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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the "applying comprises application by extrusion, wherein a thickness of the laminant on a first side of the two opposite sides is at least 1.25 times a thickness of the laminant on a second side of the two opposite sides, the two opposite sides are chosen such that, in the production of a composite glass using the laminant, the holographic material is in the neutral fiber of the composite glass, wherein the production comprises a coextrusion, and further comprising exposing a hologram into the photosensitive material" must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show "The thickness of the laminant 22 in fig. 2A or the thicknesses of laminants 22, 25 in fig. 2B that are applied to the hologram film 21 may be guided by the intended curvature of the glass panes 24, 26. The hologram film 21 may especially have an already exposed hologram. The distortions to which the hologram film 21 is subject in the autoclave process are then minimal if the hologram film is present in what is called the neutral fiber of the bent layer composite. The neutral fiber in a curved body is present where the body material - in this case preferably the hologram film - is neither compressed nor stretched on bending." (para. [0045 of the as-filed specification) as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-19 are objected to because of the following informalities:
With respect to Claims 1-3, 5-7, 9-10, 13, and 17-18, the recitation “laminant” appears to contain a misspelling error (correct spelling being e.g., “laminate”).
Claims 1, 14, and 18-19 utilize block paragraphs to separate the claim limitations. “Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).” See MPEP § 608.01(m).
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: the recitation “laminant” appears to contain a misspelling error (correct spelling being e.g., “laminate”).
Appropriate correction is required.
Claim Interpretation - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) are: “method as claimed in claim 3, wherein the applying comprises application by extrusion” in Claim 4, “wherein thicknesses of the laminant on the two opposite sides are chosen such that, in the production of a composite glass using the laminant” in Claim 7 and similarly in Claims 13 and 17, “introducing a photosensitive material into the laminant” in Claim 9, “producing a multilayer system composed of laminant and photosensitive material” in Claim 10, “wherein the production comprises a coextrusion” in Claim 11, “further comprising exposing a hologram into the photosensitive material” in Claim 12, and “wherein the lamination component is produced by: providing a laminant, and bonding the laminant to a holographic material” in Claim 19.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(d) & 112(b)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 16-17 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to Claim 16, the claim limitation “method as claimed in claim 14, wherein the at least one transparent sheet comprises” recites claim elements that are not mentioned in Claim 14, for “at least one transparent sheet” is first mentioned in Claim 15. With respect to Claim 17, the claim limitation “method as claimed in claim 14, wherein the hologram component is produced such that, in the production of a composite glass using the laminant, the hologram film is in the neutral fiber of the composite glass” recites claim elements that are not mentioned in Claim 14. Claim 14 does not recite a “laminant” nor a neutral fiber. Similarly, and with respect to Claim 19, the claim limitation “lamination component as claimed in claim 15, wherein the lamination component is produced by” recites a lamination component that is not claimed in Claim 15. Thus, Claims 16-17 and 19 fail to further limit the subject matter and fail to include all the limitation of Claims 14 and 15.
Since the scope of the claims cannot be ascertained, Claims 16-17 and 19 are also 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, regards as the invention.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(b)
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 1-19 are 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.
With respect to Claims 1-19, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011), Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005).
In the current instance, "method of producing a lamination component for bonding of two glass panes comprising: providing a laminant, and bonding the laminant to a holographic material" in Claim 1 and “method for producing a hologram component comprising: providing a hologram film, and bonding the hologram film to a transparent stiffening material” in Claim 14, recite methods of using the apparatus within method/process claim limitations. It is unclear whether the claims are directed to a method, the resulting article, or both. A person having ordinary skill in the art cannot reasonably ascertain what acts or articles constitute infringement, for “a claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process.” Thus, it is unclear whether infringement occurs when one creates a system that allows the claimed production process to be performed, or whether infringement occurs when the claimed production process is actually performed. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) & MPEP § 2173(p).
With respect to Claims 7, 13, and 17, and notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) See MPEP §2173.05(g).
In the instant case, the claim limitation(s) (e.g., “wherein the lamination component is produced such that, in the production of a composite glass using the laminant, the holographic material is in the neutral fiber of the composite glass” in Claim 13) depend upon a manufactured article and conditional limitations that are not defined, so it is unclear whether these limitations are merely intended use and desired results.
Examiner reminds the applicant that the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met, and thus, “wherein the lamination component is produced such that, in the production of a composite glass using the laminant…” is not a required step and is merely an optional limitation since the condition(s) precedent is not met. See MPEP § 2111.04 (II). Furthermore, attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: “[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon” was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Claim 16 recites the limitation “the at least one transparent sheet.” There is insufficient antecedent basis for this limitation in the claim, for “at least one transparent sheet” is not previously recited. Claims 7, 13, and 17 recite the limitation “the neutral fiber.” There is insufficient antecedent basis for this limitation in the claim(s), for “a neutral fiber” is never recited. Claim 17 recites the limitation “the laminant.” There is insufficient antecedent basis for this limitation in the claim, for “a laminant” is never recited. Claim 19 recites the limitation “the lamination component.” There is insufficient antecedent basis for this limitation in the claim, for “a lamination component” is never recited.
For the prosecution on merits, examiner interprets the claimed subject matter described above as introducing optional elements, optional structural limitations, optional expressions, and optional functionality within a method of producing a lamination component, method for producing a hologram component, and a lamination component.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed. If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
Proper correction is required to ensure accuracy and consistency in the claims, for the language is so awkward that it renders the claims nearly incomprehensible. The primary purpose of the requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. See MPEP § 2173.
Claim Rejections - 35 USC § 102
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.
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 1-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gomer et al. WO 2022053403 A1 (see machine translation; herein after "Gomer").
With respect to Claim 1, Gomer discloses a method of producing a lamination component for bonding of two glass panes (figs. 1, 5-6) comprising:
providing a laminant (first disc 1 and second disc 2 laminated together via thermoplastic intermediate layer 3 to form composite disc 100; [0018]) and
bonding the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]) to a holographic material (hologram element 5; [0048]).
Examiner notes that “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). See MPEP 2113. Furthermore, claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
With respect to Claim 2, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the laminant (lamination via thermoplastic intermediate layer 3; [0018]) comprises polyvinylbutyral, ethylene-vinyl acetate or a copolymer thereof (thermoplastic intermediate layer 3 comprised of either polyvinyl butyral (PVB), ethylene vinyl acetate (EVA), polyurethane (PU) or copolymers or derivatives thereof; [0058]).
With respect to Claim 3, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the holographic material (hologram element 5; [0048]) comprises a hologram film (hologram, holographic material/medium in which the hologram is contained; [0021], [0048]) and wherein the providing of the laminant (lamination via thermoplastic intermediate layer 3; [0018]) and the bonding of the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]) to the holographic material (hologram element 5; [0048]) comprises applying the laminant (lamination via thermoplastic intermediate layer 3; [0018]) to at least one side (thermoplastic intermediate layer 3 has protrusion on all sides over hologram element 5, hologram element 5 is smaller in area than thermoplastic intermediate layer 3 and is surrounded on all sides by intermediate layer 3; [0048]) of the hologram film (hologram, holographic material/medium in which the hologram is contained; [0021], [0048]).
With respect to Claim 4, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 3, wherein the applying comprises application by extrusion (as seen in fig. 6 steps (b)-(d)).
With respect to Claim 5, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 3, wherein the laminant (lamination via thermoplastic intermediate layer 3; [0018]) is applied to two opposite sides (thermoplastic intermediate layer 3 has protrusion on all sides over hologram element 5, hologram element 5 is smaller in area than thermoplastic intermediate layer 3 and is surrounded on all sides by intermediate layer 3; [0048]; fig. 1) of the hologram film (hologram, holographic material/medium in which the hologram is contained; [0021], [0048])
With respect to Claim 6, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 5, wherein a thickness of the laminant (lamination via thermoplastic intermediate layer 3; [0018]) on a first side of the two opposite sides (II inner surface of second disc 2 side of thermoplastic intermediate layer 3; fig. 1) is at least 1.25 times a thickness (thickness of the thermoplastic intermediate layer 3 is between 30 μm and 1500 μm, hologram element 5 has a thickness of 5 μm to 500 μm, II inner surface of second disc 2 thickness of thermoplastic intermediate layer 3 being at least 1.25 times a thickness greater than no thickness on III outer surface of first disc 1 side of thermoplastic intermediate layer 3; [0064-69]; as seen in fig. 1) of the laminant (lamination via thermoplastic intermediate layer 3; [0018]) on a second side of the two opposite sides (III outer surface of first disc 1 side of thermoplastic intermediate layer 3; fig. 1).
With respect to Claim 7, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 5, wherein thicknesses (thickness of the thermoplastic intermediate layer 3 is between 30 μm and 1500 μm, hologram element 5 has a thickness of 5 μm to 500 μm; [0064-69]) of the laminant (lamination via thermoplastic intermediate layer 3; [0018]) on the two opposite sides (II inner surface of second disc 2 side and III outer surface of first disc 1 side of thermoplastic intermediate layer 3; fig. 1) are chosen such that, in the production of a composite glass (first disc 1 and second disc 2 laminated together via thermoplastic intermediate layer 3 to form composite disc 100; [0018]) using the laminant (lamination via thermoplastic intermediate layer 3; [0018]), the holographic material (hologram element 5; [0048]) is in the neutral fiber (first and second discs having a curvature; [0077]) of the composite glass (composite disc 100; [0018]; fig. 5).
With respect to Claim 8, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the holographic material (hologram element 5; [0048]) comprises a hologram (hologram, holographic material/medium in which the hologram is contained; [0021], [0048]).
With respect to Claim 9, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the bonding of the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]) to the holographic material (hologram element 5; [0048]) comprises introducing a photosensitive material (hologram of hologram element 5 can be created in photosensitive layer of photosensitive material 15 that is laminated between two panes of a composite disc 100, hologram element 5 is obtained by applying a photosensitive material 15; [0008], [0021]) into the laminant (lamination via thermoplastic intermediate layer 3; [0018]).
With respect to Claim 10, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the bonding of the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]) to the holographic material (hologram element 5; [0048]) comprises producing a multilayer system (stack of layers is joined using a lamination process, composite disc 100 comprises stacking sequence comprising first disc 1, thermoplastic intermediate layer 3, and second disc 2; [0041-48]) composed of laminant (lamination via thermoplastic intermediate layer 3; [0018]) and photosensitive material (photosensitive material 15; [0021]; fig. 6).
With respect to Claim 11, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 10, wherein the production comprises a coextrusion (as seen in fig. 6 steps (b)-(d)).
With respect to Claim 12, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 9, further comprising exposing (hologram of hologram element 5 recorded in photosensitive material 15 by exposure to a suitable light source; [0021]) a hologram (hologram, holographic material/medium in which the hologram is contained; [0021], [0048]) into the photosensitive material (photosensitive material 15; [0021]; fig. 6).
With respect to Claim 13, Gomer discloses the method (figs. 1, 5-6) as claimed in claim 1, wherein the lamination component (figs. 1, 5-6) is produced such that, in the production of a composite glass (first disc 1 and second disc 2 laminated together via thermoplastic intermediate layer 3 to form composite disc 100; [0018]) using the laminant (lamination via thermoplastic intermediate layer 3; [0018]), the holographic material (hologram element 5; [0048]) is in the neutral fiber (first and second discs having a curvature; [0077]) of the composite glass (composite disc 100; [0018]; fig. 5).
With respect to Claim 14, Gomer discloses a method for producing a hologram component (figs. 3, 6) comprising:
providing a hologram film (hologram, holographic material/medium in which the hologram is contained; within hologram element 5; [0021], [0048]), and
bonding (adhesive layer 10 improves adhesion between hologram element 5 and cover film 11; [0052]) the hologram film (hologram, holographic material/medium in which the hologram is contained; within hologram element 5; [0021], [0048]) to a transparent stiffening material (adhesive layer 10 being an optically clear adhesive (OCA) or a transparent adhesive; [0054]; fig. 3) having a thickness between 0.5 mm and 5 mm (hologram element 5 has a thickness of 5 μm to 500 μm in addition to adhesive layer 10 having thickness of 20 μm to 200 μm, and thus, thickness between 25 μm and 700 μm; [0069]).
Examiner notes that “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). See MPEP 2113. Furthermore, claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
With respect to Claim 15, Gomer discloses the method (figs. 3, 6) as claimed in claim 14, wherein the transparent stiffening material (adhesive layer 10 being an optically clear adhesive (OCA) or a transparent adhesive; [0054]; fig. 3) comprises at least one transparent sheet ([0054]; fig. 3), wherein the hologram film (hologram, holographic material/medium in which the hologram is contained; within hologram element 5; [0021], [0048]) is mounted on the transparent sheet ([0054]; fig. 3) with an adhesive (layer of adhesive is between the cover film and the hologram element 5; [0052]).
With respect to Claim 17, Gomer discloses the method (figs. 3, 6) as claimed in claim 14, wherein the hologram component (figs. 3, 6) is produced such that, in the production of a composite glass (first disc 1 and second disc 2 laminated together via thermoplastic intermediate layer 3 to form composite disc 100; [0018]) using the laminant (lamination via thermoplastic intermediate layer 3; [0018]), the hologram film (hologram, holographic material/medium in which the hologram is contained; within hologram element 5; [0021], [0048]) is in the neutral fiber (first and second discs having a curvature; [0077]) of the composite glass (composite disc 100; [0018]; fig. 5).
With respect to Claim 18, Gomer discloses a lamination component for bonding of two glass panes (figs. 1, 5-6), comprising:
a laminant (lamination via thermoplastic intermediate layer 3; [0018]), and
a holographic material (hologram element 5; [0048]) bonded to the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]).
Examiner notes that “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). See MPEP 2113. Furthermore, claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
With respect to Claim 19, Gomer discloses the lamination component (figs. 1, 5-6) as claimed in claim 15, wherein the lamination component (figs. 1, 5-6) is produced by:
providing a laminant (lamination via thermoplastic intermediate layer 3; [0018]), and
bonding the laminant (thermoplastic intermediate layer 3 serves to bond first and second panes, hologram element 5 positioned between first disc 1 and thermoplastic intermediate layer 3; [0048]) to a holographic material (hologram element 5; [0048]).
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Gomer et al. WO 2022053403 A1 (see machine translation; herein after "Gomer") in view of Otaki US 20030059565 A1 (herein after "Otaki").
With respect to Claim 16, Gomer discloses the method (figs. 3, 6) as claimed in claim 14, the at least one transparent sheet ([0054]; fig. 3), and the hologram film (hologram, holographic material/medium in which the hologram is contained; within hologram element 5; [0021], [0048]).
Gomer does not appear to explicitly teach the following limitation(s): wherein the at least one transparent sheet comprises a first transparent sheet and a second transparent sheet, wherein the hologram film is disposed between the first transparent sheet and the second transparent sheet.
However, in a related field of endeavor, Otaki discloses hologram laminates (fig. 10) wherein a transparent sheet (205 comprised of 205a, 205b; fig. 10) comprises a first transparent sheet (first transparent pressure-sensitive adhesive layer 205a; [0325]) and a second transparent sheet (second transparent pressure-sensitive adhesive layer 205b; [0325]), wherein a hologram film (volume hologram layer 201; [0325]) is disposed between (as seen in fig. 10) the first transparent sheet (first transparent pressure-sensitive adhesive layer 205a; [0325]) and the second transparent sheet (second transparent pressure-sensitive adhesive layer 205b; [0325]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method for producing a hologram component of Gomez to include the technical feature of disposing a hologram film between two transparent sheets, for the purpose of providing a hologram laminate having high forgery preventive properties and producing high adhesive strength of transparent pressure-sensitive adhesive layers within a hologram laminate, as taught by Otaki ([0019], [0057], [0312]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Pinsker DE 102020117992 A1 (see machine translation) discloses a method for integrating a hologram between two substrate panes of a composite pane substantially similar to that of the claimed invention.
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/K MUHAMMAD/Examiner, Art Unit 2872 05 June 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
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