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
Amendments to the claims, filed on 9/22/25, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-10, 13-23, 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 uses the terminology “configured for” (line 5) which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claims 3-10, 13, and 14 are rejected for failing to cure the deficiencies of claim 1.
Claim 15 uses the terminology “configured for” (line 3) which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claims 16-18, 20-23, and 25 are rejected for failing to cure the deficiencies of claim 15.
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, 3-10, 13-23, 25 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.
Claim 1 uses the terminology “configured for” (line 5) with no other guidance via dependent claims and/or the instant specification as to what it means to be “configured for,” so it would have been unclear one of ordinary skill in the art at the time of invention what is required for the matrix material deposited directly onto the carrier material to be configured for direct contact with the sheet metal surface
Claims 3-10, 13, and 14 are rejected for failing to cure the deficiencies of claim 1.
Claim 15 uses the terminology “configured for” (line 3) with no other guidance via dependent claims and/or the instant specification as to what it means to be “configured for,” so it would have been unclear one of ordinary skill in the art at the time of invention what is required for the matrix material deposited directly onto the carrier material to be configured for direct contact with the sheet metal surface.
Claims 16-18, 20-23, and 25 are rejected for failing to cure the deficiencies of claim 15.
For examination purposes, it will be assumed that s structure meeting the limitations of for the matrix material deposited directly onto the carrier material is considered to be configured for direct contact with the sheet metal surface
Claim Rejections - 35 USC § 103
Claims 1, 3-7, 9, 10, 13, 14, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hoefflin (US 2011/0262735 A1).
Regarding claim 1, 9, 10, 13, and 25, Hoefflin teaches a device (e.g., an expandable insert assembly) comprising and/or consisting of two material layers including a carrier material (e.g., mesh material); and a matrix material (e.g., thermoplastic, epoxy, or rubber) deposited directly onto the carrier material; wherein the carrier material is located in planar contact with the matrix material; wherein the matrix material is deposited (e.g., extrusion) onto only one surface of the carrier material (para 16, 19-22, fig 1).
Regarding the limitation “as a sheet;” Hoefflin teaches generally teaches the matrix material is applied as a plurality of discrete expandable elements, but further teaches that any number (i.e., 1) of discrete elements may be used and formed in any manner convenient (para 20); so, it would have been obvious to one of ordinary skill in the art at the time of invention to use one discrete element of a sheet of one discrete element since Hoefflin teaches any number of discrete elements may be used. Or in the alternative, it would have been obvious to one of ordinary skill in the art at the time of invention to make all of the discrete elements integral, therein forming a sheet of discrete elements, since making an integral construction would have been prima facie obvious to one of ordinary skill in the art at the time of invention (MPEP § 2144.04 V. B).
Regarding the limitations “wherein the material layers of the device are coextensive with each other; and wherein the matrix material and the carrier material have rounded corners;” wherein the carrier material is free of any sharp corners and includes only rounded corners;” and “wherein the matrix material and the carrier material include only rounded corners;” Hoefflin teaches there is a need in the art for an expandable baffle design that allows for simplified and accurate installation while also providing adequate expansion and/or filling of an intended structure or cavity, especially irregularly shaped cavities; the expandable insert may include a substrate configured to be secured to the installation surface, with the substrate having a stiffness allowing the substrate to deflect relative to an initial shape; and the expandable elements (or element) generally allows substrate to be shaped to mimic an overall shape of panel or to extend within the cavity, e.g., away from the panel; and any discrete number or shape of expandable elements may be employed (para 3, 14, 20); so, Hoefflin would have suggested to one of ordinary skill in the art at the time of invention adjusting the size and shape of the substrate and expandable element to optimize its ability to fill of an intended structure or cavity, especially irregularly shaped cavities, and allow the substrate to be shaped to mimic an overall shape of panel or to extend within the cavity.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the shape and size of the substrate and expandable element, including embodiments wherein the material layers of the device are coextensive with each other; wherein the matrix material and the carrier material have rounded corners; wherein the carrier material is free of any sharp corners and includes only rounded corners; and wherein the matrix material and the carrier material include only rounded corners; depending upon the intended structure or cavity that needs filled and mimic an overall shape of panel or to extend within the cavity. Furthermore, changes in shape are prima facie obvious (MPEP § 2144.04 IV B).
Regarding “and configured for direct contact with a sheet metal surface”, Hoefflin teaches a carrier material (e.g., plastic, metal (wire) or fabric mesh materials); and a matrix material (e.g., thermoplastic, epoxy, or rubber) deposited directly onto the carrier material (para 16, 19-20). This appears to match the materials of the carrier material and the matrix material instant specification (instant spec para 18-19, 23). Therefore, the embodiments of Hoefflin are deemed to be configured for direct contact with a sheet metal surface.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regarding claims 3 and 4, Hoefflin teaches the substrate is generally flexible or pliable, such that it may be fitted to contours of a cavity surface or panel; and the discrete expandable element(s) may be applied to generally preserve a flexibility of substrate (para 17, 21). Hoefflin further teaches the use of the materials for the mesh (e.g., wire, nylon, and fiberglass) as well as for the expandable material (e.g., rubber) that are considered easily flexible and/or flexible under their own weight that will bend but not break (para 19-20).
The Examiner takes official notice that both the selected materials and thicknesses of the substrate and expandable element would affect the flexibility of the expandable insert. This would be considered common knowledge. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the material of the substrate and the expandable element accordingly as well as adjust the thickness of each to optimize the desired flexibility of the expandable insert and the ability of it to be fitted to contours of a cavity surface or panel (i.e., wherein the device is capable of bending without breaking and wherein the device will bend under its own weight when held at its end).
Regarding claim 5, Hoefflin teaches the expandable materials may also have any expansion ratio that is convenient, e.g., from a minimal ratio where expansion is very small, up to several thousand percent (para 20). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Hoefflin, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claims 6 and 7, Hoefflin teaches a thermoplastic, thermoset, or rubber material (i.e., sealant or adhesive) that is expandable or foamable may be employed as the expandable material insert or matrix material (para 20).
Regarding claim 14, Hoefflin teaches the carrier can be a mesh (e.g., wire) (i.e., wherein the carrier material is substantially free of any film material) (para 19).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hoefflin as applied to claim 1 above, and further in view of Quaderer (US 2014/0087126 A1).
Hoefflin teaches the device of claim 1. Hoefflin further teaches a thermoplastic, thermoset, or rubber material that is expandable or foamable may be employed as the expandable insert or matrix material (para 20).
Hoefflin fails to suggest wherein the matrix material includes an ethylene-based copolymer.
Quaderer teaches a baffling, sealing, or reinforcement member or device that includes a flexible carrier and plurality of activatable strips used in vehicles (para 1-2); wherein the device comprises a carrier with openings and a heat-activatable material including an ethylene copolymer (para 15, 19, 22-23).
Therefore, per the teachings of Quaderer, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute an ethylene copolymer for the thermoplastic, thermoset, or rubber material of Hoefflin, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 8, 15-18, 20, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hable et al (US 2003/0039792 A1) in view of Haack et al (US 2001/0036559 A1).
Regarding claims 15-18 and 22, Hable teaches a device (e.g., a composite material for reinforcing a panel portion of an automotive vehicle) a carrier material reinforcing material; and an epoxy-based matrix material deposited directly onto the carrier material as a sheet and configured for direct contact with a sheet metal surface, wherein the matrix material is coextensive with the carrier material; wherein the matrix material is deposited onto only one surface of the carrier material (e.g., laminated or extruded) (para 4, 7, 10-15; fig 1, 4).
Regarding the limitations “free of any sharp corners;” “wherein the matrix material and the carrier material have rounded corners;” and “wherein the device will bend under its own weight when held at its end” Hable teaches the layer of matrix material may be configured in any shape, design, or thickness corresponding to the dimensions of the selected panel portion of the vehicle or as otherwise desired (para 13). The Examiner takes official notice that both the selected materials and thicknesses of the matrix material and corresponding reinforcing material would affect the flexibility of the composite material. This would be considered common knowledge.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the material of the matrix material and the corresponding reinforcing material accordingly as well as adjust the thickness of each to optimize the desired flexibility of the composite material and, in addition, adjust the shape of the composite material, for the ability of it to be fitted to contours of a cavity surface or panel. Furthermore, changes in shape are prima facie obvious (MPEP § 2144.04 IV B).
Hable fails to suggest wherein the coefficient of thermal expansion of the matrix material is substantially the same as the coefficient of thermal expansion of the sheet metal; wherein the coefficient of thermal expansion is at least about 5 X 10-6 m/mK; and, wherein the coefficient of thermal expansion is at least about 10 X 10-6 m/mK.
Hack teaches matching the thermal expansion coefficients of reinforced matrix material and metal sheets to which it is bonded to produce a more durable laminate; wherein the coefficient of thermal expansion is at least about 10 X 10-6 m/mK (abstract, Table 1).
Therefore, per the teachings of Haack, it would have been obvious to one of ordinary skill in the art at the time of invention, to match the thermal expansion coefficients of reinforced matrix material and metal sheets of Hable to, when bonded, to produce a more durable laminate.
The limitations “and intended for direct contact with a sheet metal surface” and “wherein the sheet metal is steel” are intended use and do not add further structure to the embodiment of the instant claim and need not be suggested by the prior art of record. However, Hable suggests structurally reinforced panel is at attached to a metal panel (para 7); and Haack suggests the species of steel (para 8, 14).
Regarding claims 20 and 23, Hable teaches the reinforcing material may comprise fiberglass rovings with a coarse weave and course weaves are generally known to be loose or have openings (i.e., wherein the carrier material is substantially free of any film material and wherein the carrier material is a glass material including a plurality of openings) (para 22).
Response to Arguments
Applicant's arguments filed 12/22/25 have been fully considered but they are not persuasive.
Applicant contends that there is no evidence Hoefflin teaches or suggests that a single layer for the discrete expandable elements could be used. This is not persuasive since Hoefflin teaches and discrete number or shape of expandable elements (104); which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention that of a single layer (i.e., the discrete number of one) for the discrete expandable element. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to make all of the discrete elements integral, therein forming a sheet of discrete elements, since making an integral construction would have been prima facie obvious to one of ordinary skill in the art at the time of invention (MPEP § 2144.04 V. B.).
Applicant contends that Hoefflin confirms that multiple elements 104 are required, stating, "By comparison, the stiffness of a substrate having an expandable material that is applied across large portions or even the entirety of the substrate will be substantially affected by the application of the expandable material;" and modifying Hoefflin to have a sheet as claimed would destroy the principle of operation of Hoefflin.
This is not persuasive since Hoefflin also teaches “[i]n one embodiment, the matrix material is also selected to cure during or after activation and, upon or after cure, form a relatively low density, low weight material with high strength characteristics such as high stiffness for imparting structural rigidity to reinforced region of the panel portion;” so Hoefflin suggests embodiments wherein high stiffness is required, and therein does not destroy the principle of operation.
It is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the device of the instant claims with the dimensions and/or size (e.g., coextensiveness of the layers) as well as the shape (e.g., rounded corners) of the layers based on the prior art's intended application as in the present invention.
Applicant further argues Hoefflin teaches the flexibility of the material is not impacted by the expandable element. Instead, it is how the material is adhered to the substrate that has an impact. This is not persuasive, as the passage cited teaches the flexibility of the substrate is still preserved, and therein, the selected materials and thicknesses of the substrate and expandable element (even if minimal) would affect the flexibility of the expandable insert. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the material of the substrate and the expandable element accordingly as well as adjust the thickness of each to optimize the desired flexibility of the expandable insert and the ability of it to be fitted to contours of a cavity surface or panel (i.e., wherein the device is capable of bending without breaking and wherein the device will bend under its own weight when held at its end).
Regarding the expansion ratio, Hoefflin teaches the expandable materials may also have any expansion ratio that is convenient, e.g., from a minimal ratio where expansion is very small, up to several thousand percent (para 20). It is noted, the range of instant claim 5 falls within this range.
Applicant contends this fails the enablement test because it would result in elaborate or undue experimentation, but appears to make the assertion without any proof or further analysis. The arguments of counsel cannot take the place of evidence in the record (MPEP § 2145 I).
Applicant contends there is no evidence one skilled in the art would have had an expectation of success in applying an ethylene-based copolymer, as provided in Quaderer, in a sheet that is coextensive with the carrier. This is not persuasive as the Examiner has already demonstrated discrete elements (i.e., strips) as an obvious variant to that of a sheet; and once again, Applicant has failed to provide any proof of expectation of failure.
Regarding the limitations “free of any sharp corners;” “wherein the matrix material and the carrier material have rounded corners;” and “wherein the device will bend under its own weight when held at its end” Hable teaches the layer of matrix material may be configured in any shape, design, or thickness corresponding to the dimensions of the selected panel portion of the vehicle or as otherwise desired (para 13). The Examiner takes official notice that both the selected materials and thicknesses of the matrix material and corresponding reinforcing material would affect the flexibility of the composite material. This would be considered common knowledge.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the material of the matrix material and the corresponding reinforcing material accordingly as well as adjust the thickness of each to optimize the desired flexibility of the composite material and, in addition, adjust the shape of the composite material, for the ability of it to be fitted to contours of a cavity surface or panel. Furthermore, changes in shape are prima facie obvious (MPEP § 2144.04 IV B).
In addition, It is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the device of the instant claims with the shape (e.g., rounded corners) of the layers based on the prior art's intended application as in the present invention.
Applicant contends that Haack fails to suggest epoxy-based materials as used in the instant claims. This is not persuasive because it ignores the broader teaching of Hack is that matching the thermal expansion coefficients of reinforced matrix material and metal sheets to which it is bonded results in a more durable laminate. The Examiner contends it would not be outside of routine experimentation by one of ordinary skill in the art at the time of invention to achieve this using epoxy-based materials.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783