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 .
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 (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 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 1, 3, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shannon et al. US 2020/0262491.
Regarding claim 1, and with reference to THE FIRST INTERPRETATION of Shannon et al. US 2020/0262491 as shown in annotated Fig. 1 below, Shannon et al. disclose:
A side sill (annotated Fig. 1 below; labeled in the top right corner of the figure) for a vehicle, comprising:
a side sill inner panel (annotated Fig. 1 below; labeled near the top left corner of the figure);
a side sill outer panel (annotated Fig. 1 below; labeled near the top right corner of the figure) coupled to the side sill inner panel;
a first cushioning member (annotated Fig. 1 below; labeled in the bottom left corner of the figure) disposed between the side sill inner panel and the side sill outer panel and constituting a plurality of closed cross-sections (annotated Fig. 1 below; where a first and a second closed cross section of the plurality of closed cross sections are labeled at the right edge of the figure and identified by oval shapes in the figure) arranged in a width direction (such direction is pointed out at the bottom center of annotated Fig. 1 below) of the side sill and
a second cushioning member (annotated Fig. 1 below; labeled near the bottom center of the figure) inserted into one of the plurality of closed cross-sections (namely the first closed cross section of the plurality of closed cross sections which is labeled at the right edge of the figure and identified by an oval shape in the figure) of the first cushioning member and extending in the width direction of the first cushioning member (as can be seen in annotated Fig. 1 below),
wherein the first cushioning member includes a main body (annotated Fig. 1 below; labeled at the top center of the figure) formed from a single piece of material which is a thin as compared to its length, i.e., a “plate”, and at least one partition member (annotated Fig. 1 below; labeled near the lower area of the right edge of the figure) connecting both surfaces (annotated Fig. 1 below; where the surfaces, as broadly as recited, are labeled at the upper right edge and the lower right edge of the figure and where they are upward and downward turned edges of the first cushioning member, i.e., flanges thereof) of the main body and
a plurality of beads are formed on the main body (annotated Fig. 1 below; labeled at the left edge of the figure) and the partition member (the beads of the partition member are shown in annotated Fig. 1, pointed out by four small ovals near the right edge of the figure and labelled near the bottom right corner of the figure).
Regarding the product by process limitation of “formed by bending a single plate”, recited on the second and third to last lines of claim 1, the claimed product is the same as the product of the prior art reference Shannon et al. where the first cushioning member main body is made up of a single thin piece of material and:
“[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.
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Regarding claim 1, and with reference to THE SECOND INTERPRETATION of Shannon et al. US 2020/0262491 as shown in annotated Fig. 1 below, Shannon et al. disclose:
A side sill (annotated Fig. 1 below; labeled in the top right corner of the figure) for a vehicle, comprising:
a side sill inner panel (annotated Fig. 1 below; labeled near the top left corner of the figure);
a side sill outer panel (annotated Fig. 1 below; labeled near the top right corner of the figure) coupled to the side sill inner panel;
a first cushioning member (annotated Fig. 1 below; labeled in the bottom left corner of the figure) disposed between the side sill inner panel and the side sill outer panel and constituting a plurality of closed cross-sections (annotated Fig. 1 below; where a first and a second closed cross section of the plurality of closed cross sections are labeled at the right edge of the figure and identified by oval shapes in the figure) arranged in a width direction (such direction is pointed out at the bottom center of annotated Fig. 1 below) of the side sill and
a second cushioning member (annotated Fig. 1 below; labeled near the bottom center of the figure) inserted into one of the plurality of closed cross-sections (namely the first closed cross section of the plurality of closed cross sections which is labeled at the right edge of the figure and identified by an oval shape in the figure) of the first cushioning member and extending in the width direction of the first cushioning member (as can be seen in annotated Fig. 1 below),
wherein the first cushioning member includes a main body (annotated Fig. 1 below; labeled at the top center of the figure) formed from a single piece of material which is a thin as compared to its length, i.e., a “plate”, and at least one partition member (annotated Fig. 1 below; labeled near the lower area of the right edge of the figure) indirectly connecting both surfaces (annotated Fig. 1 below; where the surfaces, as broadly as recited, are labeled at the top right edge and the bottom left edge of the figure) of the main body, and
a plurality of beads are formed on the main body (annotated Fig. 1 below; labeled at the left edge of the figure) and the partition member (the beads of the partition member are shown in annotated Fig. 1, pointed out by four small ovals near the right edge of the figure and labeled near the bottom right corner of the figure).
Regarding the product by process limitation of “formed by bending a single plate”, recited on the second and third to last lines of claim 1, the claimed product is the same as the product of the prior art reference Shannon et al. where the first cushioning member main body is made up of a single thin piece of material and:
“[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.
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Regarding claim 3 and using THE SECOND INTERPRETATION of Shannon et al. as explained above with respect to parent claim 1, Shannon et al. disclose:
The side sill of claim 1, wherein the main body (annotated Fig. 1 above; labeled at the top center of the figure) includes a support surface (annotated Fig. 1 above; labeled on the bottom left edge of the figure) that is located opposite to an open portion of the (U-shaped) main body (annotated Fig. 1 above; labeled at the top center of the figure) and located between the both surfaces (in that the support surface connects both surfaces) and the support surface of the main body and the partition member (annotated Fig. 1 above; labeled near the lower area of the right edge of the figure) are spaced apart from each other to form a first closed cross-section (annotated Fig. 1 above, labeled on the right edge of the figure and circled) between the support surface and the partition member.
Regarding claim 6 and using either THE FIRST INTERPRETATION or THE SECOND INTERPRETATION of Shannon et al., as explained above with respect to parent claim 1, Shannon et al. disclose:
The side sill of claim 1, wherein a thickness of the plate constituting the main body (annotated Fig. 1 above; labeled at the top center of the figure) is thicker than that of the plate constituting the partition member (annotated Fig. 1 below; labeled near the lower area of the right edge of the figure. See para. [0039], lines 4-5.
Regarding claim 7 and using THE SECOND INTERPRETATION of Shannon et al., as explained above with respect to parent claim 1, Shannon et al. disclose:
The side sill of claim 1, wherein the plurality of beads of the main body (annotated Fig. 1 above; labeled at the left edge of the figure) extend in the width direction of the side sill from both surfaces (annotated Fig. 1 above; where the surfaces, as broadly as recited, are labeled at the top right edge and the bottom left edge of the figure) of the main body and are arranged spaced apart from each other along a longitudinal direction of the main body, as can be seen in annotated Fig. 1 above.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shannon et al. US 2020/0262491 in view of Watanabe et al. US 10,988,181.
Regarding claim 10 and using either THE FIRST INTERPRETATION or THE SECOND INTERPRETATION of Shannon et al., as explained above with respect to parent claim 1,
Shannon et al. disclose the claimed invention including that the sills (rockers) are made of steel. See paragraph [0020].
However, Shannon et al. do not disclose that the steel is an ultra high strength steel of 980 MPa or more.
Notwithstanding, Watanabe et al. disclose that sill components may be made of ultra high strength steel of 980 MPa or more. See column 5, lines 25-31.
Therefore, it 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 to construct the steel plate of the first cushioning member of Shannon et al. from an ultra high strength steel of 980 MPa or more as taught by Watanabe et al. with a reasonable expectation of success in order to provide greater strength to the sill during side impacts.
Allowable Subject Matter
Claims 9 and 13-18 are allowed.
Claims 4, 5, 8, 11, 12 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The recitation in claim 4 of wherein a length of the partition member in a height direction is formed equal to a length in a height direction between both surfaces in the support surface of the main body is not taught nor fairly suggested by the prior art of record. The partition member (annotated Fig. 1 below; labeled near the lower area of the right edge of the figure) of Shannon et al. 2020/0262491 is longer in a height direction that a height of both surfaces (of either interpretation of claim 1 set forth above).
The recitation in claim 5 of wherein a flange provided on the main body is bonded to the side sill inner panel is not taught nor fairly suggested by the prior art of record. The main body (annotated Fig. 1 above; labeled at the top center of the figure) of Shannon et al. 2020/0262491 does not have flanges at the side sill inner panel.
The recitation in claim 8 of wherein the plurality of beads of the partition member extend in a height direction of the side sill is not taught nor fairly suggested by the prior art of record. None of the beads of Shannon et al. 2020/0262491 extend in a height direction of the side sill.
The recitation in claim 11 of wherein the second cushioning member is disposed in a second closed cross-section formed between the first cushioning member and the side sill inner panel is not taught nor fairly suggested by the prior art of record. The second cushioning member (annotated Fig. 1 above; labeled near the bottom center of the figure) of Shannon et al. 2020/0262491is located in the first closed cross-section not the second closed cross section (both the first and second closes cross sections being identified in annotated Fig. 1 above.
Claims 12 and 19 are considered to contain allowable subject matter at least due to their dependence upon claim 11 which contains allowable subject matter.
The recitation in claim 9 of at least one of the plurality of partition members being disposed between a portion where the bead is formed on one side and a portion where the bead is formed on the other side within the main body is not shown nor fairly suggested by the prior art of record. This relationship between the partition member and the beads formed on the main body is not present in Takashina et al. US 6,409,257, Shannon et al. US 2020/0262491 or Kato et al. US 2019/0248416.
The recitation in claim 13 that the plurality of beads extending in the width direction of the side sill and arranged spaced apart from each other along a length direction of the second cushioning member are formed on the second cushioning member is not shown nor fairly suggested by the prior art of record. The second cushioning member 27 (Figs. 3 and 5) of Kato et al. US 2019/0248416 does not have beads.
The recitation in claim 14 that the second cushioning member is formed of a cylindrical member is not shown nor fairly suggested by the prior art of record. The second cushioning member 27 (Figs. 3 and 5) of Kato et al. US 2019/0248416 is a bent plate.
Claims 15-17 are considered to contain allowable subject matter at least due to their ultimate dependence upon claim 14 which contains allowable subject matter.
The recitation in claim 18 of wherein the second cushioning member is disposed in a second closed cross-section formed between the first cushioning member and the side sill inner panel is not taught nor fairly suggested by the prior art of record. The second cushioning member (annotated Fig. 1 above; labeled near the bottom center of the figure) of Shannon et al. 2020/0262491is located in the first closed cross-section not the second closed cross section (both the first and second closes cross sections being identified in annotated Fig. 1 above.
Applicant’s arguments filed 10/28/25 with respect to the rejections based upon Shannon et al. US 2020/0262491 of claims 1, 3, 6, 7 and 10 have been fully considered and are persuasive. Therefore, the rejections has been withdrawn. However, upon further consideration, two new interpretations of Shannon et al. are presented in the rejections of claims 1, 3, 6, 7 and 10, as explained in detail above, for consideration by Applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph D. Pape whose telephone number is (571)272-6664. The examiner can normally be reached Monday to Friday 7 AM-3:30 PM.
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/Joseph D. Pape/Primary Examiner, Art Unit 3612