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 .
Drawings
The drawings are replete with objectionable matter and are objected to under 37 CFR 1.83(a). The following are merely non-limiting examples of issues found in the drawings, the applicant must find and address all others.
Replacement Sheet fig. 1 added New Matter via the dimensions and placement of element 20 as a non-limiting example.
The drawings must show every feature of the invention specified in the claims. Therefore, the:
“and/or a sealing lip for bearing against a window pane” must be shown. In replacement fig. 1, this function doesn’t appear possible (note that 6b from the original drawings was removed).
These features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 17-21, 24-28, and 31 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 pre-AIA the applicant regards as the invention.
Regarding Claim 17, in light of the replacement drawings removing element 6b from the original drawings, it is unclear how the limitation comports with the disclosure such that scope becomes unclear - “and/or a sealing lip for bearing against a window pane”. It doesn’t appear that the element disclosed can meet this limitation of claim 17.
Regarding Claim 31, “the expansion element” is indefinite, is it referring back to the already introduced “an expansion element” from claim 17 or claim 28. Note that “an expansion element” is introduced in claim 17, and “an expansion element” is once again introduced in claim 28 which depends from claim 17, thereby introducing what seems to be 2 expansion elements such that “the expansion element” in claim 31 is indefinite. Please clarify.
All claims depending from a rejected claim are rejected for including the subject matter therefrom.
Claim Rejections - 35 USC § 102
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 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 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 17-21, 23-25 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zwolinski et al. (US 20060000181).
Regarding Claim 17, Zwolinski teaches:
A sealing profile (10; fig.’s 2 and 3 for example) for a motor vehicle, comprising: a sealing portion (62/64/etc.; see fig.’s 2 and 3 for example); and a fastening portion (everything to the left of 64 in fig. 3; including 80/46/42/etc.), wherein the fastening portion has at least two projecting fastening members (at 42 and 46 for example), between which a receptacle (50) for [intended use] an expansion element (such as 82) is arranged, wherein the sealing portion has a retention member (such as but not limited to where 61 or 68 points) for insertion into a window channel and/or (only one option of the ‘or’ clause need meet the limitation, also note the limitation is intended use via the ‘for’ clause) a sealing lip for bearing against a window pane (it meets the intended use language as so broadly claimed), wherein, viewed in a longitudinal direction of the sealing profile (see annotated fig. 2 below), the fastening members overlap at least partially with the retention member (as can be understood via the annotated fig. 2 below, when viewed from the edge in the longitudinal direction such as from the numeral 62 towards the face surface of 62, the at least the bottom halves of 42 and 46 would be hidden due to the fact that these three elements claimed (retention member and fastening members) are in line along the longitudinal direction; it is noted that multiple directions can be interpreted with the broadest reasonable interpretation as the longitudinal direction as claimed since ‘longitudinal’ very broadly means ‘of or relating to length’ [see definition below] and a length can be defined 3-dimensionally in any of the 3 directions when interpreted with the broadest reasonable interpretation).
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lon·gi·tu·di·nal
(lŏn′jĭ-to͞od′n-əl, -tyo͞od′-, lôn′-)
adj.
1.
a. Of or relating to longitude or length: a longitudinal reckoning by the navigator; made longitudinal measurements of the hull.
b. Concerned with the development of persons or groups over time: a longitudinal study of twins.
2. Placed or running lengthwise: longitudinal stripes.
lon′gi·tu′di·nal·ly adv.
American Heritage® Dictionary of the English Language, Fifth Edition. Copyright © 2016 by Houghton Mifflin Harcourt Publishing Company. Published by Houghton Mifflin Harcourt Publishing Company. All rights reserved.
Regarding Claim 18,
The sealing profile according to claim 17, wherein the fastening members have a free end (at their tops where 80 contacts) and a reducing cross section (note legs 42 and 46 have a smaller width ‘reduced cross section’ than the width between 50 and 44 or 50 and where 20 points in fig. 4 for example as a non-limiting example) in one region in a direction away from the free end (the legs 42/46 extend in a direction away from the top surface free end where 80 lays). Note that this is merely one non-limiting example since this is so broadly claimed and that this could also be interpreted such that the bottoms of 42/46 are considered the free end and the top could be interpreted as the reduced cross section at the location of the widest point of the circular receptacle. There are also other interpretation that would meet this limitation as so broadly claimed.
Regarding Claim 19,
The sealing profile according to claim 18, wherein the region with the reducing cross section is formed at [‘at’ meaning ‘near or in the vicinity of’] a transition of the fastening members to a bearing surface (bearing surfaces such as 48 for example, or the surfaces that bear/support 48) of the fastening portion. Again, the scope as claimed is very broad and is being interpreted with the broadest reasonable interpretation as claimed.
Regarding Claim 20,
The sealing profile according to claim 17, wherein the receptacle for the expansion element has a cross section that widens toward an open end of the receptacle (as seen in annotated fig. 4 below - note that the embodiment of fig. 4 also reads on 17 and 20 in a similar manner as described above that embodiment of fig.’s 2 and 3 does and can also be used to reject said claims, or fig. 4 can be used merely as demonstration of the embodiment of fig.’s 2 and 3 as well).
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Regarding Claim 21,
The sealing profile according to claim 19, wherein at least one of the fastening members or the bearing surface is molded onto the sealing portion (as described in paragraph 0060; note that the embodiment of fig.’s 4-6 also apply to the parent claims herein in a similar manner that the embodiment of fig.’s 2 and 3 were rejected above). Note that interchangeability of the rejection between the two embodiments applies throughout the rejection herein as these are all non-limiting examples.
Regarding Claim 24,
The sealing profile according to claim 17, wherein the retention member projects in a common direction with the fastening members. They all have projections in the longitudinal direction of annotated fig. 2 above which is a common direction as one non-limiting example. Note they also project in the width-wise direction, etc.
Regarding Claim 25,
The sealing profile according to claim 17, wherein the fastening portion is part of a molded edge that is molded onto the sealing portion (as understood via paragraph [0060] or is overmolded as an insert by a molding. Note again that only one clause of the ‘or’ clause need be taught by the prior art.
The examiner further notes that the method of forming an apparatus [int his case as claimed by ‘molded’ is not germaine to patentability of apparatus itself. Even 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 [R-1] Product-by-Process Claims
PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE
MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE
IMPLIED BY THE STEPS
"[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations.)
ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS
FOUND AND A 35 U.S.C. 102 /103 REJECTION MADE, THE BURDEN
SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). 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 difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal
silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be "essentially free of alkali metal." The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not "essentially free of alkali metal" and therefore a different and unobvious product.). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (The prior art disclosed human nerve growth factor (b-NGF) isolated from human placental tissue. The claim was directed to b-NGF produced through genetic engineering techniques. The factor produced seemed to be substantially the same whether isolated from tissue or produced through genetic engineering. While the applicant questioned the purity of the prior art factor, no concrete evidence of an unobvious difference was presented. The Board stated that the dispositive issue is whether the claimed factor exhibits any unexpected properties compared with the factor disclosed by the prior art. The Board further stated that the applicant should have made some comparison between the two factors to establish unexpected properties since the materials appeared to be identical or only slightly different.).
THE USE OF 35 U.S.C. 102 /103 REJECTIONS FOR PRODUCT-BY-
PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
II. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the
apparatus is indefinite under 35 U.S.C. 112, second paragraph. In Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990), a claim directed to an automatic transmission workstand and the method steps of using it was held to be ambiguous and properly rejected under 35 U.S.C. 112, second paragraph.
Such claims should also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a "process" nor a "machine," but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551.
Regarding Claim 27,
The sealing profile according to claim 25, wherein the molding is made of TPE (see paragraph [0048]) or EPDM. Again note that only one of the clauses of an ‘or’ clause need be taught by the prior art.
Claim Rejections - 35 USC § 102/103
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 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 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.
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 of this title, 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.
Claims 26 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Zwolinski as applied above; or, in the alternative, under 35 U.S.C. 103 as obvious over Zwolinski as applied.
Regarding Claim 26,
Although the disclosure of Zwolinski repeatedly discuses the use of many thermoplastics as being appropriate for use, all of the elements are discussed above except explicitly teaching the molded edge is made of polypropylene.
Therefore the examiner directs attention to the fact that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, it would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to use polypropylene for its suitable and well know purpose of being a versatile plastic with heat resistant, non-toxic properties in order to endure hot days in a vehicle and prevent toxicity exposure in use.
Claim Rejections - 35 USC § 102
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 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 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 17, 28, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nivet (US 5868370).
Regarding Claim 17, Nivet teaches:
A sealing profile (see fig.’s 1 and 3 for example) for [intended use] a motor vehicle (26/27 is for a vehicle sun visor), comprising: a sealing portion (the cavity/bore portion 21/22 - note the term ‘portion’ is very broad and being interpreted as such with the broadest reasonable interpretation); and a fastening portion (10A/10B/20/17/18/14/etc.), wherein the fastening portion has at least two projecting fastening members (formed by 17, 14 and 10A/10B respectively), between which a receptacle (21) for [intended use] an expansion element (such as 3) is arranged (as seen from fig. 1 resulting in fig. 3); wherein the sealing portion has a retention member (such as 4) for [intended use] insertion into a window channel (it only need be capable of being inserted into a window channel at any time due to the extreme broad nature of the intended use term ‘for’) and/or (broadest option is the ‘or’ clause of the ‘and/or’ recitation and only one option of an ‘or’ clause is required to be taught or able to perform the intended use) a sealing lip for [intended use] bearing against a window pane, wherein, viewed in a longitudinal direction of the sealing profile, the fastening members overlap at least partially with the retention member (as seen via 4 and 17 for example in fig. 1).
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Regarding Claim 28,
A sealing arrangement comprising: the sealing profile according to claim 17; a motor vehicle part (26/27 a fastening support of a vehicle sun-visor) that has a through hole (as seen in fig. 3, where the sealing profile passes through) through which the fastening members of the sealing profile project (as depicted in fig. 3); and an expansion element (3) arranged in the receptacle between the fastening members to [functional/intended use] push the fastening members apart so as to fix the sealing profile on the motor vehicle part (as seen in fig. 3).
Regarding Claim 31, the expansion element has a decreasing cross section in a longitudinal direction toward a free end (as seen in fig. 3 between the head and the shaft).
Response to Arguments
Applicant’s arguments with respect to all pending claims have been considered but are not found persuasive or moot because the arguments do not apply to the current rejection as applied now.
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 extension fee 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 date of this final action.
Contact Information:
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P CAHN whose telephone number is (571)270-5616. The examiner can normally be reached on M-F 10-8.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NAMRATA BOVEJA can be reached on (571) 272-8105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL P CAHN/ Supervisory Patent Examiner, Art Unit 3634