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
Applicant's election with traverse of Group I Claims 1-11 in the reply filed on 05/19/2026 is acknowledged. The traversal is on the ground(s) that unity of invention does exist between Groups I - III because there is a technical relationship that involves the same special technical feature. It is this technical feature that defines the contribution which each of the groups, taken as a whole, makes over the prior art. This is not found persuasive for the following reason.
Since this application is filed under 35 U.S.C. 371, the Election/Restriction is implemented following the Requirement for Unity of Invention under MPEP 1800. Under PCT Rule 13.2, the unity of invention requirement is considered fulfilled when a technical relationship exists among claimed inventions involving one or more of the same or corresponding special technical feature. PCT Rule 13.2 goes on to define a Special technical feature is those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over a prior art.
In this case, the Examiner has identified the technical feature as a decorative panel comprising: a carrier; b. a glass sheet comprising an internal face and an external face; and c. an adhesion layer positioned between the carrier and the internal face of the glass sheet, the adhesion layer integrally covering the internal face of the glass sheet, wherein a luminous transmittance of the adhesion layer is at least 1. The Examiner also showed that this technical feature is not a special technical feature because it does not make contribution over the prior arts of Gervelmeyer (US 2019/0077337 A1) and Rizzo et al. (US 2017/0087802 A1) as a combination.
Gervelmeyer teaches an exterior trim element 1 comprising a support member 2 and a glass cover part 3, wherein the glass cover part 3 is glued to the support member 2 using a polyurethane glue 5 (Fig. 1 and [0064]-[0066]). Gervelmeyer does not teach the polyurethane glue is transparent. However, Rizzo teaches a polyurethane glue in a multilayer panel, wherein the polyurethane glue is transparent ([0055] and claim 8). With respect to the luminous transmittance of the transparent polyurethane glue, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to select a transparent polyurethane glue with the claimed luminous transmittance value, and the motivation would be to provide light transmittance properties. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Gervelmeyer and Rizzo are analogous are because they are from the same field of endeavor that is the multilayer component art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the transparent polyurethane glue of Rizzo with the invention of Gervelmeyer, and the motivation for combining would be to control the light transmittance property of the exterior trim element 1. See also MPEP 1850 and 1893.03(d). For the above reason, the Requirement for Unity of Invention under PCT Rule 13.2 has been fulfilled.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gervelmeyer (US 2019/0077337 A1) in view of Rizzo et al. (US 2017/0087802 A1).
Claim 1: Gervelmeyer teaches an exterior trim element 1 comprising a support member 2 and a glass cover part 3, wherein the glass cover part 3 is glued to the support member 2 using a polyurethane glue 5 (Fig. 1 and [0064]-[0066]). Gervelmeyer does not teach the polyurethane glue is transparent. However, Rizzo teaches a polyurethane glue in a multilayer panel, wherein the polyurethane glue is transparent ([0055] and claim 8). With respect to the luminous transmittance of the transparent polyurethane glue, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to select a transparent polyurethane glue with the claimed luminous transmittance value, and the motivation would be to provide light transmittance properties. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Gervelmeyer and Rizzo are analogous are because they are from the same field of endeavor that is the multilayer component art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the transparent polyurethane glue of Rizzo with the invention of Gervelmeyer, and the motivation for combining would be to control the light transmittance property of the exterior trim element 1.
Claim 2: Gervelmeyer teaches the exterior trim element 1 further comprises a primer 4 between the glass cover part 3 and the glue 5 (Fig. 1 and [0064]), wherein the primer 4 can be a black primer to mask the support member 2 [0058]. Due to the masking property of the black primer 4, it is interpreted that the black primer 4 is opaque. The black primer 4 meets the claimed layer whose luminous transmittance is below 1%. It is well established that a material with a luminous transmittance below 1% is generally classified as opaque.
Claim 3: Gervelmeyer teaches the support member 2 comprises holes 6 [0066].
Claim 4: Gervelmeyer teaches the exterior trim element 1 further comprises a primer 4 between the glass cover part 3 and the glue 5 (Fig. 1 and [0064]), wherein the primer 4 can be a black primer to mask the support member 2 [0058]. Due to the masking property of the black primer 4, it is interpreted that the black primer 4 is opaque. The black primer 4 meets the claimed layer whose luminous transmittance is below 1%. It is well established that a material with a luminous transmittance below 1% is generally classified as opaque.
Claim 5: Gervelmeyer teaches the exterior trim element 1 further comprises a primer 4 between the glass cover part 3 and the glue 5 (Fig. 1 and [0064]), wherein the primer 4 can be a black primer to mask the support member 2 [0058]. Due to the masking property of the black primer 4, it is interpreted that the black primer 4 is opaque. The black primer 4 meets the claimed layer whose luminous transmittance is below 1%. It is well established that a material with a luminous transmittance below 1% is generally classified as opaque.
Claim 6: The process by which the adhesion layer is formed is not dispositive of the issue of the patentability of the instant article claims.
Claim 7: Gervelmeyer teaches the exterior trim element 1 comprises a second material to achieve additional sealing at the edge of the exterior trim element 1 [0051]. The sealing material also meets the claimed adhesion layer.
Claim 8: Gervelmeyer teaches the glass cover part 3 is chemically tempered [0065].
Claim 9: Gervelmeyer teaches the exterior trim element 1 further comprises a primer 4 between the glass cover part 3 and the glue 5 (Fig. 1 and [0064]). The primer 4 meets the claimed primer.
Claim 10: Gervelmeyer teaches the exterior trim element 1 further comprises a primer 4’ between the glue 5 and support member 2 (Fig. 1 and [0068]). The primer 4’ meets the claimed primer.
Claim 11: Gervelmeyer teaches the glass cover part 3 is processed to be decorative ([0019] and [0075]).
Pertinent Prior Arts
Bennett (US 2013/0140844 A1) and Lambricht et al. (US 2018/0170793 A1).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BS
June 26, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights