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 Arguments
Claims 1-21 are pending with claims 19-21 newly added and claim 3 cancelled. Applicant’s arguments, see Remarks, filed 09 September 2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102(a) (2) as being anticipated by Nair et al. (WO 2021/113172 Al) and under 35 U.S.C. 103 as being unpatentable over Fesina et al. (RU2376167Cl) in view of Nair et al. (WO 2021/113172 Al) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fesina et al. (RU2376167C1) in view of Iwasa et al. (US-5744763-A). Due to amendment, the rejection of all claims has been updated.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. A new ground(s) of rejection is made in view of Iwasa et al. (US-5744763-A) and . Due to amendment, the rejection of all claims has been updated.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 6, 9-14, 16-17, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwasa et al. (US 5744763 A)
Regarding Claim 1, Iwasa et al. discloses an automotive noise attenuating trim part of a vehicle (Sound proofing material 10/40 on engine hood/trim 14 of vehicle; Col. 4, Lines 55-65; Fig. 5,12) comprising:
a porous layer having at least one closed container (Porous 11 with film container 12 between 121-122; Col. 14, Lines 50-65; Fig. 5. 11 being porous as a rubber sponge; Col. 5, Lines 1-15) comprising a film having a contact surface formed by a film configured to contact a vibrating surface of the vehicle (Film 12 with surface 121 contacts hood 14 to prevent noise from escaping outside; Col. 5, Lines 30-50; Col. 7, Lines 5-15. Engine hoods vibrate during use), the at least one closed container being partly filled with particles configured to selectively contact a surface of the film opposite the contact surface (12 comprising rubber grains of 11 vibrate finely; Col. 5, Lines 35-50).
Regarding Claim 2, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, whereby the at least one closed container comprises a vessel part for maintaining a defined void volume interconnected the film (In structure of container 12 being a hollow vessel of 121-122; Col. 7, Lines 5-15; Col. 13, Lines 5-17; Fig. 5).
Regarding Claim 6, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, whereby the loose particles are made of at least one of the materials selected from the group consisting of inert minerals, metals, steel, ceramic materials, elastomeric materials, and polymeric materials (Particles of 11 are rubber as elastomeric and polyurethane as polymeric; Col. 5, Lines 1-15; Col. 14, Lines 50-61).
Regarding Claim 9, Iwasa et al. discloses a noise attenuating trim part according to claim 2, wherein the vessel part includes an edge with a protruding flange (See leftward flanged marked by 12 in Fig. 5). Iwasa et al. fails to explicitly disclose wherein having a protruding flange a width of at least 1mm. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose ensuring a bonded edge of the vessel, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding Claim 10, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, whereby the porous layer comprises up to 30 closed containers (Porous 11 showing 1 closed container in Fig. 5).
Regarding Claim 11, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, wherein the porous layer (11; Fig. 5) is one of an open cell foam layer or a fibrous felt layer (11 incorporated with fibers/pellets of synthetic resins PET, PA, PVC, and PE heat-fused and solidified; Col. 14, Lines 35-45)
Regarding Claim 12, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 11, whereby the fibrous felt layer comprises fibers and/or filaments, and further comprises a thermoset or thermoplastic binder (11 incorporated with fibers/pellets of synthetic resins PET, PA, PVC, and PE heat-fused and solidified; Col. 14, Lines 35-45. PET, PA, PVC, and PE used as thermoplastic binders).
Regarding Claim 13, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, further comprising one or more additional layers on a surface of the porous layer (11) opposite a surface configured to contact the vibrating surface of the vehicle (Film 122 on 11 opposite surface 121 contacting 14 of vehicle; Col. 7, Lines 5-20; Fig. 5).
Regarding Claim 14, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 13, whereby the at least one or more additional layers is at least one of a foam layer, a felt layer, a film layer, a foil layer, a thermoplastic elastomeric layer with a high filler content, a decorative layer (Film 122 on 11 opposite surface 121 contacting 14 of vehicle; Col. 7, Lines 5-20; Fig. 5).
Regarding Regarding Claim 16, Iwasa et al. discloses a method of using the noise attenuating trim part according to claim 1 as an inner dash, an outer dash, a battery lid silencer, a battery enclosure insulator, and/or as a carpet system (Vehicle flooring and carpet stated as common application; col. 1, Lines 5-35), wherein the porous layer is the layer in contact with a vibrating body panel when the part is installed in the vehicle (Porous layer 11 through 121 contacts panel 14; Fig. 5)
Regarding Claim 17, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, wherein the film is configured to transfer vibrational energy from the vibrating surface to the loose particles inside the at least one closed container (Col. 8, Lines 15-31; Fig. 12).
Regarding Claim 19, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1, wherein the film is not mechanically bonded to the vibrating surface of the vehicle (Film 121 does not bond to surface 14 of vehicle at pockets 51; Col. 7, Lines 5-20; Fig. 5,12).
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(s) 4-5,7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwasa et al. (US 5744763 A).
Regarding Claim 4, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1. Iwasa et al. fails to explicitly disclose whereby the total volume of the loose particles in the at least one closed container (Volume of particles of 11 in container 12; Fig. 5) is less than 90%. However, this would have been obvious to a person of ordinary skill before the effective filing date of the claimed invention for the purpose of promoting desired level of air circulation via air pockets (Col. 6, Lines 30-40), since it has been held that discovering the 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).
Regarding Claim 5, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1. Iwasa et al. fails to explicitly disclose whereby the loose particles (Particles of 11 have largest diameter of 2mm; Col. 5, Lines 1-5; Fig. 5) have a median particle size between 20 μm and 1250 μm. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of reducing size, since it has been held that discovering the 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).
Regarding Claim 7, Iwasa et al. as modified by Nair et al. discloses the automotive noise attenuating trim part according to claim 1, wherein the at least one closed container comprises a plurality of closed containers (Addition of partition 31 creates plurality of closed containers as in Fig. 4; Col. 6, Lines 40-50). Iwasa et al. fails to explicitly disclose wherein the total weight of the particles in one closed container is less than 100 grams. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of being lightweight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding Claim 8, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1. Iwasa et al. fails to explicitly disclose wherein the film has a thickness (Film 12 with upper 121 and lower 122; Fig. 5) between 10 μm and 1 mm. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of reducing space, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 15, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwasa et al. (US 5744763 A) in view of Hoffrichter et al. (US 2006/0096814 Al)
Regarding Claim 15, Iwasa et al. discloses a method of producing the automotive noise attenuating trim part according to claim 2, comprising:
shaping the vessel part to form the defined void volume by thermal molding, blow molding, vacuum molding, injection molding, compression molding, additive manufacturing or 3D printing (111 forming 12 shaped by blow molding; Col. 13, Lines 5-25; Fig. 5, 22);
filling the defined void volume with loose particles (Filled in Fig. 25 with granules/particles G; Col. 13, Lines 20-40);
laminating the film to a rim of the vessel part to form a closed container filled with loose particles (In structure of 111 with 112/113 being heat sealed at edges; Col. 13, Lines 35-45; Fig. 26);
Iwasa et al. fails to explicitly disclose providing a porous layer with a recess that corresponds to the shape of the closed container (Shape of 111; Fig. 26); and inserting the closed container into the recess. However, Hoffrichter et al. teaches a layer with a recess that corresponds to the shape of the closed container and inserting the closed container into the recess (Hoffrichter: See layer 5 and 10 with recess corresponding to container 1/2 when inserted; Para. 0020-0023, 0041; Fig. 8,11). Hoffrichter et al. and Iwasa et al. are in similar fields comprising vehicle noise reducing panels with loose particles. Modifying Iwasa et al. with teachings of Hoffrichter et al. would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention wherein a layer with a recess that corresponds to the shape of the closed container and inserting the closed container into the recess for the purpose of absorbing friction-induced vibrations and functioning as a wear indicator (Hoffrichter: Para. 0004-0006, 0021).
Iwasa et al. as modified by Hoffrichter et al. fails to explicitly disclose a layer as a porous layer. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of being a commonly used material to absorb noise, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 20, Iwasa et al. discloses noise attenuating trim part of a vehicle comprising (vehicle (Sound proofing material 10/40 on engine hood/trim 14 of vehicle; Col. 4, Lines 55-65; Fig. 5,12): a plurality of containers that are partly filled with loose particles that can freely move inside each container (Containers holding 11 between walls 31 in Fig. 4. Rubber grains of 11 vibrate finely; Col. 5, Lines 35-50), whereby each container is closed by an impervious film having a contact surface configured to contact a vibrating surface of the vehicle (Film 12 with surface 121 contacts hood 14 to prevent noise from escaping outside; Col. 5, Lines 30-50; Col. 7, Lines 5-15. Engine hoods vibrate during use), and whereby a surface of the film opposite the contact surface is configured to selectively contact at least a portion of the loose particles (Contact surface 121 towards 122 contacts particles 11; Fig. 5), wherein the film is configured to transfer vibrational energy from the vibrating surface to the loose particles (Col. 5, Lines 35-50).
Iwasa et al. fails to explicitly disclose a porous layer having a plurality of recesses that receive a plurality of containers that are partly filled with loose particles that can freely move inside each container (Grains of 11 move freely within 31; Fig. 4) and wherein the contact surfaces associated with each of the containers is flush with a section of an outer surface of the porous layer. However, Hoffrichter et al. teaches a porous layer having a plurality of recesses that receive a plurality of containers that are partly filled with loose particles that can freely move inside each container and wherein the contact surfaces associated with each of the containers is flush with a section of an outer surface of the porous layer (Hoffrichter: See layer 5 and 10 with recess corresponding to container 1/2 when inserted; Para. 0020-0023, 0041; Fig. 8,11. Flush in Fig. 11). Hoffrichter et al. and Iwasa et al. are in similar fields comprising vehicle noise reducing panels with loose particles. Modifying Iwasa et al. with teachings of Hoffrichter et al. would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention wherein a layer having a plurality of recesses that receive a plurality of containers that are partly filled with loose particles that can freely move inside each container and wherein the contact surfaces associated with each of the containers is flush with a section of an outer surface of the porous layer for the purpose of absorbing friction-induced vibrations and functioning as a wear indicator (Hoffrichter: Para. 0004-0006, 0021). Iwasa et al. as modified by Hoffrichter et al. fails to explicitly disclose a layer as a porous layer. However, this would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of being a commonly used material to absorb noise, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 21, Iwasa et al. as modified by Hoffrichter et al. disclose noise attenuating trim part according to claim 20, wherein each container is comprised of a vessel part configured to maintain a defined container volume (Containers holding 11 between walls 31 in Fig. 4), and wherein the impervious film is interconnected to an open end of the vessel part to form the closed container (Film 12 with surface 121; Fig. 5. 121 when open 112 in Fig. 25).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwasa et al. (US 5744763 A) in view of McCorry et al. (US 5,851,626)
Regarding Claim 18, Iwasa et al. discloses the automotive noise attenuating trim part according to claim 1. Iwasa et al. fails to explicitly disclose wherein the film is deformable and configured to adapt to an uneven shape (111 forming film 12 formed blow molding to any shape; Col. 13, Lines 45-50) of the vibrating surface (14; Fig. 5) of the vehicle. However, McCorry et al. teaches wherein the film is deformable and configured to adapt to an uneven shape of the vibrating surface of the vehicle (McCorry: Films 28/30 of 26 create compressible pockets 32 positioned against uneven shape of surface 40 of vehicle; Col. 3, Lines 24-40; Col. 4, Lines 1-10; Fig. 4). McCorry et al. and Iwasa et al. are in similar fields comprising vehicle noise reducing panels. Modifying Iwasa et al. with teachings of McCorry et al. would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention wherein the film is deformable and configured to adapt to an uneven shape of the vibrating surface of the vehicle for the purpose of decoupling and vibrational energy dissipation vertical or angled walls of the vehicle (McCorry: Col. 4, Lines 5-10).
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 JENNIFER B OLSON whose telephone number is (571)272-3041. The examiner can normally be reached Monday - Friday, 8:00am -4:00pm.
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/JENNIFER B OLSON/Examiner, Art Unit 2837
/FORREST M PHILLIPS/Primary Examiner, Art Unit 2837