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 .
Specification
The amendment filed 28 February 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The incorporation by reference of the international patent application and of the foreign patent application is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 14 September 2021, see MPEP 1893.03(b). Therefore, the specification amendment of 28 February 2023 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action. This does not affect the ability to amend to incorporate unintentionally omitted subject matter. It is possible to incorporate by reference at the filing date of the international application by including the incorporation by reference text in the specification at the time of filing the international application.
Appropriate correction is required.
The abstract is objected to because it includes the term “means-for-connecting.” According to MPEP §1826, the abstract should not contain legal phraseology such as "said" and "means."
The specification is objected to because:
at ¶111, “resin 3” should be corrected to –resin 9--.
at ¶130, “means-for-connecting 2” should be corrected to --means-for-connecting--. Element 2 is the heater.
Drawings
The drawings are objected to because in Fig 5, what appears to be a cable or cord outside of the trim part is indicated as element 2, which is a heating element. The heating elements are generally described as inside the trim part, so there appears to be an error with the part number. The label “2” for each of the four cables shown in Figs 5A-5D may simply be removed. 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 Objections
Claims 1-12 and 16 are objected to because of the following informalities:
Throughout the claims, 15 instances of “whereby” should be corrected to –wherein--.
In claim 1, “Automotive” should be corrected to –An automotive--.
In claim 2, “the permeable layer” should be corrected to –the air permeable layer-- to maintain consistent wording.
In claim 6, “rein” should be corrected to –resin--.
In claim 11, “the air permeable fibrous layer” should be corrected to --the air permeable layer— to maintain consistent wording.
Appropriate correction is required.
Claim Interpretation
Claim 14 is interpreted to require one element from the list, not one of each element from the list.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Limitation “means-for-connecting” is interpreted under 112(f).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. See MPEP 2173.05(q).
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 1-16 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.
Claim 1 at line 4 and the last line recites the limitation “the adjacent layers.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. Although the claim previously recites “the heating element is between the facing layer and the air permeable layer,” this does not require that these layers are adjacent. Claim 2 also recites “the adjacent layers” and is rejected for the same reason.
Claim 1 at line 6 recites “the material of the adjacent layer or layers.” There is insufficient antecedent basis for a material or adjacent layers in the claim, rendering the claim indefinite.
Claim 2 recites “the exit area.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. This rejection may be overcome by removing this limitation and amending this portion of the claim, in part, to read --a cut-out for locating the means-for-connecting--.
Claim 3 recites “adjacent fibrous material.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. This may refer to a material of the air permeable layer. However, it is not clear what the material must be adjacent to.
Claim 3 recites “the rim.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. This may be a portion opposite a connector, but that is not sufficiently clarifying. Additional clarification is needed beyond changing “the” to “a.”
Claim 3 recites “the material.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. Additional clarification is needed beyond changing “the” to “a.”
Claim 3 recites “the connector.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. This may be referring to the “means-for-connecting” or may require an additional component.
Regarding claims 4-10 and 15 the words/phrases “preferably,” “like,” and "for instance" render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 recites “the trim part further comprises additional layers at least one…” This lacks a transition, such as “comprising” or “consisting of” to clarify how the list limits the layers.
Claim 9 recites “the cut-out.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. This limitation is introduced in claim 2.
Claim 11 recites “at least a glue layer.” It is unclear whether this means “at least one glue layer” or “a glue layer and potentially any other element, not specifically a glue layer.”
Claim 11 recites “the face layer.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. For the purpose of examination, the limitation has been interpreted as and may be corrected to –the facing layer--. Claim 12 also recites “the face layer” and requires corresponding correction.
Claim 15 is directed to “Use of the trim part.” The claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). See MPEP 2173.05(q).
Claim 16 has numerous 112(b) issues that might best be addressed by returning the claim to dependent form. It is permissible to have a method claim depend from an apparatus claim.
Claim 16 recites “the automotive trim part.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. For the purpose of examination, the limitation has been interpreted as and may be corrected to --an automotive trim part--.
Claim 16 at line 8 and at the last line recites the limitation “the adjacent layers.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. Although the claim previously recites “the heating element is between the facing layer and the air permeable layer,” this does not require that these layers are adjacent.
Claim 16 at line 8 and at the last clause recites “the material of the adjacent layer or layers.” There is insufficient antecedent basis for a material or adjacent layers in the claim, rendering the claim indefinite.
Claim 16 recites “A method… comprising providing… and further comprising means-for-connecting.” It is unclear what method step is implied by the means for connecting, or, alternatively, what structure comprises the means for connecting.
Claim 16 at line 11 recites “a heating element, and a fibrous layer.” The claim previously recites “providing at least an air permeable fibrous layer, a facing layer and a heating element.” It is unclear whether these refer to the same elements or require additional instances.
Claim 16 at line 17 recites “a resin.” The claim previously recites “a resin.” It is unclear whether these refer to the same resin.
Claim 16 recites “the thermoplastic resin.” There is insufficient antecedent basis for this limitation in the claim, rendering the claim indefinite. It is unclear whether the claims recite a single thermoplastic resin, a single resin, or a thermoplastic resin and an unspecified resin.
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.
Claims 1, 4, 6, 8, 10, 11, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Diemer (US 2004/0036325).
Regarding claim 1, Diemer discloses:
Automotive trim part (¶3) with integrated heating device comprising at least an air permeable fibrous layer (¶45 “support 8 is a flexible layer of a fiber nonwoven with natural and/or synthetic fibers“), a facing layer (seat cover 5, ¶44) and a heating element (heating layer 7), whereby the heating element is between the facing layer and the air permeable layer (see Fig 1a) and materially connected to the adjacent layers (¶28 “bonded,” ¶46), and further comprising means-for-connecting (¶47, “contact terminals 9 and 10”) the heating element to a power supply (14, ¶51), characterized in that at least part of the means-for- connecting and at least part of the material of the adjacent layer or layers (¶46 “polyurethane, is applied to the fiber nonwoven by spraying…Alternatively, the film could also be applied to the seat cover 5”) are engulfed by a resin (polyurethane foam, ¶19) such that the means-for-connecting are at least partly encapsulated in the resin (see Fig 1a, ¶48 “The contact terminals 9 and 10 of the power supply wires 11 and 12 can be held in position just by the bonding forces between the polyurethane foam and the fiber nonwoven.”) and materially connected to the adjacent layers.
Regarding claim 4, Diemer discloses:
the resin is a thermoset or a thermoplastic resin (¶19, ¶10, ¶33).
Regarding claim 6, Diemer discloses:
the rein material further comprises fillers (carbon, ¶33, see claim 18).
Regarding claim 8, Diemer discloses:
the trim part further comprises additional layers at least one of a tufted carpet, nonwoven carpet, decorative layer, knit layer, a foam layer (elastic foam molded body 6), either slab foam or reaction injected foam, another fibrous layer, a thin nonwoven like a scrim or a closed or open film or an anti-skidding layer.
Regarding claim 10, Diemer discloses:
the facing layer is at least one of a tufted carpet, a nonwoven carpet, a textile fabric, like a knitted fabric, a faux-suede fabric or a woven fabric, a nonwoven fabric, a leather (¶44 “fabric, synthetic leather or leather”) or a closed cell foamed layer, a film, a foil, a thermoplastic polyurethane layer, or a flocked surface layer or any combination of such layers.
Regarding claim 11, Diemer discloses:
at least a glue layer is used between the face layer and the heating element (¶83 “If the heating layer is optionally produced on the support by a suitable process, then subsequently the heating layer by itself or already together with the support can optionally be bonded to … a covering by stitching, gluing”), and/or between the heating element and the air permeable fibrous layer.
Regarding claim 13, Diemer discloses:
the heating element is a metal based or a carbon based resistance element (¶33, ¶48).
Regarding claim 14, Diemer discloses:
the means-for-connecting comprises at least one of a cable, a plug, a connector, connecting points where wires are connected (¶50, “contact terminals 9 and 10 of the power supply wires 11 and 12”) a control device, and a sensor device.
Regarding claim 15, Diemer discloses:
Use of the trim part according to claim 1 as an interior part (seat heater).
Claims 1, 4, 7, and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haeglsperger (DE 10159814).
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Regarding claim 1, Haeglsperger discloses:
Automotive trim part with integrated heating device comprising at least an air permeable fibrous layer (decorative material 20 as fabric, ¶39), a facing layer (10) and a heating element (14), whereby the heating element (14) is between the facing layer (10) and the air permeable layer (5) and materially connected to the adjacent layers (by foam, ¶18 “no additional work steps are required”), and further comprising means-for-connecting (15) the heating element to a power supply, characterized in that at least part of the means-for- connecting (15) and at least part of the material of the adjacent layer or layers (¶41 “the carrier element 10, the heating element 14 and, if applicable, a decorative material 20 are placed in the foaming device”) are engulfed by a resin (polyurethane foam, ¶41) such that the means-for-connecting (15) are at least partly encapsulated (on the side facing inward) in the resin (foam) and materially connected to the adjacent layers (by foam).
Regarding claim 4, Haeglsperger discloses:
the resin is a thermoset or a thermoplastic resin (polyurethane).
Regarding claim 7, Haeglsperger discloses:
the air permeable layer is one of a felt, for instance a fibrous mat, or textile material (fabric 20, ¶39), for instance a spacer fabric or a carpet layer.
Regarding claim 13, Haeglsperger discloses:
the heating element is a metal based (¶23) or a carbon based resistance element.
Regarding claim 14, Haeglsperger discloses:
the means-for-connecting (15) comprises at least one of a cable, a plug, a connector, connecting points where wires are connected, a control device, and a sensor device.
Regarding claim 15, Haeglsperger discloses:
Use of the trim part according to claim 1 as an interior part (¶1-¶2, ¶29).
Regarding claim 16, Haeglsperger discloses:
A method of producing the automotive trim part with integrated heating device, comprising:
providing at least an air permeable fibrous layer (decorative material 20 as fabric, ¶39), a facing layer (10) and a heating element (14), whereby the heating element (14, see Fig 2) is between the facing layer (10) and the air permeable layer (20) and materially connected to the adjacent layers (¶41), and further comprising means-for-connecting (contact elements 15) the heating element to a power supply, characterized in that at least part of the means-for-connecting and at least part of the material of the adjacent layer or layers (20 and 10) are engulfed by a resin such that the means-for-connecting are at least partly encapsulated in the resin and materially connected to the adjacent layers (¶41);
stacking (see Fig 1) at least a heating element (14), and a fibrous layer (20), whereby the fibrous layer already has a dedicated region and/or cut-out for a connecting zone (it is connected to the foam on its inner face);
laminating the stacked layers together (¶41);
connecting the means-for-connecting to the heating element before the lamination step (as shown in Fig 1, ¶37), or after the lamination step; and
characterized in that the method further comprises the step of local injection molding a resin (polyurethane) to engulf at least part of the means-for-connecting and at least part of the material of the adjacent layer or layers by the resin (¶41) such that the means-for-connecting are at least partly encapsulated in the thermoplastic (It is not clear whether thermoplastic is required due to the indefiniteness in the claim. Polyurethane can be thermoplastic, but usually polyurethane foam is not. Haeglsperger gives polyurethan as an example, but other foams that are “pressure-resistant and yet have a soft feel” would be acceptable, see ¶27.) resin (see Fig 2) and materially connected to the adjacent layers (¶41).
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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Diemer (US 2004/0036325) in view of Liviken (WO 94/09684).
Regarding claim 12, Diemer does not disclose:
at least the glue layer between the face layer and the heating element is a polyurethane based glue or a polyester based glue.
Diemer discloses a glue (¶83) but does not specify the material.
Liviken teaches a glue foil for vehicle seats (p.9 line 35 – p.10 line 18), which glue is made of polyurethane (p.10 lines 18-20).
COMBINATION
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the trim part of Diemer by using a polyurethane glue, as taught by Liviken, because Liviken teaches that this is an appropriate glue for heated vehicle seats.
Allowable Subject Matter
Claims 2, 3, 5, and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miss (US 2018/0326817) teaches, for an electrical heater for a car, an overmolded electrically insulating plastic material 13 to increase the stability of the electrical contact element 7 (¶16) by supporting forces applied to the heating device (¶48).
Lewis (US 2012/0298653) discloses an electric heater with layers laminated together. A cutout accommodates a connector to avoid a local increase in thickness (¶126).
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Crump (US 2,938,992) discloses “an uncured resin may be applied as at 131 about the buses 18, 19 and 20 and associated portions of the mesh 13, to completely encapsulate and protect the terminal areas. This resin may be of the same composition as that used in layers 50 and may be cured at the same time as those layers.” It is not clear that Crump discloses “an air permeable fibrous layer.” Once the fabric or mesh is impregnated with resin and cured, it would likely no longer be air permeable.
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Pizzi (US 20200163161) discloses a heating element sandwiched between layers, the layers having a cut-out (¶74) to accommodate an electrical connector (13d, 14d, see Fig 7). A body 16 is over-moulded over the connector and layers to protect the electrical connection elements (¶75). Pizzi lacks an air permeable layer.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOPAZ L ELLIOTT whose telephone number is (571)270-5851. The examiner can normally be reached Monday-Friday 7 a.m. - 4 p.m. EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached on (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TOPAZ L. ELLIOTT/Primary Examiner, Art Unit 3761