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 .
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 4 is 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.
The limitation “the same temperature properties” is indefinite at least due to lack of sufficient antecedent basis and identification of temperature properties in question. For prior art rejections below, this limitation is met as long as both identified elements belong to the same general class of material (e.g. polymers).
Claims 13 and 16 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.
Each of claims 13 and 16 is indefinite, as partial/ complete surrounding appears to be in context of in plan view.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-8, 13, and 14; and claims 15 and 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2024/017364 A1 (referenced below using its English-language counterpart publication, U.S. 2026/0036840 A1, “Guo”).
Considering claims 1, 3-8, 13, and 14; and claims 15 and 16, Guo discloses an automotive door assembly comprising a laminated pane, the laminated pane having two glass plates 1 joined by a tri-layered bonding structure having two bonding layers 2 immediately adjacent respective glass plates 1 and an annular protective layer 4 located between the two bonding layers 2 and circumferentially surrounding a switchable film 3 that is a PDLC film. (Guo ¶¶ 0028-0034 and Fig. 1, reproduced infra).
PNG
media_image1.png
470
845
media_image1.png
Greyscale
Guo discloses that each bonding layer comprises respective annular region 23 and central region 22, wherein respective annular regions 23 are light-shielding and serves the purpose usually performed by black ink layer, and wherein both regions 22 and 23 are made of respective PVB materials. (Id. ¶¶ 0028, 0033, and 0050). The annular regions 23 thus read on the claimed opaque masking element. Annular protective layer 4 forms a frame circumferentially around the PDLC film 3. As clearly shown in Fig. 1 of the reference, width of light-shielding annular region 23 is greater than that of the protective layer 4. Lastly, as shown in Figs. 2 and 5 of the reference, in a plan view, the annular regions 23 completely encircles the central region 22.
Due to 1) statement of area at which light can be coupled and 2) recitation in claim 9 requiring actual light source (and coupling of light), the limitation of light coupling area in claim 1 is phrased entirely in an optional manner and as one of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Guo anticipates claims 1, 3-8, 13, and 14; and claims 15 and 16.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 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.
Claims 2 and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2024/017364 A1 (referenced below using its English-language counterpart publication, U.S. 2026/0036840 A1, “Guo”), as applied to claim 1 above.
Considering claim 2, Guo is analogous art, for it is directed to the same field of endeavor as that of the instant application (laminated glazing containing a PDLC layer). Guo discloses usage of TPU for the bonding layer. (Guo ¶ 0033). With only a limited number of materials disclosed, usage of TPU is deemed to be disclosed with sufficient specificity or alternatively obvious.
Considering claim 12, with various combinations of bonding layer material listed for both the light-shielding region and the central region, some combination thereof reads on claim 12.
Claims 1-12 and 14; and claim 15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2023/144007 A1 (referenced below using its English-language counterpart publication, U.S. 2025/0050624 A1, “Do Rosario”).
Considering claims 1, 7, 8, and 14; and claim 15, Do Rosario discloses an automotive laminated pane, the laminated pane having an outer glass pane 1 joined to an inner glass pane 2 via a tri-layered bonding structure having two adhesive thermoplastic films 10.1 and 10.3 immediately adjacent respective glass panes 1 and 2 and an annular layer 10.2 located between the two adhesive thermoplastic films 10.1 and 10.3 and circumferentially surrounding a functioning element 4 in the form of a layer of PDLC material. (Do Rosario ¶¶ 0013-17, 0026, 0063, 0073-0076; and Figs. 4 and 5, reproduced infra). Do Rosario is analogous art, for it is directed to the same field of endeavor as that of the instant application (laminated glazing containing a PDLC layer). As clearly shown in the configurations of either Fig. 4 or Fig. 5, respective darkened layer 6 is located next to thermoplastic film 10.3.
PNG
media_image2.png
266
538
media_image2.png
Greyscale
PNG
media_image3.png
293
582
media_image3.png
Greyscale
Due to 1) statement of area at which light can be coupled and 2) recitation in claim 9 requiring actual light source (and coupling of light), the limitation of light coupling area in claim 1 is phrased entirely in an optional manner and as one of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Do Rosario anticipates claim 1.
Alternatively, it is abundantly clear from the broader disclosure of the reference that when a light source is located in a recess of the inner glass pane 2, a light coupling area is covered by a darkened material located at a circumferential periphery of the laminated glazing. (Id. ¶¶ 0035 and 0064; and Fig. 1a). This is further proof that the structure of Do Rosario is capable of performing the intended use. Alternatively, a configuration combining placement of the darkened layer 6 as shown in either Figs. 4 or 5 of Do Rosario with a configuration in which a light source is located in a recess of the inner glass pane 2 is obvious in view of the broader disclosures of the reference.
Do Rosario anticipates or renders obvious claims 1 and 15.
Considering claim 2, Do Rosario discloses usage of a thermoplastic polyurethane for its darkened layer. (Id. ¶ 0026).
Considering claim 3, Do Rosario discloses usage of PVB or PU for its various thermoplastic films. (Id. ¶ 0024).
Considering claims 4-6, in view of the discussions of ¶¶ 0024 and 0026 of the reference, claim 4 is also anticipated or obvious.
Considering claims 9 and 10, the limitation “can be coupled … via a light coupling element” is considered to require only light source, but does not necessarily require the presence of such a coupling element. As discussed above, Do Rosario discloses a light source that can be coupled into the inner glass pane 2.
Considering claim 11, this configuration is shown in Fig. 5 of Do Rosario.
Considering claim 12, configurations in which the darkened layer 6 is a printed enamel (such as the case of Fig. 5 of Do Rosario) reads on this limitation.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2023/144007 A1 (referenced below using its English-language counterpart publication, U.S. 2025/0050624 A1, “Do Rosario”), as respectively applied to claims 1 and 15 above, and further in view of WO 2024/017364 A1 (referenced below using its English-language counterpart publication, U.S. 2026/0036840 A1, “Guo”).
Considering claims 13 and 16, Do Rosario differs from the claimed inventions recited in claims 13 and 16, as it fails to disclose a darkened layer that forms an annular structure. However, in the art of laminated glazings having a switchable layer, such a configuration is taught in Guo. Specifically, Guo teaches that the provision of a relatively wide annular darkening layer below an annular protective layer 4 that circumferentially surrounds a switchable film 3 hides the interface between the protective layer 4 and the switchable film 3 and improves visual appearance. (Guo ¶ 0010).
It is noted that such an interface is also present in the laminated glazing of Do Rosario. (Do Rosario Figs. 4 and 5, vide supra). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have implemented the darkened layer 6 of Do Rosario as a layer having an annular morphology, for the reasons taught in Guo.
Concluding Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2016/0325528 A1 reads on at least claims 1, 3, and 9-16.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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, Frank Vineis can be reached at (571)270-1547. 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.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights