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 .
Status of Claims
Applicant’s amendments dated 8/13/25 have been entered. Claims 1, 21, 23, 24, and 35 have been amended. Claims 2-20, 22, 34, and 38-39 stand cancelled. Claims 40-43 have been newly added.
This leaves claims 1, 21, 23-33, 35-37, and 40-43 currently active and pending.
Information Disclosure Statement
The Examiner acknowledges the prior IDS of the parent cases, and has amended the IDS filing to acknowledge receipt of foreign and NPL documents.
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, 21, 23-33, 35-37, 40-43 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson et al. (US 2010/0117397) in view of Otto et al. (5,5506,025).
Regarding claims 1, 23-25, 30, 35, 40, Richardson teaches a structural reinforcement for a vehicle cavity (Richardson abs) comprising a localized reinforcement formed of a first polymeric material, such as polyurethane (first polymer), which may be considered a ‘carrier’ layer (Richardson para 27, 31), a base reinforcing portion, of glass-fiber reinforced polyamide (second polymer), which may be considered an ‘insert’ layer (Richardson para 27, 33), and an expandable (activatable) material layer which may be applied to either or both of the localized reinforcement and the base reinforcing portion (Richardson para 27, 38, 42). Additionally, as these are the same materials as claimed, they may be considered to have at least some ° of ‘compatibility.’ Richardson further teaches that the expanding (activatable) material may be applied to either one or both of the localized reinforcement (carrier layer) and the base reinforcing portion (insert layer) (Richardson para 42). Richardson additionally teaches that the base reinforcing portion (insert layer) may have outwardly facing surfaces to which the expanding (activatable) material is optionally applied (Richardson para 39). Thus, there are taught embodiments where the expandable (activatable) material is exclusively applied to the localized reinforcement (carrier layer) or applied to both the localized reinforcement (carrier layer) and the base reinforcing portion (insert layer) (Richardson para 39, 42). Richardson further teaches that the localized reinforcement (carrier layer) includes one or more ribs (Richardson para 32). Richardson further illustrates that the base reinforcing portion (insert layer) (item 13) has a first and second outer surface, both of which may be visible after combining the localized reinforcement (carrier layer) (item 12) (Richardson fig 6).
Richardson is silent with respect to the overmolding being at least partially coplanar and continuous with an outer surface of the carrier.
Richardson and Otto are related in the field of inserts within automotive cavities. Otto teaches having the expandable material be ‘overmolded’ (see note below) and at least partially coplanar and continuous (see e.g. fig 2, 3) so that the apparatus fits within the desired cavity without moving, but is enough smaller than said cavity to allow for expansion (Otto col. 5, ln 49-56). It would be obvious to one of ordinary skill in the art to have the expanding material of Richardson be at least partially coplanar and continuous as taught by Otto because this would allow the structural reinforcement to properly fit within the desired cavity without excess movement.
Examiner’s note: Applicant appears to use ‘overmolded’ to mean any or all of injection molding, insert molding, and co-extrusion type methods.
It is further noted that ‘overmold[ing]’ is a product-by-process type limitation, and the structure claimed by this as represented in Applicant’s figures and disclosure is two adjacent layers with no intervening layers (Richardson para 27). Richardson meets this because it teaches that the localized reinforcement layer and the base reinforcing portion may be made with or without intervening adhesives or other attachment means, such as co-extrusion. Because this is a product-by-process limitation, as the structure of Richardson meets the structure claimed, the precise method utilized is not a patentable difference. “[E]ven 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). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 21, Richardson in view of Otto teaches a structural reinforcement as above for claim 1.
It is noted that ‘pultruding’ is a product-by-process type limitation, and the structure claimed by this is the final carrier layer. It is further noted that “pultruded prior to overmolding” is also product-by-process, and the claimed element is final carrier layer. Richardson meets this because it teaches the final carrier layer via the localized reinforcement. Because this is a product-by-process limitation, as the structure of Richardson meets the structure claimed, the precise method utilized is not a patentable difference. “[E]ven 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). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claims 26 and 41, Richardson in view of Otto teaches a structural reinforcement as above for claims 23 and 40. Richardson further teaches that the expandable (activatable) material expands upon application of heat (i.e. external stimulus) (Richardson para 38) to fill cavities of a vehicle (Richardson para 5, 42).
Regarding claims 27 and 42, Richardson in view of Otto teaches a structural reinforcement as above for claims 26 and 41. It is noted that “the glass fibers are saturated with the second polymeric material,” “the second polymeric material is liquid upon contact with glass fibers,” and, “the insert polymerizes at room temperature,” are all product-by-process type limitations. The structure required is that of claim 1, the final insert, which further must be rigid. Richardson meets the final insert structure via the base reinforcing portion as established above for claim 1. Additionally, Richardson teaches no mention of flexibility or give with the base reinforcing portion. As such, the base reinforcing portion may be considered “rigid” as claimed. Finally, because Richardson teaches that the glass fibers are embedded within the second polymeric material, they may be considered to be ‘saturated’ with the second polymeric material.
Regarding claim 28, Richardson in view of Otto teaches a structural reinforcement as above for claim 27. Richardson makes no teaching of visible knit lines, voids, or discontinuities at an interface region at the interface between the localized reinforcement (carrier layer) and the base reinforcing portion (insert layer), therefore Richardson may reasonably be considered to be free of said visible knit lines, voids, or discontinuities.
Regarding claim 29, Richardson in view of Otto teaches a structural reinforcement as above for claim 28. Because Richardson teaches the same materials for the localized reinforcement (carrier layer) of polyurethane and the base reinforcing portion (insert layer) of glass-fiber reinforced polyamide, and as they may be coextruded (melted together, similar to the claimed co-molded), they would be expected to possess at least some degree of an interpenetrating network and/or chemical bonding between the layers. 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), See MPEP 2112.01.
Regarding claim 31, Richardson in view of Otto teaches a structural reinforcement as above for claim 30. Richardson further teaches that the localized reinforcement (carrier layer) may possess lugs which allow for it to stand away from the inter walls which further enable the draining of coating fluids (Richardson para 35).
Richardson does not explicitly teach the presence of lugs in the base reinforcing portion (insert layer).
However, it would be obvious to one of ordinary skill in the art to modify the base reinforcing portion (insert layer) to also include lugs which would allow for further control of spacing between elements and drainage of fluids as with lugs in the localized reinforcement (carrier layer).
Regarding claims 32 and 43, Richardson in view of Otto teaches a structural reinforcement as above for claims 31 and 42. Richardson further teaches that the localized reinforcement (carrier layer) may possess one or more fasteners which allow for it to easily attach to the vehicle structure (Richardson para 36).
Richardson does not explicitly teach the presence of one or fasteners in the base reinforcing portion (insert layer).
However, it would be obvious to one of ordinary skill in the art to modify the base reinforcing portion (insert layer) to also include one or more fasteners which allow for it to easily attach to the vehicle structure as in the localized reinforcement (carrier layer).
Regarding claim 33, Richardson in view of Otto teaches a structural reinforcement as above for claim 29. Richardson makes no teaching of metallic materials in the first or second polymer, therefore Richardson may reasonably be considered to be free of metallic materials in said first and second polymers.
Regarding claim 36, Richardson in view of Otto teaches a structural reinforcement as above for claim 35. Richardson further teaches that the localized reinforcement (carrier layer) has a wall with a first and second surface, where the thickness between the two surfaces is 0.5-3.5 mm (Richardson para 32). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03. In the instant case, the prior art teaches a range wholly within the claimed range.
Regarding claim 37, Richardson in view of Otto teaches a structural reinforcement as above for claim 36. Richardson further illustrates that the total thickness of the ‘wall’ may be the same for both the base reinforcing portion (insert layer) and the localized reinforcement (carrier layer) (Richardson figs 1-3; para 34). Therefore, the thickness of the wall may be said to be defined by an insert of equal thickness to the carrier, and thus greater than 60%.
Response to Arguments
Applicant’s arguments with respect to claim1, 21, 23-33, 35-37, and 40-43 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LAURA B FIGG whose telephone number is (571)272-9882. The examiner can normally be reached M-Th 9a-6p Mountain.
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/L.B.F/Examiner, Art Unit 1781 12/12/25
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781