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 Objections
Claim 19 is objected to because of the following informalities: in line 1, “the light modification” should be changed to “wherein the light modification”; in the penultimate line, “proper8ties” should be changed to “properties”. Appropriate correction is required.
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 1-20 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.
The term “low refractive index” in claims 1 and 18 is a relative term which renders the claim indefinite. The term “low” 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. The refractive index of the compound in the first polymer layer is rendered indefinite by the use of the term “low”. For purposes of examination, a “low refractive index compound” is construed as being a compound having a refractive index of less than 1.45 as recited in the specification ([0035] of the specification).
Claims 1 and 18 also recite the limitation “the polymer interlayer” in the 2nd to last line of each claim. There is insufficient antecedent basis for this limitation in the claims. Claims 1 and 18 do not previously recite “a polymer interlayer” but, rather, recites “a first polymer layer” in lines 1-2. Claims 9-13 depend from claim 1 and also recite “the polymer interlayer” and are therefore also indefinite. For purposes of examination, “the polymer interlayer” in these claims is being construed as “the first polymer layer”.
Claims 2-17 depend either directly or indirectly from claim 1 and are therefore also indefinite for the reasons set forth above with respect to claim 1. Claims 19 and 20 depend from or otherwise include all limitations of claim 18 and are therefore also indefinite for the reasons set forth above with respect to claim 18.
Claims 7, 8, 14 and 15 each recite the limitation “the polymer layer” in line 2 of each claim. Claim 13 recites the limitation “the polymer layer” in lines 3-4 of the claim. There is insufficient antecedent basis for this limitation in these dependent claims. Claim 1, from which each of these claims depends, recites “a first polymer layer” but not “a polymer layer”. For purposes of examination, “the polymer layer” in each of these claims is being construed as “the first polymer layer”.
Claims 2 and 3 each recite the limitation “the initial polymeric volume hologram” in lines 1-2 of each claim. There is insufficient antecedent basis for this limitation in these dependent claims. Claim 1, from which each of these claims depends, recites “the polymeric hologram prior to assembly” but not to “an initial polymeric volume hologram”. For purposes of examination, “the initial polymeric volume hologram” in each of these claims is being construed as “the polymeric hologram prior to assembly”.
Claims 7-9 and 12 depend from claim 3 and are therefore also indefinite for the reasons set forth above with respect to claim 3.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Smothers et al. (U.S. Patent No. 4,959,283, cited in IDS submitted April 16, 2025) in view of Rolle et al. (U.S. Patent Application Publication No. 2012/0231376 A1, cited in IDS submitted April 16, 2025).
Regarding claim 1, Smothers discloses a manufacturing process (Title of Smothers, process for altering wavelength response of holograms ) comprising the steps of: providing a first polymer layer comprising a compound (2:40-42 of Smothers, diffusion element; 9:53-43 of Smothers, diffusion element is a film; 9:64-65 of Smothers, primary component of diffusion element is binder used in optical element; 4:39-46 of Smothers, binder used in optical element is a polymer; 9:49-51 of Smothers, diffusion element contains a monomer or plasticizer which is a compound) and a polymeric volume hologram (2:37-39 of Smothers, optical element comprising hologram recorded in film element), assembling the first polymer layer and the polymeric volume hologram to form an assembly (9:53-56 of Smothers, diffusion element laminated to optical element), providing at least a first substrate, and laminating the assembly with the at least first substrate to form a laminated structure wherein the first substrate is adjacent the first polymer layer (14:67-15:3 of Smothers, glass laminate with reflection hologram comprises laminate with diffusion element in contact with glass substrate), wherein the laminated structure has partitioned low refractive index compound levels within the polymeric volume hologram (1:27-29 of Smothers, hologram formed by material having varying refractive indexes) such that the light modification properties of the polymeric volume hologram following lamination and equilibration of the low refractive index compound with the polymer interlayer are greater than 70% of the magnitude of the original light modification properties of the polymeric hologram prior to assembly, in at least one wavelength range (9:10-18 of Smothers, thermal treatment enhances reflection efficiency and refractive index modulation of hologram).
Smothers does not specifically disclose that the diffusion agent contained in the diffusion element is a “low refractive index” compound. Moreover, Smothers discloses that the compound is a liquid monomer or plasticizer that will diffuse into and swell the optical element (9:49-51 of Smothers) and that the diffusion agent is a monomer or plasticizer employed in the optical element or a compatible material having a similar refractive index (9:64-10:2 of Smothers) but does not specifically disclose the refractive index of the compound. Rolle, however, discloses using low refractive index fluorourethane plasticizers ([0005], [0010] of Rolle). According to Rolle, use of such plasticizers results in holograms having a higher brightness compared with known holograms ([0005] of Rolle). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use low refractive index fluorourethane plasticizers as a diffusion agent in the method of Smothers. One of skill in the art would have been motivated to do so in order to provide holograms having a higher brightness compared with known holograms as taught by Rolle ([0005] of Rolle).
Regarding claim 2, Smothers discloses that the initial polymeric volume hologram contains no low refractive index compound (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer material having a similar refractive index to that employed in the optical element; since a different material is used, the initial hologram in Smothers would initially not contain any of the diffusion agent).
Regarding claim 3, Smothers discloses that the initial polymeric volume hologram comprises a low refractive index compound (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer employed in the optical element).
Regarding claim 4, Smothers discloses that the process comprises one or more additional polymer layers (3:50-54 and 3:60-4:4 of Smothers, optical element laminated to a polymer support).
Regarding claim 5, Smothers discloses that the polymeric volume hologram is disposed on a second substrate (14:60-62 of Smothers, hologram supported on glass substrate).
Regarding claim 6, Smothers discloses that the process comprises a second substrate (14:60-62 of Smothers, hologram supported on glass substrate).
Regarding claim 7, Smothers discloses that the low refractive index compound in the polymer layer is different from the low refractive index compound in polymeric volume hologram (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer material having a similar refractive index to that employed in the optical element; since a different material is used, the initial hologram in Smothers would initially not contain any of the diffusion agent).
Regarding claim 8, Smothers discloses that the low refractive index compound in the polymer layer is the same as the low refractive index compound in the polymeric volume hologram (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer employed in the optical element).
Regarding claims 9 and 10, Smothers does not specifically disclose that the polymer interlayer comprises a concentration of low refractive index compound within a range of -25 to +25 weight percent of the concentration of low refractive index compound in the polymeric volume hologram as recited in claim 9 or that the polymer interlayer comprises a total quantity of low refractive index compound within a range of greater than 0 to less than 50 weight percent of the laminated structure as recited in claim 10. Smothers, however, discloses that the amount or concentration of diffusion agent contained in the diffusion element must be sufficient such that a desired shift in the reflected wavelength can be achieved (10:7-9 of Smothers). Smothers therefore establishes that the concentration of diffusion agent in the diffusion element is a variable which achieves a recognized result (i.e., providing a desired shift in the reflected wavelength) (10:7-9 of Smothers). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the concentration of diffusion agent in the method of Smothers, including providing a concentration of diffusion agent as recited in claims 9 and 10. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Regarding claim 11, Smothers discloses that the polymer interlayer comprises polymers or elastomers or blends of polymers or elastomers selected from polyurethanes, poly(vinyl acetal)s such as poly(vinyl butyral), ethylene vinyl acetate copolymers, polyvinyl alcohols, cellulose esters, polyolefin elastomers, acrylic resins, polysiloxanes and ionomers (9:64-65 of Smothers, primary component of diffusion element is binder used in optical element; 4:39-46 of Smothers, binder used in optical element include poly(vinyl acetal) and poly(vinyl butyral); claim only requires one of the recited polymer types).
Regarding claim 12, Smothers discloses that the low refractive index compound in the polymer interlayer is selected to have a refractive index within a range of -0.1 to +0.1 of the refractive index of the low refractive index compound in the polymeric volume hologram (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer employed in the optical element which would necessarily have the same refractive index).
Regarding claim 13, Smothers does not specifically disclose the method further comprising a polymer film or tie layer, wherein the polymer film or tie layer allows one or more of the low refractive index compounds in the polymer interlayer to migrate from the polymer layer into the polymeric volume hologram, from the polymeric volume hologram into the polymer interlayer, or both from the polymer interlayer into the polymeric volume hologram and from the polymeric volume hologram into the polymer interlayer. Smothers, however, discloses laminating the optical element to the diffusion element (9:53-55 of Smothers), that intimate contact between the diffusion element and the optical element is required (9:51-53 of Smothers) and that the optical element may include adhesion modifiers (6:65-66 of Smothers). Smothers therefore discloses adhesion between the diffusion element and the optical element. The interfacial region between the laminated diffusion element and optical element is a tie layer or a layer tying together the adjacent layers.
Regarding claim 14, Smothers does not specifically disclose that the polymer layer further comprises an adhesion promoter. Smothers, however, discloses that intimate contact between the diffusion element and the optical element is required (9:51-53 of Smothers) and that the optical element may include adhesion modifiers (6:65-66 of Smothers). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to also include an adhesion promoter in the diffusion element of Smothers. One of skill in the art would have been motivated to do so in order to improve bonding with the optical element thereby providing intimate contact between the diffusion element and the optical element as taught by Smothers (9:51-53 of Smothers).
Regarding claim 15, Smothers does not specifically disclose that at least a portion of the polymer layer has at least one of: an interlayer that is tapered, acoustic dampening properties, or elements to selectively block portions of the electromagnetic spectrum, or wherein the polymer layer comprises at least one of the following: dyes, colorants, pigments, particles, infrared or solar absorbers. Smothers, however, discloses that the optical element may include UV radiation absorbing material (6:61-66 of Smothers) and that the diffusion element is not removed after thermal treatment (i.e., that the diffusion element remains part of the final laminate) (10:2-6 of Smothers). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to also include UV radiation absorbing material in the diffusion element of Smothers. One of skill in the art would have been motivated to do so in order to enhance the UV radiation absorbing properties of the final laminate based on the disclosure in Smothers of adding such material to the optical element (9:51-53 of Smothers). It is noted that the claim only requires one of the recited provisos or one of the recited components of the polymer layer.
Regarding claim 16, Smothers does not specifically disclose that the low refractive index compound comprises at least two different low refractive index compounds. Smothers, however, discloses that the diffusion element can contain both a liquid monomer and a plasticizer that diffuse into the optical element (i.e., two diffusing agents) (9:49-51 of Smothers). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use two different low refractive index compounds in the method of Smothers since Smothers and Rolle provides motivation to use a low refractive index compound as a diffusing agent (see rejection of claim 1 above) and since Smothers suggests using two different diffusion agents.
Regarding claim 17, Smothers discloses that the polymeric volume hologram comprises a patterned or an unpatterned photopolymer film (2:37-52 of Smothers, hologram formed by exposing photosensitive film element to form pattern), wherein the polymeric volume hologram comprises no low refractive index compound prior to the assembly step (9:64-10:2 of Smothers, diffusion agent is a monomer or plasticizer material having a similar refractive index to that employed in the optical element; since a different material is used, the initial hologram in Smothers would initially not contain any of the diffusion agent).
Regarding claim 18, Smothers discloses a manufacturing process (Title of Smothers, process for altering wavelength response of holograms) comprising the steps of: providing a first polymer layer comprising a compound (2:40-42 of Smothers, diffusion element; 9:53-43 of Smothers, diffusion element is a film; 9:64-65 of Smothers, primary component of diffusion element is binder used in optical element; 4:39-46 of Smothers, binder used in optical element is a polymer; 9:49-51 of Smothers, diffusion element contains a monomer or plasticizer which is a compound), a polymeric volume hologram (2:37-39 of Smothers, optical element comprising hologram recorded in film element), and a second polymer layer (3:50-54 and 3:60-4:4 of Smothers, optical element laminated to a polymer support), assembling the first polymer layer, the polymeric volume hologram and the second polymer layer to form an assembly wherein the polymeric volume hologram is between the first polymer layer and the second polymer layer (9:53-56 of Smothers, diffusion element laminated to optical element; 3:50-54 and 3:60-4:4 of Smothers, optical element laminated to a polymer support), providing at least a first substrate, and laminating the assembly with the at least first substrate to form a laminated structure (14:67-15:3 of Smothers, glass laminate with reflection hologram comprises laminate with diffusion element in contact with glass substrate), wherein the laminated structure has partitioned low refractive index compound levels within the polymeric volume hologram (1:27-29 of Smothers, hologram formed by material having varying refractive indexes) such that the light modification properties of the polymeric volume hologram following lamination and low refractive index compound equilibration with the polymer interlayer are greater than 70% of the magnitude of the original light modification properties of the polymeric hologram prior to assembly, in at least one wavelength range (9:10-18 of Smothers, thermal treatment enhances reflection efficiency and refractive index modulation of hologram).
Smothers does not specifically disclose that the diffusion agent contained in the diffusion element is a “low refractive index” compound. Moreover, Smothers discloses that the compound is a liquid monomer or plasticizer that will diffuse into and swell the optical element (9:49-51 of Smothers) and that the diffusion agent is a monomer or plasticizer employed in the optical element or a compatible material having a similar refractive index (9:64-10:2 of Smothers) but does not specifically disclose the refractive index of the compound. Rolle, however, discloses using low refractive index fluorourethane plasticizers ([0005], [0010] of Rolle). According to Rolle, use of such plasticizers results in holograms having a higher brightness compared with known holograms ([0005] of Rolle). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use low refractive index fluorourethane plasticizers as a diffusion agent in the method of Smothers. One of skill in the art would have been motivated to do so in order to provide holograms having a higher brightness compared with known holograms as taught by Rolle ([0005] of Rolle).
Regarding claim 19, Smothers discloses that the light modification properties of the polymeric volume hologram following lamination and equilibration of the low refractive index compound with the polymer interlayer are greater than 100% of the magnitude of the original light modification properties of the polymeric hologram prior to assembly, in at least one wavelength range (3:10-26 of Smothers).
Regarding claim 20, Smothers and Rolle suggest a laminated structure made by the manufacturing process of claim 18 (2:34-36 of Smothers, reflection hologram formed by manufacturing process; see analysis of claim 18 above).
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, 3-7, 11, 12 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,109,784 B2 (reference patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 14 of the reference patent discloses all limitations of claims 1 and 18 except for the first polymer layer comprising a low refractive index compound. However, the claims of the reference patent disclose a tie layer comprising a low refractive index compound and that the tie layer is a polymer layer (claim 7 of the reference patent). Claims 1, 14 and 7 of the reference patent thereby render claims 1 and 18 obvious.
Claim 1 of the reference patent contains limitations corresponding to claim 3.
Claims 2-5 of the reference patent contains limitations corresponding to claims 4-7, respectively.
Claims 7 and 8 of the reference patent contains limitations corresponding to claims 11 and 12, respectively.
Claim 14 of the reference patent contains limitations corresponding to claim 19.
Claim 16 of the reference patent contains limitations corresponding to claim 20.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,242,227 B2 (reference patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference patent discloses all limitations of claim 1.
Claims 2-12 of the reference patent contains limitations corresponding to claims 2-12, respectively.
Claim 1 of the reference patent contains limitations corresponding to claim 13.
Claims 13-16 of the reference patent contains limitations corresponding to claims 14-17, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
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