would not know from the Examples the percentage that may be acceptable or any alleged economic advantages.
This is not persuasive. Initially, regardless of whether or not the Examples identify percentage is irrelevant. Specifically, note that it has been held by the courts that a reference is not limited by their Examples but instead by what it teaches as a whole. In the instant case, as discussed above, Kobayashi as a whole does teach recycled contents meeting that claimed.
Applicants argue that that while it was certainly known at a general level that recycled material could be environmentally beneficial, this ignores the fact that previously known interlayers were also known to have adhesion issues when used on glass as well as inconsistent quality and safety characteristics and one skilled in the art would have been hesitant to use interlayers containing at least 10% recycled material in a glazing as claimed even recognizing that they could have some ecological benefits.
This is not persuasive. Note that regardless of whether or not previously known interlayers may or may not have been known to have issues which may cause one to hesitate to include recycled materials in no way means that recycled materials cannot be used, the inclusion could not be done nor that it would not have still been obvious if desired when situations call for it. For instance, and not admitting to the accuracy of any of Applicants’ argument regarding known issues but simply for the sake of arguendo, even if one skilled in the art was ‘hesitant’ due to the possibility of reduced adhesion, inconsistent quality, etc., in situations where one had a greater desire to select a material that was better for the environment more than a desire for having a film with high adhesion, high quality, etc., it would have been obvious to one skilled in the art to select such materials as desired for ecological benefits.
Additionally, and simply to note for the record, given that Kobayashi is clearly suggesting that at least 10% recycled materials can be included for ecological benefits and there is nowhere in Hagen or Kobayashi that would explicitly teach away from such inclusion (i.e. the films would fall apart, not adhere at all, etc.) or suggest that such inclusion cannot be done at all, there is simply nothing in the references to lead one skilled in the art away from including recycled materials in situations that call for is for its ecological benefits.
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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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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