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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1 – 11) with traverse in the reply filed on June 9, 2026 is acknowledged. Group II (claims 12 – 15) are withdrawn from consideration. The traversal is on the ground(s) that “the search and examination of the entire application could be made without serious burden.”
This is not found persuasive because the current application was filed as a national stage application submitted under 35 U.S.C. 371. Applicant’s argument regarding serious burden applies only to national applications filed under 35 U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a). See MPEP 823.
As discussed in the restriction requirement mailed April 13, 2026, the restriction was based on lack of unity because the technical feature(s) common to both claims 1 & 12 do not make a contribution over the cited prior art. See PCT Rule 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Examiner’s note
The Examiner acknowledges the preliminary amendment of withdrawn claim 12 filed 6/09/2026.
Applicant filed original claim set on 6/01/2022, a first preliminary claim amendment (specifically of claims 5 & 10) filed 6/01/2022, original set of claims again filed 4/16/2024, a second preliminary amendment (without the proper amendments of claims 5 & 10 from first preliminary amendment) filed 6/09/2026.
Applicant is reminded that all claim amendments should include status identifiers to indicate the status of the claims (e.g., currently amended) compared to the most recent preceding set of claims filed, such as marked-up reincorporation of the subject matter of claims 5 & 10 that was previously removed with the first preliminary amendment. See MPEP 714.C.(A)-(B).
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 5 & 10 – 11 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.
Regarding claims 5 & 10, the phrase “more preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 11, the claim recites “The board-type sunshade according to claim 10, wherein said liquid thermosetting resin is a liquid isocyanate.” However, claim 10 recites two separate and distinct “liquid thermosetting resins,” one of which is impregnated into the glass fiber mats and the other is impregnated into the urethane foam layer. Therefore, it is unclear which of “said liquid thermosetting resin” Applicant intends to limit in claim 11.
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.
Claim(s) 1 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (U.S. Patent No. 6,706,370 B1), in view of Toshinobu (JP 2002-046545).
With regard to claim 1, Ito et al. teach a sunshade (i.e., “board-type sunshade”) of a sunroof for a motor vehicle, wherein the sunshade comprises a semi-rigid layer made of urethane foam, two glass fiber mats and urethane foam layer laminated between said two glass fiber mats (i.e., “core member”), a skin material layer (5) (i.e., “front skin member”) on a surface of one of the glass fiber mat layers, a back material layer (7) (i.e., “back skin member”) on the surface of the other glass fiber mat layer (i.e., “core member laminated between said front skin member and said back skin member”) (Fig. 1).
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Ito et al. do not teach the semi-hard urethane foam layer (of the core member) is resin impregnated by impregnating the urethane foam layer over its entirety with a liquid thermosetting resin and curing said liquid thermosetting resin.
Toshinobu teaches a molded ceiling material for vehicles for providing heat insulation, wherein the molded ceiling material comprises a foamed base material and two inorganic fiber layers composed of glass fibers laminated on both sides of said foamed base material. The base material (11), such as polyurethane foam having open cells, is impregnated and hardened with a liquid isocyanate (thermosetting resin) binder B (paragraph [0015]), for increasing the rigidity of the base material and for bonding and integrating the base material and the inorganic fiber layers (paragraph [0014]).
Therefore, based on the teachings of Toshinobu, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to impregnate the semi-hard urethane foam layer with a liquid thermosetting resin for increasing the rigidity of the polyurethane material and bonding the polyurethane foam to the inorganic fiber layers.
With regard to claim 2, Ito et al. teach said front skin member includes a front skin layer and a front skin layer-side adhesive layer (6), and said back skin member includes a back skin layer and a back skin layer-side adhesive layer (4), and wherein in said core member, one glass fiber mat of said two glass fiber mats is bonded to said front skin layer with said front skin layer-sided adhesive layer so as to face said front skin layer through said front skin layer-side adhesive layer, and the other glass fiber mat is bonded to said back skin layer with said back skin layer-side adhesive layer so as to face said back skin layer through said back skin layer-side adhesive layer (Col. 2, Lines 44 – 62 & Fig. 1 shown above).
With regard to claim 3, Toshinobu teaches the impregnated weight of the binder B per unit area (basis weight) of the base material and the impregnated weight of the binder B per unit of the inorganic fiber layer(s) are predetermined for desired surface feel of the molded ceiling material and prevention of leaching of the binder B during compression when manufacturing the molded ceiling material (paragraph [0019]).
With regard to claims 4 – 5, Toshinobu teaches a predetermined basis weight range of said basis weight of said liquid thermosetting resin impregnated into said semi-hard urethane foam layer, but do not explicitly teach said predetermined basis weight is 150 g/m2 to 500 g/m2, more preferably 200 g/m2 +/- 20 g/m2.
However, as discussed above Toshinobu teaches the polyurethane foam is impregnated with liquid thermosetting resin for achieving a desired rigidity, and the ratio of the impregnated weight of the binder B per unit area (basis weight) of the base material and the impregnated weight of the binder B per unit of the inorganic fiber layer(s) are predetermined for desired surface feel of the molded ceiling material and prevention of leaching of the binder B during compression when manufacturing the molded ceiling material.
Therefore, based on the teachings of Toshinobu, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the weight per unit area (“basis weight”) of the liquid thermosetting resin impregnated into the urethane foam material taught by Ito et al. & Toshinobu through routine experimentation in order to achieve the a resin impregnated foam with the desired rigidity, surface feel, and prevention of leaching during the compression step of the manufacturing process. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 6, Ito et al. teach said core member includes two resin-impregnated glass fiber mats (Col. 2, Lines 44 – 53), said two resin-impregnated glass fiber mats are formed respectively by impregnating a corresponding one of said two glass fiber mats over its entirety with a liquid thermosetting resin and curing said liquid thermosetting resin, and said resin-impregnating semi-hard urethane foam layer is laminated between said two resin-impregnated glass fiber mats (Col. 2, Lines 44 – 53 & Fig. 1 above).
With regard to claim 7, as discussed above for claim 2, Ito et al. teach said front skin member includes a front skin layer and a front skin layer-side adhesive layer, and said back skin member includes a back skin layer and a back skin layer-side adhesive layer, and wherein in said core member, one resin-impregnated glass fiber mat of said two resin-impregnated glass fiber mats is bonded to said front skin layer with said front skin layer-sided adhesive layer so as to face said front skin layer through said front skin layer-side adhesive layer, and the other resin-impregnated glass fiber mat is bonded to said back skin layer with said back skin layer-side adhesive layer so as to face said back skin layer through said back skin layer-side adhesive layer.
With regard to claim 8, Toshinobu teaches the impregnated weight of the binder B per unit area (basis weight) of the base material and the impregnated weight of the binder B per unit of the inorganic fiber layer(s) are predetermined for desired surface feel of the molded ceiling material and prevention of leaching of the binder B during compression when manufacturing the molded ceiling material (paragraph [0019]).
Claim(s) 4 – 5 & 9 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. & Toshinobu, as applied to claims 3 & 8 above, and further in view of Pollak et al. (US 2011/0305869 A1) & Mikami (US 2011/0151241 A1).
With regard to claims 9 – 10, Ito et al. & Toshinobu do not explicitly teach the first predetermined basis weight range of the basis weight of each of said two glass fiber mats is 100 g/m2 to 500 g/m2,
Pollak et al. teach a vehicle component, such as a sliding roof (paragraph [0021]), comprising a carrier structure composed of polyurethane, such as a foamed polyurethane structure (paragraph [0012]) embedded with fiber reinforcement, such as a glass fiber mat (paragraph [0010]). The carrying layer preferably consists of polyurethane (foam) with a basis weight of approximately 300 g/m2 and a glass fiber mat for reinforcement preferably has a basis weight in the range of approximately 225 g/m2 (paragraph [0030]).
Therefore, based on the teachings of Pollak et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use glass fiber mats with a basis weight of approximately 225 g/m2 as the two glass fiber mats taught by Ito et al. for providing the desired degree of reinforcement to a polyurethane foam in a sliding roof (i.e., “board-type sunshade”).
With regard to claims 9 – 10, Ito et al. & Toshinobu do not explicitly teach the second predetermined basis weight range of said liquid thermosetting resin impregnated into each of said glass fiber mats is 20 g/m2 to 50 g/m2, more preferably 30 g/m2 +/- 3 g/m2.
Mikami teaches a formed material for a vehicle ceiling, such as a sunshade (i.e., “board-type sunshade”) (paragraph [0001]), wherein the formed material comprises fiber reinforced layers comprising an isocyanate (thermosetting) resin bonded on opposite sides of a base material, such as a urethane foam (paragraphs [0031] – [0033]). The weight of the urethane-based resin (e.g., isocyanate-based resin) is preferably in the range of 10 g/m2 to 30 g/m2, particularly preferably at 13 g/m2 to 25 g/m2 (i.e., “basis weight”) for sufficient bonding strength and preventing extrusion of the resin from the formed material (paragraph [0058]).
Therefore, based on the teachings of Mikami, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use a liquid isocyanate (thermosetting) resin with a basis weight in the range of 10 – 30 g/m2 impregnated into the glass fiber mat taught by Ito et al. for forming resin-impregnated glass fiber mats with sufficient bonding strength. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claims 4 – 5 & 9 – 10, Ito et al. & Toshinobu do not explicitly teach third predetermined basis weight range of the basis weight of said liquid thermosetting resin impregnated into said semi-hard urethane foam layer is 150 g/m2 to 500 g/m2, more preferably 200 g/m2 +/- 20 g/m2.
However, as discussed above, Toshinobu teaches the impregnated weight of the binder B per unit area (basis weight) of the base material and the impregnated weight of the binder B per unit of the inorganic fiber layer(s) are preferably 4:1 to 8:1 for desired surface feel of the molded ceiling material and prevention of leaching of the binder B during compression when manufacturing the molded ceiling material (paragraph [0019]).
Therefore, based on the combined teachings of Mikami & Toshinobu, it would have been obvious to one of ordinary skill in the art for the amount of liquid thermosetting resin impregnated into the foam be 4 – 8 times the amount of liquid thermosetting resin impregnated into the inorganic fiber layers, which would result in a liquid thermosetting resin present in the semi-hard foam taught by Ito et al. in the amount of 40 – 240 g/m2, which overlaps with Applicant’s claimed range of 150 – 500 g/m2 of claims 4 & 9 and includes recited amount of 200 g/m2 ± 20 g/m2 of claims 5 & 10. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 11, Ito et al. teach an example of the thermosetting resin impregnated into the glass mats is a liquid urethane (Col. 2, Lines 51 – 52). However, Ito et al. do not teach specific type of urethane resin is a liquid isocyanate.
However, Toshinobu teaches the preferred binder B (liquid thermosetting resin) is liquid isocyanate resin because it is inexpensive, has good adhesiveness (paragraph [0015]), and when the resin has a viscosity of 3 – 300 cp, it has excellent penetrability and coatability, good affinity with glass fibers, and suitability workability (paragraph [0016]).
Therefore, based on the teachings of Toshinobu, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use a liquid isocyanate resin as the liquid thermosetting resin taught by Ito et al. for desired adhesiveness, penetrability, coatability, affinity to glass fibers, workability, and cost.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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