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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 22, 2025, has been entered.
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.
Claim 17 is 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. All of the limitations of claim 17 are contained in independent claim 18. 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 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.
Claims 9, 11, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2015-013538 Kimura et al.
Regarding claim 18, Kimura teaches a soundproof cushioning material (paragraph 00010) to be attached to an inner face of a wheel well of a vehicle body (paragraph 0014), the soundproof cushioning material comprising:
a soundproof cushioning area 20 (paragraph 0022), in which a non-woven fabric 32 comprising entangled fibers is disposed (paragraph 0023); and
a continuous resin area 11 (paragraph 0016),
a boundary part 21 between the soundproof cushioning area and the continuous resin area (figure 3b), and
a bonding area wherein the non-woven fabric extends across the boundary part and into the continuous resin area (at bead 41, figure 3b),
the soundproof cushioning area is side by side with and adjacent to the continuous resin area on a surface of the soundproof cushioning material (top surface, figure 3b), the surface configured to face a tire in the wheel well (paragraphs 0051-0052),
wherein, on a second surface of the soundproof cushioning material opposite to the surface configured to face the tire (figure 3b), the non-woven fabric of the soundproof cushioning area and the continuous resin area are exposed (figure 3b), and
wherein at least a portion of the soundproof cushioning area on the surface configured to face the tire in the wheel well does not overlap with the continuous resin area (figure 3b).
Regarding claim 9, Kimura teaches that the boundary part comprises a compressed non-woven fabric area (recess 21) that is more compressed than the non-woven fabric of the soundproof cushioning area (paragraph 0028).
Regarding claim 11, Kimura teaches that the boundary part further comprises an extension part (within bead 41) disposed between the compressed non-woven fabric area and the continuous resin area (figure 3b), and wherein the extension part is comprised of a non-woven fabric area that is less compressed than the compressed non-woven fabric area (figure 3b).
Regarding claim 17, Kimura teaches a bonding area wherein the non-woven fabric extends across the boundary part and into the continuous resin area.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2015-013538 Kimura et al.
Regarding claim 10, Kimura teaches that the compressed non-woven fabric area has a density of two times or more of a density of the soundproof cushioning area (paragraph 0026 teaching that the uncompressed region has a thickness of 1 mm, and paragraph 0028 teaching that the compressed region has a thickness of 0.5 mm or less). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 2x or more reads on the claimed range of 3x or more.
Response to Arguments
Applicant's arguments filed December 4, 2025, have been fully considered but they are not persuasive.
Applicant argues that the resin layer overlaps the entire soundproof cushioning area. However, Applicant misunderstands the rejection. The resin layer is not layer 31 that overlaps layer 32. The resin layer that reads on the rejection is resin layer 11. Layer 11 does not overlap with layer 32 (figure 3b).
Applicant argues that the prior art does not teach the boundary area. However, the boundary area claimed is depression 21 and the non-woven fabric 32 extends across the depression into the bead (figure 3b).
Finally, Applicant argues that the prior art does not teach the lighter structure. However, the prior art need not have the same reason or recognize the same benefits as Applicant in order to read on the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781