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 .
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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4, 7-11, and 15-20 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a polymer interlayer having multiple layers, does not reasonably provide enablement for a polymer interlayer having only one layer. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be "commensurately enabling [regarding the scope of the claims]" Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise, undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-4, 7-11, and 15-20 can be used as claimed and whether claims 1-4, 7-11, and 15-20 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-4, 7-11, and 15-20, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since the specification states that friction is a complex phenomenon influenced by multiple factors (see paragraph 0065) but provides no further guidance for interlayers consisting of a single layer.
(b) There is no direction or guidance presented for fabricating a single layer polymer interlayer having the shrinkage, static coefficient of friction, and damping loss factor required by the claims.
(c) There is an absence of working examples concerning polymer interlayers having a single layer.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-4, 7-11, and 15-20.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) 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.
The term "warm" in claims 1 and 20 is a relative term which renders the claims (as well as claims 2-19 due to their dependency from claim 1) indefinite. The term "warm" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term "warm" renders the temperature of the shrinkage indefinite.
Claim Interpretation
For the purpose of examination, warm shrinkage is taken to be shrinkage after oven treatment at 54 oC for 10 minutes (see paragraph 0067 on page 23 of the specification).
Claim Rejections - 35 USC § 102 / 103
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.
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 1-5 and 15-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kong (US 2018/0029335).
Kong is directed to a resin film for laminated glass used in a vehicle (paragraph 0002). The laminated glass comprises the interlayer film between glass, i.e., rigid, panels (Figure 2 and paragraph 0105). The resin film includes a first resin layer situated between second and third resin layers (Figure 1 and paragraph 0032). The first resin layer is formed from a second resin composition comprising a polyvinyl acetal resin and a plasticizer (paragraph 0033) while the second and third resin layers are formed from a first resin composition comprising a polyvinyl acetal resin and a plasticizer (paragraphs 0071-0072). The laminated glass is formed by known methods (paragraph 0106), such as by sandwiching the first film between glass plates, placing the assembly into a rubber bag, de-airing under vacuum, then compressing in an autoclave (paragraph 0127).
The second and third layers (i.e., the outer layers of the interlayer film) have a maximum coefficient of static friction of 0.90 to 1.41 at about 20 oC (paragraph 0094-0095) to obtain an advantageous effect when manufacturing the laminated glass (paragraphs 0096-0099). While Kong does not report the coefficient of static friction according to ASTM D1894, one of ordinary skill in the art would expect this coefficient of static friction to satisfy the limitations of claims 1-4 since ASTM D1894 is conducted at about 20 oC. Alternatively, it would have been obvious to fabricate the interlayer with a coefficient of static friction satisfying the limitations of these claims since the coefficient is employed by both Kong and the applicants for the purpose of improved manufacturing of the laminate (e.g., see paragraph 0089 bridging pages 28 and 29 of the specification).
Regarding the limitation in claim 1 directed to damping loss factor, while Kong does not report the damping loss factor when measured at 20 oC according to ISO 16940, Kong does teach that transmission loss is a results effective variable that affecting sound insulation (paragraph 0007) and the laminated glass of Kong is designed to have desirable sound insulation performance (paragraph 0009). Since the damping loss factor recited in claim 1 is chosen by the applicant to provide sound insulating properties (e.g., see paragraph 0022 on page 7), one of ordinary skill in the art would expect the interlayer film of Kong to inherently satisfy the limitations of claim 1. Alternatively, it would have required no more than routine experimentation and ordinary skill to optimize the transmission loss of the interlayer film of Kong and one of ordinary skill in the art would expect this to result in an interlayer film satisfying the limitations of claim 1 since the loss transmission would be optimized for improved sound insulation.
Regarding the limitation in claim 1 directed to warm shrinkage, one of ordinary skill in the art would expect this limitation to be inherently met by the interlayer film of Kong since the film is not taught as exhibiting shrinkage and there is no teaching or requirement that procedures, such as relaxing the film prior to assembly, are required. Rather, Kong forms a glazing suitable for use in a vehicle - having no reported edge defects - without undergoing such procedures (e.g., see paragraphs 0127 and 0128). According to paragraph 0027 on page 9 of the applicant's specification, interlayers that shrink too much result in edge defects.
Regarding claim 15, it would have been obvious to one of ordinary skill in the art to form the glass/interlayer/glass assembly by contacting one glass panel with the interlayer before the other since the alternative (i.e., simultaneously contacting the interlayer with both glass panels) would require an unnecessary level of precision, thus and cost. Additionally, since the interlayer is situated between the glass panels, a means for bringing the interlayer into contact with one of the glass panel must be used and any such means reads on a transport device.
Claim Rejections - 35 USC § 103
Claim 7 and 8 are rejected under 35 U.S.C. 103 as obvious over Kong (US 2018/0029335) in view of Compoint (US 2022/0184929).
Kong teaches or suggests all the limitations of claims 7 and 8, as outlined above, except for coloring the interlayer gray and providing it with a %T (i.e., a luminous transmittance measured according to ASTM D1003-13 Procedure B - see paragraph 0015 on page 6 of the specification) of less than about 75%. However, the laminate of Kong is intended to be used as window glass of a road vehicle (paragraph 0003).
Compoint is directed to a laminated glass glazing for use in vehicles (paragraph 0002). The glazing may serve as a car roof having a light transmission of between 8 and 20% (paragraph 0015). The interlayer of the glazing comprises two polymer layers, one being clear and that other containing a dye (paragraphs 0017-0023). The dye is substantially black (paragraph 0026), resulting in a glazing with a grey color (paragraph 0112). Since the glass sheets are clear (e.g., see paragraphs 0018 and 0023), one of ordinary skill in the art would expect the interlayer of a gray glazing to be gray.
It would have been obvious to one of ordinary skill in the art to add sufficient black dye to a layer of the interlayer of Kong such that the resulting glass laminate would be gray and have a light transmission of between 8 and 20% for applications in which the glass laminate is to be used as the roof of a vehicle since such as configuration would be expected to balance the reflection of thermal energy with maintaining a certain transparency to light (paragraph 0006 of Compoint).
While Compoint does not report the light transmission as determined by ASTM D1003-13 Procedure B, one of ordinary skill in the art would expect a glazing employing clear glass sheets that exhibits a light transmission of 8 to 20% to intrinsically satisfy the limitations of claim 7.
Claims 9-11 are rejected under 35 U.S.C. 103 as obvious over Kong (US 2018/0029335) in view of Garrett (US 2002/0182422).
Kong teaches or suggests all the limitations of claims 9-11, as outlined above, except for the presence of IR absorbers or a non-polyvinyl acetal layer in the interlayer. However, Kong does teach that the any of the layers of the interlayer film may contain additives (paragraphs 0065 and 0091).
Garrett is directed to a polyvinyl butyral sheet for a glass laminate (paragraph 0003). The polyvinyl butyral sheet contains IR absorbing additives to provide the laminate with improved heat insulating properties (paragraph 0010). The interlayer may further comprise an IR-reflective polyethylene terephthalate layer (paragraph 0117). The heat insulating property provided by the interlayer protects the interior area of a vehicle containing the glass laminate from excessive heating and the resulting physical damage when the vehicle is parked in the sun (paragraph 0005).
It would have been obvious to one of ordinary skill in the art to incorporate IR absorbing additives and an IR-reflective polyethylene terephthalate layer into the interlayer of Kong to provide the vehicle incorporating the resulting glass laminate with protection from excessive heating and the resulting physical damage when the vehicle is parked in the sun.
Allowable Subject Matter
Claims 6 and 12-14 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action and to include 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.
The invention of claim 6 (as well as claims 12-14 which depend from claim 6) is directed to a polymer interlayer having a warm shrinkage of less than about 4%, a static coefficient of friction of less than 1.50 measured according to ASTM D1894, and a damping loss factor of at least 0.20 measured at 20 oC according to ISO 16940. The interlayer comprises a first layer, a second layer, and a third layer, with the second layer situated between the first and third layers. The first layer comprises a first plasticizer and a first poly(vinyl acetal) resin having a first residual hydroxyl content and a first residual acetate content. The second layer comprises a second plasticizer and a second poly(vinyl acetal) resin having a second residual hydroxyl content and a second residual acetate content. The third layer comprises a third plasticizer and a third poly(vinyl acetal) resin having a third residual hydroxyl content and a third residual acetate content. The first and third layers have glass transition temperatures greater than 37 oC while the second layer has a glass transition temperature of less than 20 oC.
Kong represents the closest prior art. While Kong discloses an interlayer having three layers that would be expected to inherently possess a warm shrinkage, static coefficient of friction, and damping loss factor satisfying the limitations of claim 1, there is no teaching that the layers of the interlayer film have glass transition temperatures as recited in claim 6. Rather, Kong teaches that both the first polyvinyl acetal resin (i.e., the resin present in the outer layers of the interlayer film) and the second polyvinyl acetal resin (i.e., the resin present in the core layer of the interlayer film) have low glass transition temperatures (paragraphs 0048 and 0079). As such, not only does Kong not teach a multilayer interlayer film with the layers having the recited glass transition temperatures, but the reference provides no motivation or suggestion to one of ordinary skill in the art to construct the interlayer film such that the layers have glass transition temperatures that would satisfy the limitations of claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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