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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,392,952. Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed to essentially the same or overlapping subject matter, see specifically claim 3 of ‘952.
Claims 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,982,830. Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed to essentially the same or overlapping subject matter, see specifically claim 7.
Claims 1-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/834,509 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed at essentially the same or overlapping subject matter. See specifically claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The Examiner notes that the double patenting rejection is a preliminary double patenting rejection. If the application is in condition for an allowance and the double patenting rejection is still applicable, e.g. no terminal disclaimer is filed and the claims are still rejected under double patenting, then Examiner will give a more detailed analysis at that time.
Claim Objections
Claims 1, 2 objected to because of the following informalities:
Claim 1 recites “a light source… can be coupled into the first pane”. It is unclear whether the light source is or is not coupled into the first pane. The Examiner has interpreted the limitation to read “a light source… that is coupled into the first pane”.
Claim 2 recites “the light coupling means is arranged in a cutout”. It is unclear what the structure is required for the cutout. I.e. the limitation “cutout” appears to be a product by process limitation.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe , 227 USPQ 964, 966 (Fed. Cir. 1985) MPEP. 2113. There is no resulting distinction in the structure or intermediate layer of there having been a cutout as the cutout has been filled and there is no distinctive or functional border recited between the cutout and the rest of the intermediate layer.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 4, 7, 8, 14 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.
Claim 4 recites “the light coupling means is arranged in a tinted or untinted region of the intermediate layer”. Untinted has been interpreted as “not tinted”.
The light coupling means is already recited as being arranged in the intermediate layer in claim 1. All portions of the intermediate layer are inherently tinted or not tinted. Therefore the claim does not further limit claim 1 from 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.
Claim 7 recites “a method for producing a glazing assembly according to claim 1, comprising:” and then proceeds to restate much of claim 1. I.e. claim 7 is written as a dependent claim, but the body of the claim appears to be an independent claim as it sets forth structures that already have antecedent basis in claim 1.
Claims 8, 14 are rejected for being dependent on claim 7.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. See claim 1, light coupling means.
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 1-6, 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brandl (U.S. 12,300,674, PCT filed 10/29/2020 as Ep 2020/080474, all references made to US patent for ease of reference) in view of Offermann (U.S. 7,794,125).
Regarding claim 1, Brandl teaches a glazing assembly (see fig. 8, see col. 12 lines 9-15, used in a window or pane) comprising at least:
a first pane having a first main surface and a second main surface, wherein the first pane is provided to at least partially transmit coupled-in light (transparent),
a light source (LED 2) for generating light that can be coupled into the first pane (coupled into first pane via diffraction from 13),
a second pane having a first main surface and a second main surface,
an intermediate layer arranged between the first pane and the second pane, a light coupling means which is arranged in the intermediate layer,
wherein the light coupling means is formed from a multilayer film (one layer of foil 3, one layer of cover layer 5),
wherein the multilayer film comprises at least one carrier layer (5) and a film (diffusion centers 13 3).
Brandl does not teach that the film is a microprism film.
Offermann teaches that the film is a microprism film (see col. 3 lines 22-33).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used a microprism film as taught by Offermann in place of the diffusion centers of Brandl as Brandl specifically teaches using reflective structures (see col. 3) and that the use of a microprism film is well known as a light extraction structure that emits high brightness light over a wide viewing angle, as is known in the art.
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Regarding claim 2, Brandl does not teach that the light coupling means is arranged in a cutout of at least one thermoplastic layer of the intermediate layer.
Offerman teaches that the light coupling means is arranged in a cutout of at least one thermoplastic layer of the intermediate layer (see col. 4 lines 31-45).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used the light coupling regions in a cutout as taught by Offermann instead of an integral structure as taught by Brandl as the resulting structures are the same.
Evidence that these are equivalents known in the art presents strong evidence of obviousness in substituting one for the other. Smith v. Hayashi, 209 USPQ at 750.
The Examiner notes that the limitation “cutout” has not been given substantial weight, as noted in the claim objection above. The limitation appears to be a product by process claim. The Examiner finds that there is no recitation that the materials are different, and so the resulting finished product does not appear to have any claimed differences from the light coupling means formed integrally with the structure.
Regarding claim 3, Brandl teaches that the height of the light coupling means corresponds approximately to the height of said at least one layer of the intermediate layer (see fig. 8, fills layer).
Regarding claim 4, Brandl teaches that the light coupling means is arranged in a tinted or untinted region of the intermediate layer (untinted)
Regarding claim 5, Brandl and Offermann does not teach that the microprism film of the multilayer film of the light coupling means has a height in the range between 25 microns and 500 microns.
It would have been obvious to a person having ordinary skill in the art at the time that the invention was made to have optimized the height of the microprism film to adequately reflect the light and depending on the amount and angle of reflection desired. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456. The Examiner finds that the predictability of the interaction between the light and a microprism is well established in the art and that it is well known to use different heights of microprisms depending on the needs in the art, and as set forth in Applicant’s disclosure.
Regarding claim 6, Brandl teaches that the light source comprises at least one light-emitting diodes (LED,).
Regarding claim 9, Brandl teaches a method comprising providing a glazing assembly according to claim 1 as a roof pane of a vehicle (roof pane, see col. 37 lines 54-59).
Regarding claim 10, Brandl teaches that the light coupling means is arranged in a blackened region of the intermediate layer (see col. 46 lines 41-60, see col. 52 lines 57-63, tinted and blackened layers).
Regarding claim 11, Brandl and Offermann does not teach that the microprism film of the multilayer film of the light coupling means has a height in the range between 25 microns and 400 microns.
It would have been obvious to a person having ordinary skill in the art at the time that the invention was made to have optimized the height of the microprism film to adequately reflect the light and depending on the amount and angle of reflection desired. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456. The Examiner finds that the predictability of the interaction between the light and a microprism is well established in the art and that it is well known to use different heights of microprisms depending on the needs in the art, and as set forth in Applicant’s disclosure.
Regarding claim 12, Brandl and Offermann does not teach that the microprism film of the multilayer film of the light coupling means has a height greater than or equal to 150 microns and less than or equal to 350 microns.
It would have been obvious to a person having ordinary skill in the art at the time that the invention was made to have optimized the height of the microprism film to adequately reflect the light and depending on the amount and angle of reflection desired. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456. The Examiner finds that the predictability of the interaction between the light and a microprism is well established in the art and that it is well known to use different heights of microprisms depending on the needs in the art, and as set forth in Applicant’s disclosure.
Regarding claim 13, Brandl teaches that the light source comprises a plurality of light-emitting diodes (LEDs).
Allowable Subject Matter
Claims 7-8, 14 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Claim 7 recites, inter alia, “making a cutout in at least one thermoplastic layer of the intermediate layer, cutting the multilayer film of the light coupling means to size, inserting the cut piece of the light coupling means into the cutout of said at least one thermoplastic layer of the intermediate layer…”
Although Brandl teaches that the intermediate layer is a thermoplastic layer, Brandl does not teach forming a cutout and cutting the multilayer film to size for the lamination structure. The Examiner finds that this particular method of formation would not be an obvious modification of Brandl and Offerman and is therefore allowable.
The Examiner notes that the allowable subject matter has been noted in view of claim 7 being recited as a method claim, incorporating the structure of claim 1. As noted in the 112(d) rejection above, claim 7 is written as a dependent claim, but is written with a different statutory basis and with unclear antecedence.
Claims 8 and 14 are indicated allowable based on their dependence from claim 7.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J PEERCE whose telephone number is (571)272-6570. The examiner can normally be reached 8-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Greece can be reached on (571) 272-3711. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew J. Peerce/Primary Examiner, Art Unit 2875