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 .
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.
Claim(s) 1, 10, 17, 30-32, 35, 36, 49, 53, and 90 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2016/0060945 to Weiss et al. (“Weiss”).
Regarding claim 1, Weiss discloses a method of attaching a retention member 10, 20, or 200 to an insulating glazing unit comprising: placing a spacer unit 26 between a first pane 12 and a second pane 27 to form the insulating glazing unit; applying an adhesive composition 25a or 220 to at least one of a perimeter of the insulating glazing unit; and the retention member; and mounting the retention member onto perimeter edges of at least one of the first pane and the second pane.
Regarding claim 10, Weiss discloses that after the operation of mounting the retention member 200 to the perimeter edges, further comprising applying pressure to an outside surface of the retention member toward the adhesive composition 220. Pressure would necessarily be applied to adhere retention member 200 because adhesive 220 is a pressure sensitive adhesive (Weiss par [0047]) that requires pressure to adhere. Weiss in par [0056] also discloses a roll of retention member 10 is pressed into place along the edge of the insulated glass assembly.
Regarding claim 17, Weiss discloses applying a secondary sealant 25, 31 around a perimeter of the insulating glazing unit prior to applying the adhesive composition. See steps shown in Figs. 7A-7D where 25 and 31 are first applied prior to application of the retention member.
Regarding claim 30, Weiss discloses that the retention member 200 comprising a fibrous support layer (Weiss par [0045]).
Regarding claim 31, Weiss discloses that the retention member 200 further comprising a polymer disposed on the fibrous support layer (Weiss par [0046]).
Regarding claim 32, Weiss discloses the retention member 200 comprising a fiberglass fabric (Weiss par [0045-0046]).
Regarding claim 35, Weiss discloses applying an adhesive composition 220, 25a to both of the perimeter of the insulating glazing unit; and the retention member.
Regarding claim 36, Weiss discloses that applying an adhesive composition to the perimeter of the insulating glazing unit comprises applying an adhesive composition 220 to a perimeter of the first pane and the second pane.
Regarding claim 49, Weiss discloses applying an adhesive composition to a perimeter of the insulating glazing unit comprises applying a skim coat of adhesive composition over a pre-existing adhesive composition (Weiss, par [0050]).
Regarding claim 53, Weiss discloses method of attaching a retention member to an insulating glazing unit comprising: obtaining the insulating glazing unit, the insulating glazing unit comprising a first pane 12, a second pane 27, and a spacer unit 200 disposed between the first pane and the second pane; applying an adhesive composition 220 to at least one of a perimeter of the insulating glazing unit or the retention member; and applying the retention member to the perimeter edges of the first pane and the second pane.
Regarding claim 90, Weiss discloses that applying an adhesive composition to the perimeter of the insulating glazing unit comprises applying an adhesive composition 220 to a perimeter of the first pane and the second pane.
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(s) 7 and 61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss in view of U.S. Patent No. 5,333,428 to Taylor et al. (“Taylor”).
Regarding claims 7 and 61, Weiss does not disclose removing excess adhesive composition from the first pane and the second pane.
Taylor discloses a method of making an insulated glass unit that includes removing excess adhesive composition from the first pane and the second pane (Taylor; col 3, ln 34-38).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the glazing assembly of Weiss to remove excess adhesive composition from the first pane and the second pane as taught in Taylow with a reasonable expectation of success to predictably produce a clear insulating glass unit.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss.
Regarding claim 11, Weiss discloses that the retention member 10, 20, or 200 is pushed into the adhesive composition in applying pressure (par 0056) but does not disclose pushing sufficiently far so that a distance between an adjacent side of a fibrous support structure of the retention member and an outer peripheral edge of the first and second pane is approximately 0.04 to 0.16 inches. It would have been obvious to one having ordinary skill in the art at the time of invention to push sufficiently far so that a distance between an adjacent side of a fibrous support structure of the retention member and an outer peripheral edge of the first and second pane is approximately 0.04 to 0.16 inches, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. When one of ordinary skill would recognize the known effect attributed to a claimed parameter, then it is logical to conclude that changes to that parameter produce expected results. In this case, it is expected that pushing far enough would ensure sufficient adhesion.
Claim(s) 38, 39, 41, and 92 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss in view of U.S. Patent No. 3,998,680 to Flint (“Flint”).
Regarding claims 38 and 92, Weiss does not disclose applying an adhesive composition to the perimeter of the insulating glazing unit comprises applying the adhesive composition into a channel disposed between the first pane and the second pane and to the outside of the spacer unit, wherein the volume of adhesive composition applied is greater than the volume of the channel disposed between the first pane and the second pane and to the outside of the spacer unit.
Flint discloses laminated panels applying an adhesive composition 16 to the perimeter of the insulating glazing unit comprises applying the adhesive composition into a channel disposed between the first pane and the second pane and to the outside of the spacer unit, wherein the volume of adhesive composition applied is greater than the volume of the channel disposed between the first pane and the second pane and to the outside of the spacer unit to promote a stronger bond by encapsulating a portion of end edges of the panes.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the glazing assembly of Weiss to apply the adhesive composition into a channel disposed between the first pane and the second pane and to the outside of the spacer unit, wherein the volume of adhesive composition applied is greater than the volume of the channel disposed between the first pane and the second pane and to the outside of the spacer unit as taught in Flint with a reasonable expectation of success because such method of assembly promotes a stronger bond by encapsulating a portion of end edges of the panes.
Regarding claim 39, Weiss in view of Flint discloses that the volume of adhesive composition applied is greater than the volume of the channel disposed between the first pane and the second pane and to the outside of the spacer unit.
Regarding claim 41, Weiss in view of Flint discloses applying the adhesive composition into the channel comprising applying the adhesive composition adjacent to the spacer unit.
Claim(s) 107 and 108 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weiss in view of U.S. Publication No. 2009/0139165 to Prete et al. (“Prete”).
Regarding claims 107 and 108, Weiss does not disclose that the adhesive composition is applied using a nozzle configured to lay a shaped bead of adhesive composition comprising a raised central portion.
Prete discloses a method of constructing an insulating glass unit wherein an adhesive composition is applied using a nozzle configured to lay a shaped bead of adhesive composition comprising a raised central portion (Prete, par 0012).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the glazing unit of Weiss to have that the adhesive composition is applied using a nozzle configured to lay a shaped bead of adhesive composition comprising a raised central portion as taught in Prete with a reasonable expectation of success because it would allow for automation of the adhesive application process.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 10-11, 17, 30-32, 35-36, 38-39, 41, 49, 53, 90, and 92 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 12,215,541. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation in the pending claims are recited in and thus within the scope of the patented claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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, Brian Glessner can be reached at 571-272-6754. 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.
/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633
Prosecution Insights