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
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/22/2026.
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.
Claim(s) 1, 16, 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pasquarelli, US 2023/0118480 A1.
Regarding claim 1, Pasquarelli discloses “A transparent roof panel assembly for a vehicle roof (10, Fig. 1), the transparent roof panel assembly comprising: a panel (12, 14, Fig. 1-2, Fig. 5) having a transparent area, the panel being configured to be arranged over an opening in the vehicle roof to allow visible light to pass through the transparent area between an exterior of the vehicle roof and an interior of the vehicle roof,
at least one light source (62, Fig. 5-9) arranged to provide light in the panel, and an in-coupling element (28, Fig. 9) to in-couple light into the panel from an interior side of the panel, the in-coupling element being attached to the interior side of the panel and redirecting light from the at least one light source into the panel (seen in Fig. 9), wherein the in-coupling element is made at least partly from optical adhesive (¶ [0021]) which is directly moulded to the interior side of the panel (seen in Fig. 9, the in-coupling element is on inner pane 18), the in-coupling element being bounded at least on its light-entering side by a mould for the optical adhesive at least during moulding of the in-coupling element (¶ [0017] since the input coupling element 28 is formed by injection molding, the moulding was present at least at one portion during the injection moulding forming process; additionally, the limitation “the in-coupling element being bounded at least on its light-entering side by a mould for the optical adhesive at least during moulding of the in-coupling element” has been considered but not given any patentable weight. “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, 227 USPQ 964, 966 (Federal Circuit 1985)..”
Regarding claim 16, Pasquarelli discloses the invention of claim 1, as cited above. The limitation “a retractable tool of non-sticking material forms the mould for the in-coupling element during moulding of the optical adhesive” has been considered but not given any patentable weight. “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, 227 USPQ 964, 966 (Federal Circuit 1985)..”
Regarding claim 17, Pasquarelli discloses the invention of claim 1, as cited above, and further discloses “the light source is at least partly moulded within the in-coupling element (seen in Fig. 9, ¶ [0072] “Input coupling element 28, whose input coupling portion 102 has a triangular or wedge-shaped cross section, is integrally provided with an accommodating portion 104, which accommodates an LED bar 62”; ¶ [0054] “a bar-shaped input coupling element 28, which extends across the length of associated illuminator 22 and has a wedge-shaped or triangular cross section in the case at hand”).”
Allowable Subject Matter
Claim 2-15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 recites, inter alia, “A transparent roof panel assembly for a vehicle roof, the transparent roof panel assembly comprising: a panel having a transparent area, the panel being configured to be arranged over an opening in the vehicle roof to allow visible light to pass through the transparent area between an exterior of the vehicle roof and an interior of the vehicle roof, at least one light source arranged to provide light in the panel, and an in-coupling element to in-couple light into the panel from an interior side of the panel,the in-coupling element being attached to the interior side of the panel and redirecting light from the at least one light source into the panel, wherein the in-coupling element is made at least partly from optical adhesive which is directly moulded to the interior side of the panel, the in-coupling element being bounded at least on its light-entering side by a mould for the optical adhesive at least during moulding of the in-coupling element” and “the mould is permanent and forms at least the light-entering side of the in-coupling element.”
The references of record do not teach or suggest the aforementioned limitations, nor would it be obvious to modify those references to include such limitations.
Prior art reference Pasquarelli does not disclose a mould that is both bounding at least on the light-entering side of the in-coupling element during the moulding of the in-coupling element and permanent and forms at least the light-entering side of the in-coupling element. As the mould is a permanent structure and not only employed during the production of the product, the mould is no longer only a product-by-process limitation.
Claims 3-15 are allowed due to their dependence on claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pasquarelli et al., US 2025/0222861 A1 discloses a vehicle pane with lighting device and light guide
Da Bie et al., US 12233778 B2 discloses a transparent roof panel assembly with a light housing and in-coupling element.
Thannheimer et al., US 2018/0001751 A1 discloses a transparent roof panel assembly with a light housing and in-coupling element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL CHIANG whose telephone number is (571)270-3811. The examiner can normally be reached M to F, 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James R Greece can be reached at 571-272-3711. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL CHIANG/Patent Examiner, Art Unit 2875
/JAMES R GREECE/Supervisory Patent Examiner, Art Unit 2875
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