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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 and 11 of copending Application No. 18/729,061 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 2 of the ‘061 application both recite an interlayer film for laminated glass, comprising a thermoplastic resin and a filler (i.e. the ‘061 application recites a brightener) having visible light reflection performance (i.e. the brightener of the ‘061 application has a visible light reflection performance since, being a brightener, it affects the visual effect which is light reflected to a viewer’s eyes).
Instant claim 2 and claim 3 of the ‘061 application both recite wherein the filler (i.e. the brightener as recited in the ‘061 application) comprises two or more metal oxides.
Instant claim 3 and claim 4 of the ‘061 application both recite wherein the two or more metal oxides have refractive indexes different from each other.
Instant claim 6 and claim 5 of the ‘061 application both recite wherein the filler (i.e. the brightener as recited in the ‘061 application) has a multilayer structure.
Instant claim 13 and claim 11 of the ‘061 application both recite substantially identical limitations. It is noted that the dependency of claim 11 of the ‘061 application is on claim 1 instead of on claim 2, but this is considered an obvious variation of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6, 9, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamada et al. (US 2013/0260139).
Claim 1: Kamada teaches a heat ray shielding material that includes a heat ray shielding layer with flat silver particles and metal oxide particles (i.e. these particles are a filler) (paragraph 0040), wherein the heat ray shielding material can be used for laminated glass (paragraph 0120-0122) with the laminate being sandwiched by glass plates (paragraph 0142) (i.e. the heat ray shielding material is part of an interlayer film for laminate glass). The heat ray shielding layer includes the flat silver particles and metal oxide particles mixed and dispersed in a binder (paragraph 0043). The binder can be any suitable for its purpose such as polyvinyl acetal resins, polyvinyl alcohol resins, polyvinyl chloride resins, polyester resins, polyurethane resins, ethylene-vinyl acetate copolymer, acrylic resins, etc. (paragraph 0100). The heat ray shielding layer can be permanently pressure bonded between glass plates at 130°C (i.e. the resin is a thermoplastic resin as evidenced by pressure bonding at elevated temperature) (paragraph 0142). Kamada teaches that the flat silver particles (i.e. the filler) may be plane-oriented which mainly functions as an infrared reflection type (paragraph 0077) and that, when they are randomly oriented, the heat ray shielding material has an increased absorption rate at a predetermined wavelength such as a long wavelength side of visible light region (paragraph 0081) (i.e. the filler has a visible light reflection performance). Additionally, Kamada teaches silver as having high reflectivity, including visible light (paragraph 0005). It is noted that the claim does not specify an extent of visible light reflection performance, and substantially all materials have some amount of visible light reflection performance (i.e. anywhere in the range of 0-100% reflectance).
Claim 2: Kamada teaches that the flat silver particles may be coated with a material having a high refractive index such as TiOx, BaTiO3, ZnO, SnO2, and NbOx (i.e. a metal oxide) (paragraph 0072) and may have a further shell layer of SiO2 before and/or after the layer of TiOx (paragraph 0074) (i.e. SiO2 is a second metal oxide; i.e. the flat silver particle filler includes two or more metal oxides).
Claim 3 and 5: Kamada teaches that the flat silver particles (i.e. filler) may be coated with a material having a high refractive index such as TiOx (i.e. titanium oxide), ZnO (i.e. zinc oxide), and NbOx (i.e. niobium oxide), etc. (paragraph 0072) and may have a further shell layer of SiO2 before and/or after the layer of TiOx (paragraph 0074) (i.e. TiOx and SiO2 are two or more metal oxides; since TiOx and SiO2 are different metal oxides, they have refractive indexes different from each other).
Claim 6: Kamada teaches that the flat silver particles (i.e. filler) may be coated with a material having a high refractive index such as TiOx (i.e. titanium oxide), etc. (paragraph 0072) and may have a further shell layer of SiO2 before and/or after the layer of TiOx (paragraph 0074) (i.e. TiOx and SiO2 are different metal oxides forming a multilayer structured filler).
Claim 9: Kamada teaches the flat silver particles (i.e. filler) are formed of two main flat surfaces and preferably may be substantially hexagonal shape or substantially disc shape (i.e. a flat plate shape) (paragraph 0056).
Claim 12: Kamada teaches that the haze of the heat ray shielding material is preferably 20% or less, and particularly preferably 3% or less, because a haze exceeding 20% used for a glass for automobiles and buildings is not preferable (paragraph 0119) (i.e. the laminated glass as outlined above should have a haze of 20% or less). These ranges are substantially identical or lie inside of the instantly claimed range. See MPEP § 2131.03.
Claim 13: Kamada teaches the heat ray shielding material can be used for laminated glass (paragraph 0120-0122) with the laminate being sandwiched by glass plates (paragraph 0142) (i.e. the heat ray shielding material is part of an interlayer film for laminate glass, having a first glass member and second glass member with the interlayer disposed therebetween).
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.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kamada et al. (US 2013/0260139) as applied to claims 1 and 3 above.
Claim 4: The teachings of Kamada regarding claim 3 are outlined above. Kamada teaches that the flat silver particles (i.e. filler) may be coated with a material having a high refractive index such as TiOx (i.e. titanium oxide), etc. (paragraph 0072) and may have a further shell layer of SiO2 before and/or after the layer of TiOx (paragraph 0074) (i.e. TiOx and SiO2 are different metal oxides and therefore have refractive indexes different from each other). Kamada does not teach the specific refractive index of these metal oxides. However, refractive index is a material property and titanium dioxide has a known refractive index of about 2.5 to about 2.87 and silicon dioxide has a known refractive index of about 1.4 to about 1.55 (both found online; see search notes). The difference of refractive index is about 0.95-1.47, which overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not reciting a singular example of the instantly claimed interlayer film, it would have been obvious to one of ordinary skill in the art before the effective filing date as the difference of refractive index of the materials taught by Kamada overlaps the instantly claimed range, which is considered to be prima facie obvious, and one would have had a reasonable expectation of success.
Claim 8: The teachings of Kamada regarding claim 1 are outlined above. Kamada teaches a heat ray shielding material that can be used for laminated glass (paragraph 0120-0122) with the laminate being sandwiched by glass plates (paragraph 0142). The heat ray shielding layer includes the flat silver particles and metal oxide particles mixed and dispersed in a binder (paragraph 0043). The binder can be any suitable for its purpose such as polyvinyl acetal resins, polyvinyl alcohol resins, polyvinyl chloride resins, polyester resins, polyurethane resins, ethylene-vinyl acetate copolymer, acrylic resins, etc. (paragraph 0100). The heat ray shielding layer can be permanently pressure bonded between glass plates at 130°C (i.e. the resin is a thermoplastic resin as evidenced by pressure bonding at elevated temperature) (paragraph 0142). A thickness of the heat ray shielding layer is preferably 0.01-10 µm (paragraphs 0049-0050). Using polyvinyl butyral as a particularly preferred polyvinyl acetal resin (which has a density of about 1.1 g/cm3 as a known material property), the mass per area attributed to the binder is about 0.011-11 g/m2 (i.e. calculated as the thickness times the density). Kamada teaches the content of the flat silver particles is about 0.01-1.00 g/m2, more preferably 0.02-0.2 g/m2 (paragraph 0053) and the content of the metal oxide particles is about 0.1-20 g/m2, more preferably 1.0-4.0 g/m2 (paragraph 0097). The more preferable content of flat silver particles (i.e. filler) with respect to the heat ray shielding layer (i.e. substantially being the binder, metal oxide particles, and flat silver particles) is estimated to be about 0.13% to about 16.5% (calculated as a minimum of 0.02 divided by 4+0.02+11 to a maximum of 0.2 divided by 1+0.2+0.011). This range for the content of filler overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not reciting a singular example of the instantly claimed interlayer film, it would have been obvious to one of ordinary skill in the art before the effective filing date as the content of flat silver particles (i.e. filler) taught by Kamada overlaps the instantly claimed range, which is considered to be prima facie obvious, and one would have had a reasonable expectation of success.
Claim 10: The teachings of Kamada regarding claim 1 are outlined above. Kamada teaches a heat ray shielding material that can be used for laminated glass (paragraph 0120-0122) with the laminate being sandwiched by glass plates (paragraph 0142) and having a visible light transmission of 65% or greater (paragraph 0116) and haze of 20% or less, more preferably of 10% or less or most preferably 3% or less (paragraph 0119). Kamada teaches that an average particle diameter of the flat silver particles (i.e. filler) is not particularly restricted and may be selected according to purpose, but is preferably 40 nm to 400 nm because transparency can be impaired due to increase haze when it exceeds 400 nm (paragraph 0060). However, even the largest flat silver particles with an average circle-equivalent diameter of 340 nm (Production Example F in Table 1) had a haze of only 1.4% and 1.7% (Examples 3 and 5 in Table 2) (i.e. far less than the maximum 20% haze).
While not teaching a singular example of the instantly claimed interlayer film having a filler of the recited average particle diameter, it would be within the level of ordinary skill in the art to perform routine experimentation of varying particle size while staying within the required transmission and haze values, which would allow for larger particle sizes since the haze values of the examples were all significantly lower than the maximum allowed haze, and one would have had a reasonable expectation of success.
Claim 11: The teachings of Kamada regarding claim 1 are outlined above. Kamada teaches a heat ray shielding material that can be used for laminated glass (paragraph 0120-0122) with the laminate being sandwiched by glass plates (paragraph 0142). Kamada does not teach the reflectance directly. However, Kamada teaches a visible light transmission of 65% or greater (paragraph 0116) and haze more preferably of 10% or less or most preferably 3% or less (paragraph 0119). Since all light is either transmitted, reflected, absorbed or scattered (i.e. these would sum to 100%), then about 25% of the visible light is reflected or absorbed (i.e. up to 25% is reflected). This results in a reflectance to haze ratio of about 2.5 (calculated using 65% transmission and 10% haze) to about 10.7 (calculated using 65% transmission and 3% haze, which overlaps the instantly claimed ratio, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not teaching a singular example of the instantly claimed interlayer film, it would have been obvious to one of ordinary skill in the art before the effective filing date for the laminated glass to have the instantly claimed visible light reflectance to haze ratio based on the preferred light properties taught by Kamada, and one would have had a reasonable expectation of success.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kamada et al. (US 2013/0260139) as applied to claim 6 above, and further in view of Metcalf et al. (EP 0595471, attached).
Claim 7: The teachings of Kamada regarding claim 6 are outlined above. Kamada teaches that the flat silver particles (i.e. filler) may be coated with a material having a high refractive index such as TiOx (i.e. titanium oxide), etc. (paragraph 0072) and may have a further shell layer of SiO2 before and/or after the layer of TiOx (paragraph 0074) (i.e. TiOx and SiO2 are different metal oxides forming a multilayer structured filler). However, Kamada does not teach a thickness of these layered metal oxides.
In a related field of endeavor, Metcalf teaches a process for coating inorganic particles with a coating of dense amorphous silica (i.e. silicon dioxide, SiO2) (p. 2, l. 1-2), particularly useful for coating particulate titanium dioxide (i.e. TiO2) (p. 2, l. 22-34). The amount of dense amorphous silica deposited will depend on the nature and intended use for the inorganic particles, and is typically at least 2 wt% and up to 12% of SiO2 with respect to TiO2 (p. 3, l. 19-22). A rough estimate of the resulting layer thickness is approximately 1:7 to 1:49 (i.e. calculated as 2:98 and 12:88 from the range of 2% to 12%; using weight percent as a rough estimate of layer thickness because silicon is not considerably different in molar mass from titanium), which overlaps the instantly claimed range. The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
As Kamada and Metcalf both teach a layered particle of SiO2 on titanium oxide, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the layered particles of Kamada to have the amount of SiO2 be about 2-12 wt% with respect to the amount of titanium oxide (i.e. a layer thickness of approximately 1:7 to 1:98 as a rough estimate as outlined above) as taught by Metcalf because this is considered a simple combination of prior art elements according to known methods to yield predictable results (i.e. modifying the layered particles of Kamada with undisclosed ratio of the layered materials to have the known ratio of the same materials taught by Metcalf), and one would have had a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Taima (US 2014/0355107) teaches an infrared shielding film with metal oxide particles, such as titanium oxide particles with a surface coating of silica, alumina, zirconia, etc.
Ii et al. (US 2014/0377567) teaches an interlayer film for laminated glass wherein an ultraviolet ray shielding agent may be metal oxide based that may has a surface coating of an insulating metal oxide (paragraph 0101-0102).
Taka (US 2017/0129220) teaches a resin film for laminated glass that may have core-shell particles as metal oxide particles, such as titanium oxide particles coated with a silicon-containing hydrated oxide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784