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 .
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 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.
DETAILED ACTION
This is an AIA application filed August 16, 2024.
The earliest effective filing date of this AIA application is seen as February 16, 2022, the date of the earliest priority application (United States provisional patent application serial number 63/310,934) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The same is similarly true for the following United States provisional, non-provisional, or international PCT patent application(s):
PCT international application number PCT/IB2023/051425 filed February 16, 2023.
The effective filing date of this AIA application is seen as August 16, 2024, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The present application is also related to the applications giving rise to the following patent publication(s) (some redundancy may be present):
Office
Application
App. Date
Pub. #
Pub. Date
EP
23714092
02/16/2023
EP 4479680 A1
12/25/2024
IB
PCT/IB2023/051425
02/16/2023
WO 2023156939 A1
08/24/2023
The claims originally filed August 16, 2024 by preliminary amendment are entered, currently outstanding, and subject to examination.
This action is in response to the original filing of the same date.
The current status and history of the claims are summarized below:
Last Amendment/Response
Previously
Amended:
1 & 4-14
N/A
Cancelled:
none
N/A
Withdrawn:
none
N/A
Added:
none
N/A
Claims 1-14 are currently pending and outstanding.
Regarding the preliminary amendment:
Claims 1 and 4-14 were amended.
No claims were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1-14 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
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.
Claims 1-3, 5-11, 13, and 14 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20230273363 of Nakamura et al. (Nakamura, corresponding to WO 2022030544 A1).
With respect to claim 1, Nakamura discloses an automative glazing for improved light injection and total internal reflection (see “preamble context” below), comprising (¶¶ 13-27; 216-217; figs. 1E and 1I):
at least one transparent layer (lightguide medium 20 is transparent per claim 33 and ¶ 44, "optically transparent medium") with two major surfaces and an edge (per the Figs., upper and lower surfaces and a side),
wherein the transparent layer has an index of refraction of n3 (seen as a designation for claim purposes with all material having an index of refraction; here PMMA per ¶¶ 114, 229, ~1.49); and
at least one light injection assembly (optical unit 250, ¶ 144) in contact with at least a part of one of the major surfaces of the at least one transparent layer,
the at least one light injection assembly (250) comprises:
a housing ("The unit 250 may further comprise a housing arranged around the element 100 and the emitter 30. The element 100 and the emitter 30 integrated in the unit 250 are optionally encapsulated within the housing.", ¶ 144) with at least one cavity (inherent as to hold the contents therein, generally at 100),
wherein a portion of said at least one cavity opens (per Fig. 1I, at least) to said first transparent layer (20);
an optical filler ("incoupling element 100") having an index of refraction of n2 (designatory), which substantially fills said at least one cavity (per Fig. 1I);
a light emitting means (light source 30) mounted to emit light within said at least one cavity ("rays of optical radiation 31 (light) emitted from the emitter or emitters 30", ¶ 123);
wherein said light (31) emitted into said cavity (~100) is shaped by the cavity (inherent/by necessity) and directed at a specific angle relative to said at least one transparent layer (per Fig. 1I);
wherein the at least one light injection assembly includes a cladding (portion of housing surrounding filler 100) with an index of refraction of n1 (designatory) that is adjacent and optically coupled to the optical filler (per Fig. 1I),
with n1<n2≥n3 (n1 is the cladding, n2 is the optical filler, and n3 is the transparent layer 20; the indices of refraction are generally such that transmission is from the light to the layer 20. According to the angles shown in Fig. 1I, reflection by the cladding to the layer generally requires the cladding to have a lower index of refraction and the target layer 20 to have an index of refraction equal to or greater than filler 100); and
wherein said at least one light injection assembly is affixed to the at least one major surface of the at least one transparent layer (per Fig. 1I) and is configured to inject light from the optical filler to the glazing surface at an angle that is less than the critical angle calculated for the interface between the optical filler the at least one transparent layer (per Fig. 1I).
When reading the preamble in the context of the entire claim, the recitation of "automative glazing for improved light injection and total internal reflection" is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02(II).
Hereinafter, this analysis is referred to as “preamble context”.
With respect to claim 2, Nakamura as set forth above discloses the glazing of claim 1, including one that further comprises
an optical clear adhesive ("optically clear adhesive", ¶ 55) wherein:
said optical adhesive optically couples one major surface of the at least one transparent layer with the light injection assembly ¶ 148, "In all configurations (FIGS. 1A-1I), the element 100 and/or the unit 250 may comprise means for a lightguide attachment, such as an adhesion layer."; and
said optical adhesive has an index of refraction the less than or equal to n2 and greater than or equal to n3 (this covers any index of refraction and so it is inherent to the adhesive.).
With respect to claim 3, Nakamura as set forth above discloses the glazing of claim 2, including one wherein
the optical adhesive index of refraction matches the index of refraction of said at least one transparent layer n3.
For the optical adhesive to be optically clear, it must not reflect or be opaque, and so must match the index of the transparent layer to provide transmission, transparency, and clarity/clearness.
With respect to claim 5, Nakamura as set forth above discloses the glazing of claim 1, wherein said cavity has a shape selected from the group comprising:
cylindrical,
spherical,
toroidal,
parabolic,
conical or the combination thereof.
The shapes shown in Nakamura Figs. 1A-1I are seen as provided by combination of such shapes.
With respect to claim 6, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
at least one cavity is equipped with at least one lens.
¶ 122, "In some configurations the emitter 30 is provided with a collimation device, such as a collimation lens.” Such a lens is seen as part of the cavity.
With respect to claim 7, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the light emitting means are individually addressed electrically.
¶ 49, "In embodiment, the at least one emitter device is selected from a group consisting of: a Light Emitting Diode (LED), an Organic Light Emitting Diode (OLED), a laser diode, a LED bar, an OLED strip, a microchip LED strip, and a cold cathode tube."
For single or multiple LED configurations, individual addressing is seen as an inherent option encompassed by the Nakamura reference.
With respect to claim 8, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the light emitting means emit at least two frequencies.
LEDs are not lasers and are seen to have a frequency spread.
With respect to claim 9, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the cladding is a sleeve.
The housing 250 of Fig. 1I is seen as a sleeve.
With respect to claim 10, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the cladding is a coating.
¶ 127, "Additionally or alternatively, the cavities may be provided with a low refractive index coating."
With respect to claim 11, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the housing material serves as the cladding.
Per claim 1, above, the portion of housing surrounding filler 100 is seen as a cladding.
With respect to claim 13, Nakamura as set forth above discloses the glazing of claim 1, including one wherein
the optical filler comprises a material with adhesive properties.
¶ 148, "In all configurations (FIGS. 1A-1I), the element 100 and/or the unit 250 may comprise means for a lightguide attachment, such as an adhesion layer."
With respect to claim 14, Nakamura as set forth above discloses the glazing of claim 1, including one further comprising
a protective element around the assembly for environmental protection.
¶ 60, "Additionally, the element, optionally integrated with a light source, can be packed inside a protecting housing."
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 of this title, 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.
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 and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Nakamura as set forth above.
With respect to claim 4, Nakamura as set forth above discloses the glazing of claim 1, but not one wherein
said cavity comprises a through hole.
Repair/Replacement is seen as being known to the person of ordinary skill in the art before the effective filing date of the claimed invention.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a through hole for the light source along the lines of repair/replacement in a system according to Nakamura as set forth above in order to enable such repair/replacement. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the reference) to yield predictable results (a lighting system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
said cavity comprises a through hole.
With respect to claim 12, Nakamura as set forth above discloses the glazing of claim 1, but not one wherein
the light emitting means is surrounded by the optical filler.
Fig. 1H shows the light emitting means is surrounded by the optical filler.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to surround the light emitting means with the optical filler along the lines of Fig. 1H in a system according to Fig. 1I in order to protect the optical emitter and/or to provide alternative optical operation. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a lighting system) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
the light emitting means is surrounded by the optical filler.
Conclusion
Applicant’s publication US 20250180794 A1 published June 5, 2025 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to illuminated pane glass, automotive glazings, and the like.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
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. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
September 25, 2026
