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 .
Response to Amendment
Applicant's preliminary amendment filed on 31 December 2024 has been entered. Claim 1-11 and 14 have been amended. Claims 12-13 have been cancelled. Claim 15 has been added. Claims 1-11 and 14-15 are still pending in this application, with claim 1 being independent.
Drawings
The drawings are objected to because they fail to label the recited claim elements, particularly, the inner and outer surfaces of the each of the internal glass pane and the external glass pane. 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.
Specification
The disclosure is objected to because of the following informalities:
There is no description of what constitutes a “glass material” or a “glass” or any description of whether or not a difference exists between the two claim terms as noted in claims 1 and 14.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, “...a light source provided...or in a vicinity of the masking band...,” should have “in a vicinity of” replaced with --adjacent to-- or --separate from-- or –spaced from--.
In claim 1, the same above applies for the at least one coupling element provided in a vicinity of the light source.
In claim 1, “free zone” imparts nothing structural to the claim, and thus, should be amended to define the structure which forms the “free zone.”
Appropriate correction is required.
Claim Interpretation
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.
In claim 1, the “light-decoupling means” has been interpreted as being a light-conducting plastic interlayer or a textured surface of the internal glass pane.
Claim Rejections - 35 USC § 112
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.
Claims 1-11 and 14-15 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.
In claim 1, the limitation recites “glass material” which renders the claim indefinite. It is unclear what constitutes a glass material in the context of the claim scope. Further, the disclosure does not remedy the issue as no examples or compositions are provided for what constitutes a glass material. For purposes of examination, the Examiner will interpret the limitation as referring to natural glass materials. Clarification from the Applicant is requested and appropriate correction is required.
In claim 3, the limitation recites “...rectangular-like shape...” which renders the claim indefinite. The term “rectangular-like” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “rectangular-like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). For purposes of examination, the Examiner will interpret the limitation as --...rectangular shaped...--. Clarification from the Applicant is requested and appropriate correction is required.
In claim 8, the limitation recites “...a glass composition similar to a glass composition...” which renders the claim indefinite. The term “similar to” is a relative term which renders the claim indefinite. The term “similar to” 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. In other words, it is unclear how similar the compositions are to be for one to be considered similar to another. For purposes of examination, the Examiner will interpret the limitation as the compositions being made of a same material or having a similar refractive index. Clarification from the Applicant is requested and appropriate correction is required.
In claim 14, the limitation recites “...is made of glass...” which renders the claim indefinite. It is unclear what constitutes glass in the context of the claim scope. Further, the disclosure does not remedy the issue as no examples or compositions are provided for what constitutes glass. For purposes of examination, the Examiner will interpret the limitation as referring to natural glass. Clarification from the Applicant is requested and appropriate correction is required.
Claims 2-11 and 14-15 are also rejected as being dependent upon rejected claim 1.
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.
Claim 14 is 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. Specifically, claim 1 already recites that the coupling element is made of a glass material. Further, as the specification does not provide any composition examples for either of a glass or glass material, the scope of claim 14 is the same as that recited in claim 1, and thus, claim 14 fails to further limit the subject matter of the claim upon which it depends. 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.
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.
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, 4-8, 10-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pasquarelli (US 2023/0118480 A1), in view of Shao et al. (US 2025/0147227 A1, herein referred to as: Shao).
Regarding claim 1, as is best understood, Pasquarelli teaches or suggests a lighting vehicle glazing (Figs. 1-2 and 6-9) comprising: an external glass pane (16, paragraph [0049]) having an outer surface (an outer surface on an opposite side of 16 from 20, as shown in Figs. 1-2 and 6-9) and an inner surface (an inner surface adjoining layer 20, as shown in Figs. 1-2 and 6-9) and an internal glass pane (18, paragraph [0049]) having an outer surface (an outer surface coupled to 20, as shown in Figs. 1-2 and 6-9) and an inner surface (an inner surface on an opposite side of 18 from 20, as shown in Figs. 1-2 and 6-9), acting as a light guide layer (18 guides light and thus acts as a light guide layer) the external and the internal glass panes laminated together via at least a first plastic interlayer (20; as shown in Figs. 1-2 and 6-9 and as described in paragraph [0050]; i.e., Polyvinyl Butyral [PVB], Ethylene-Vinyl Acetate [EVA], and Thermoplastic Polyurethane [TPU] are all plastic materials), a light-decoupling means (a print, as noted in paragraph [0058]) provided between the first plastic interlayer (20) and the internal glass pane (18; as described in paragraph [0058]), a masking band (32, 72, or 104) provided along a periphery of the inner surface of the external glass pane (as shown in Figs. 1-2 and 6-9) and/or the inner surface of the internal glass pane (as shown in Figs. 1-2 and 6-9), a light source (24, or 24 and 26) provided on the masking band or in a vicinity of the masking band (as shown in Figs. 1-2 and 6-9), the light source (24) being placed on the inner surface of the inner glass pane (as shown in Figs. 1-2 and 6-9), at least one coupling element (26 and/or 28) provided in a vicinity of the light source (as shown in Fig. 1), in a free zone of the masking band (the claim does not define what structure or feature makes the free zone a “free zone” or what “free zone” is to impart to the claim. Thus, each of the cited embodiments of Figs. 1-2 and 6-9 comprises a free zone in which the at least one coupling element is provided either within the masking band as in Figs. 1-2 and 6-8, or outside of the masking band as in Fig. 9), and materially bonded (via 30, as in Figs. 1-2 and 6-8, or bonded with the material of the coupling element, as in Fig. 9) to the internal glass pane on its inner surface (as shown in Figs. 1-2 and 6-9), that couples light emitted from the light source into the internal glass pane (as shown in Figs. 1-2 and 6-9), the light source facing a side edge of the coupling element (as shown in Figs. 1-2 and 6-9).
Pasquarelli does not explicitly teach that the coupling element is made of glass material (as noted above, there are no materials recited in the instant disclosure that define what material forms the “glass,” while some of the materials listed in Pasquarelli for the coupling element can be referred to as a glass, such as PMMA, PMMA is not a naturally occurring glass, and thus, PMMA is interpreted as being a polymer).
Shao teaches or suggests (Figs. 3-8) the coupling element (130, 230, 330, 430) is made of glass material (as described in paragraphs [0043] and [0057]).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Pasquarelli and incorporated the teachings of the coupling element is made of glass material, such as taught or suggested by Shao, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of improving the performance of the device (e.g., by improving the light in-coupling to the internal glass pane).
Regarding claim 4, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the coupling element has a refractive index equal or higher than a refractive index of the internal glass pane (as described in paragraph [0023]). Additionally, or alternatively, the Examiner notes that this feature is also taught or suggested by Shao.
Regarding claim 6, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the coupling element is attached to the inner surface of the inner glass pane (18) via an adhesive layer (30, as shown in Figs. 1-2 and 6-8).
Regarding claim 5, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the adhesive layer (30) has a refractive index of between 1.40 and 1.65 (as described in paragraph [0023]).
Regarding claim 7, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the light source (24, or 24 and 26) an LED strip (paragraphs [0053] and [0064]).
Regarding claim 8, as is best understood, Pasquarelli does not explicitly teach that the coupling element has a glass composition similar to a glass composition of the internal glass pane.
Shao teaches or suggests (Figs. 3-8) the coupling element (130, 230, 330, 430) has a glass composition similar to a glass composition of the internal glass pane (as described in paragraphs [0043], [0047], and [0057]).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Pasquarelli and incorporated the teachings of the coupling element has a glass composition similar to a glass composition of the internal glass pane, such as taught or suggested by Shao, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of improving the performance of the device (e.g., by improving the light in-coupling to the internal glass pane).
Regarding claim 10, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the light-decoupling means is a textured surface of the internal glass pane (a print, as noted in paragraph [0058]).
Regarding claim 11, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the glazing is glazed roof (as shown in Figs. 1-2 and 6-9, e.g., and paragraph [0039]).
Regarding claim 14, as is best understood, the combined teachings of Pasquarelli and Shao teach or suggest, as modified in claim 1 above, said coupling element is made of glass (as modified in claim 1 above). Any rationale for modifying the cited reference is the same here as noted above for claim 1.
Regarding claim 15, Pasquarelli teaches or suggests (Figs. 1-2 and 6-9) the adhesive layer (30) has a refractive index of between 1.48 and 1.56 (as described in paragraph [0023]).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Pasquarelli, in view of Shao, as applied to claim 1 above, and in further view of Sinyugin et al. (US 2007/0183040 A1, herein referred to as: Sinyugin).
Regarding claims 2 and 3, as is best understood, Pasquarelli does not explicitly teach that the coupling element has a parallelepiped shape (as recited in claim 2), or wherein the coupling element has a rectangular-like shape (as recited in claim 3).
Sinyugin teaches or suggests (Figs. 1-2) the coupling element (4) has a parallelepiped shape (as shown in Figs. 1-2), or wherein the coupling element has a rectangular shape (as shown in Figs. 1-2).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Pasquarelli and incorporated the teachings of the coupling element has a parallelepiped shape (as recited in claim 2), or wherein the coupling element has a rectangular-like shape (as recited in claim 3), such as taught or suggested by Sinyugin, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of increasing the utility and/or marketability of the device (e.g., by providing an embodiment by which the device can be utilized with both wedge-shaped coupling elements or parallelepiped/rectangular shaped coupling elements).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Pasquarelli, in view of Shao, as applied to claim 1 above, and in further view of Bier et al. (WO 2021/005162 A1, herein referred to as: Bier).
Regarding claim 9, Pasquarelli does not explicitly teach that the light-decoupling means is a light-conducting plastic interlayer.
Bier teaches or suggests (Figs. 1-2) the light-decoupling means (103) is a light-conducting plastic interlayer (“...functional layer (103) preferably comprises the light scattering particles and at least one matrix material. Suitable matrix materials include polymers...”).
Therefore, it would have been obvious for a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have modified the device of Pasquarelli and incorporated the teachings of the light-decoupling means is a light-conducting plastic interlayer, such as taught or suggested by Bier, since it has been held by the courts that combining prior art elements according to known methods to yield predictable results, simple substitution of one known element for another to obtain predictable results, or choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, is not sufficient to distinguish over the prior art, as it requires only ordinary skill in the art. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1397 (2007). In this case, one of ordinary skill in the art would have been motivated to yield the predictable result of increasing the utility and/or marketability of the device (e.g., by providing an embodiment by which the device can be utilized with both light-conducting plastic interlayers or printed surfaces), and/or provide a structure to surround and protect the decoupling means from decomposition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: please see US 12,442,974 B2 to Matsushima and WO 2023/156939 A1 to Krasnov, pertinent to the features of the material and/or refractive indices of the optical components, and/or to the potential issue of double patenting (i.e., concerning Matsushima).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colin J Cattanach whose telephone number is (571)270-5203. The examiner can normally be reached Monday - Friday, 9:30 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at (571) 272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COLIN J CATTANACH/Primary Examiner, Art Unit 2875
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