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 § 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.
Claim 10-16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "the outer surface" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 11 and 12 recite “the windshield cover as in claim 1”; this is unclear, as claim 1 has been cancelled. When applying prior art, Examiner interprets these claims to be dependent on claim 10.
Claim 11 recites the limitation "the visible area" in line 16. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 14 recite “the windshield cover as in claim 3”; this is unclear, as claim 3 has been cancelled. When applying prior art, Examiner interprets these claims to be dependent on claim 12.
Claim 15 recites “the windshield cover as in claim 1”; this is unclear, as claim 1 has been cancelled. When applying prior art, Examiner interprets this claim to be dependent on claim 12 to correct the antecedent basis issue in line 3 regarding “the caps”.
Claim 16 recites :the windshield cover as in claim 1”; this is unclear, as claim 1 has been cancelled. When applying prior art, Examiner interprets this claim to be dependent on claim 10.
Claim 16 recites the limitation "the mounting assemblies" in line 1. There is insufficient antecedent basis for this limitation in the claim.
The term “generally” in claim 16 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim recites “mounting assemblies are each generally a pair of c-clips or snap rings”; it is not clear if the mounting assemblies always include one of the c-clips or snap rings, or if there are embodiments in which the features are excluded. When applying prior art, Examiner interprets this limitation to mean “the mounting assemblies each comprise”.
In lines 2-4 of claim 16, the recitation “said connective member coupling the c-clips or snap rings, said mounting assemblies attaching to either the frame or vehicle windshield frame by detachable means” is unclear and confusing. It is believed the limitation is meant to describe the connection between the c-clips, the mounting assemblies, and the frame or vehicle windshield frame. When applying prior art, Examiner interprets this limitation as “said c-clips or snap rings receiving said mounting assemblies and said connective members coupling the c-clips or snap rings to either the frame or vehicle windshield frame by detachable means”.
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.
Claim 10, as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Schur (US Pat 2,271,099) in view of Woldemariam (US PG Pub 2021/0129634).
Regarding claim 10, as understood, Schur discloses a windshield cover for a vehicle, comprising: a roll 4 of transparent plastic film 2; a windshield track assembly 3, being a rectangular frame fixedly attached to the outer surface of a vehicle windshield 1, said windshield track assembly 3 being configured to receive plastic film 2 on a side closest to the windshield 1 so that the plastic film 2 will remain close to, but not in direct contact with, the windshield 1 (see Figure 2; Col. 2, lines 10-16); two housing units 5, 8 removably attached to a windshield support frame 10 of the vehicle (see Figures 1-2; Col. 2, lines 16-22), said housing units 5, 8 being generally cylindrical in shape and having a slit 13, 14 on one side of the housing unit 5, 8 (see Figures 1-2; Col. 2, lines 26-32), said units 5, 8 being configured to retain the roll of plastic film 2 and to allow the roll of plastic film 2 to pass through the slit 13, 14 as the plastic film 2 unrolls (see Figure 2; Col. 2, lines 26-32), said housing units 5, 8 being further configured to allow the roll of plastic film 2 to roll or unroll around a spool 4, 7 within the housing units 5, 8 (see Figure 2; Col. 2, lines 26-32); and an actuator 16 within each of the housing units 5, 8 in mechanical connection with and being configured to mechanically rotate the spool 4, 7 (see Figures 1-2; Col. 2, lines 44-55).
Schur fails to disclose the actuator receives electricity; and a button within an inside of the vehicle, said button being in electrical communication with a power source and the actuators so that the actuators receive electricity when the button is being pressed.
Woldemariam discloses a windshield cover assembly 10 having a curtain 20 wrapped around a spool 12 that moves from a stored position to a deployed position covering a windshield 18 by the actuation of a motor 24 using a control 30 having buttons 32, 34 and a power source 38, or "electrical component" (see Figure 1; Paragraphs 19-20 and 22). The buttons 32, 34, when pressed, cause the spool to rotate up or down, moving the curtain 20 and are located inside the vehicle (see Figure 1; Paragraph 22).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct actuators of Schur to rotate the spool when the actuators receive electricity, with a reasonable expectation of success, as taught by Woldemariam, to automate the rotation and allow the user to easily move the windshield cover without having to touch the soiled cover or exert any excess force.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to include a button on the inside of the vehicle of Schur, as modified by Woldemariam, in electrical communication with a power source and the actuators such that the actuators receive electricity when the button is being pressed, with a reasonable expectation of success, as taught by Woldemariam, to allow the user to easily move the windshield cover without having to touch the soiled cover or exert any excess force.
Claim 11, as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Schur, as modified by Woldemariam twice, in view of Middleton (US Pat 5,344,206).
Regarding claim 11, as understood, Schur, as modified by Woldemariam twice, discloses the windshield cover as in claim 10, wherein the windshield track assembly 3 further comprises: a top portion, a bottom portion, two side portions 3a, 3b; said top and bottom portions having a generally rectangular surface and being elongated across a central area of the windshield 1; said top portion, bottom portion, and side portions being made of translucent material (see Col. 2, lines 40-43); said top portion, bottom portion, and side portions 3a, 3b being attached to the windshield 1 by fixed means (see Figure 1; Col. 2, lines 32-34); said top portion, side portions, and bottom portion having a flat top side (see Figure 2); said side portions 3a, 3b being attached to the windshield 1 by fixed means in an orientation perpendicular to the top and bottom portions, said side portions 3a, 3b being configured to create a flush rectangular area between the top, bottom, and side portions (see annotated Figure 1 below and Figure 2; Col. 2, lines 32-40); said flush rectangular area between the top, bottom, and side portions being the visible area (see annotated Figure 1 below; Col. 2, lines 32-43).
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Schur, as modified by Woldemariam twice, fail to disclose spaced apertures in the windshield track assembly and said top and bottom portions having a bottom side with a routed edge creating ridges, said ridges having a concave and convex portion, the concave portion of said ridges being oriented towards a middle section of the track assembly.
Middleton discloses a retractable windshield cover 10 having a rectangular frame 14, or "track assembly", that attaches to the right and left sides of a vehicle frame (see Figure 1; Col. 7, lines 10-15). The rectangular frame 14, or "track assembly", has spaced apertures in which a screw 34 is positioned to allow the length of the rectangular frame 14, or "track assembly", to be adjusted to fit different vehicles (see Figures 1-2; Col. 5, lines 51-57; Col. 6, lines 1-6). The top and bottom portions each having a routed edge creating a slot 28, 40, or "ridge", oriented toward a middle section of the rectangular frame 14, or "track assembly" (see Figures 1-3; Col. 5, lines 44-65).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the track assembly of Schur, as modified by Woldemariam twice, having spaced apertures, with a reasonable expectation of success, to allow the track assembly to be telescopic to adjust to different vehicle sizes, as taught by Middleton.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the top and bottom portions of Schur, as modified by Woldemariam twice and Middleton, each having routed edges with ridges oriented toward a middle section of the track assembly, with a reasonable expectation of success, to provide a guide for the windshield cover, as taught by Middleton.
The claimed phrase "by any means capable of creating small apertures in a windshield" is being treated as a product by process limitation; that is the end product of Schur, as modified by Woldemariam twice and Middleton twice (with reference to creating small apertures in end product). As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
Claims 12 and 14, as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Schur, as modified by Woldemariam twice, in view of Barhorst et al. (US Pat 3,454,300) and Yang (US Pat 5,845,956) .
Regarding claim 12, as understood, Schur, as modified by Woldemariam twice, discloses the windshield cover as in claim 10, wherein the housing units 5, 8 further comprise: an outer portion, a hinge 6, 9, and an inner portion (see Figures 1-2; Col. 2, lines 16-25); said outer portion having a thin vertical opening 13, 14 permitting the thin plastic 2 to pass through (see Figure 2; Col. 2, lines 26-32).
Schur, as modified by Woldemariam twice, fails to disclose a top cap and a bottom cap each having internal threading and the outer portion having external threading at both ends that corresponds to the internal threading of said caps.
Barhorst et al. disclose a windshield cover assembly 32 having a housing unit 34 with removable top and bottom caps 44 (see Figure 1; Col. 2, lines 50-65).
Yang discloses a windshield cover having a housing 14 having an outer portion 14 with external threading 12B and a cap 31 having internal threading such that the cap and the outer portion matingly engage corresponding threading (see Figure 2; Col. 3, line 56-Col. 4, line 4; Col. 5, lines 34-40).
It would have been obvious to one of ordinary skill of the art before the earliest effective filing date of the claimed invention to construct the housing units of Schur, as modified by Woldemariam twice, with a top cap and a bottom cap, with a reasonable expectation of success, to protect the components in the inner portion, as taught by Barhorst et al..
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the top and bottom caps of Schur, as modified by Woldemariam twice and Barhorst et al., having internal threading and the outer portion having external threading to matingly engage corresponding threading, with a reasonable expectation of success, as taught by Yang, to provide a means of securing the top and bottom caps that is removable and doesn’t required additional hardware.
Regarding claim 14, as understood, Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, disclose the windshield cover as in claim 12 having top and bottom caps.
Schur, as modified by Barhorst et al. twice, Woldemariam, and Yang, fails to disclose the top and bottom caps comprising: a rod bearing removably attached to the central portion of the caps, configured to engage with the rod and secure the rod within the housing units.
Barhorst et al. disclose a windshield cover assembly 32 having a housing unit 34 with removable top and bottom caps 44 (see Figure 1; Col. 2, lines 50-65). The top and bottom caps 44 have a rod bearing 50 removably attached to a central portion 52 of the caps 44 to engage a rod 62.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to removably attach a rod bearing to a central portion of the top and bottom caps of Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, with a reasonable expectation of success, to hold a rod in place while allowing for rotation, as taught by Barhorst et al..
Claim 13, as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, in view of Barhorst et al., Jacob et al. (US Pat 5,467,266), and Kim (US Pat 8,069,597).
Regarding claim 13, as understood, Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, discloses the windshield cover as in claim 12 having an inner portion.
Schur, as modified by Barhorst et al. twice, Woldemariam, and Yang, fails to disclose a rod, elongated between and removably attached to the caps; two film guides, being circular pieces of material removably attached to the ends of the inner portion just below the external threading; said film guides having an aperture in the center being disposed over the rod; two film holders, being cylindrical material configured to be disposed within the opening of a spool of standard plastic film; said film holders having a hollow inner portion allowing for the holders to be disposed over the rod; said film holders being removably attached to the rod and abutting the film guides; and said film holders being located closer to the middle of the internal section than the film guides.
Barhorst et al. disclose a windshield cover assembly 32 having a housing unit 34 with a rod 60, elongated between and removably attached to caps 44 (see Figure 2; Col. 3, lines 1-8).
Jacobs et al. disclose a window cover disposed on a roller having two film guides 119, 120; said film guides 119, 120 having an aperture in the center being disposed over a rod 113, 114 (see Figure 6); two film holders 111, 112, being cylindrical material configured to be disposed within the opening of a spool of standard plastic film; said film holders 111, 112 having a hollow inner portion allowing for the holders 111, 112 to be disposed over the rod 113, 114; said film holders 111, 112 being removably attached to the rod 113, 114 and abutting the film guides 119, 120; said film holders 111, 112 being located closer to a middle of the internal section than the film guides 119, 120.
Kim discloses a roller board having a film 1 disposed on a spool 2 with circular film guides 23 and circular film holders 25 (see Figures 1-2; Col. 3, lines 21-28; Col. 6, lines 48-60).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the inner portion of the housing units of Schur, as modified by, Woldemariam twice, Barhorst et al., and Yang, with an elongated rod disposed between and removably attached to the top and bottom caps, with a reasonable expectation of success, to securely hold the roll of plastic film in the housing unit, as taught by Barhorst et al..
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the inner portion of the housing units of Schur, as modified by Woldemariam twice, Barhorst et al. twice and Yang, with two film guides removably attached just below the external threading, with a reasonable expectation of success, as taught by Jacobs et al., to keep the plastic roll in place while it rotates.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the two film guides of Schur, as modified by Woldemariam twice, Barhorst et al. twice, Yang, and Jacob et al., as circular pieces of material, with a reasonable expectation of success, as taught by Kim, to allow the film guide to easily fit in the housing unit without affecting the rotation of spool.
It would have been obvious to one of ordinary skill in the art the art before the earliest effective filing date of the claimed invention to construct the inner portion of the housing units of Schur, as modified by Woldemariam twice, Barhorst et al. twice, Yang, Jacob et al., and Kim, having two film holders in the shape of a cylinder, being disposed in an opening of the spool of plastic film closer to a middle section of the inner portion than the film guides, and having a hollow inner portion to be disposed over the rod, with a reasonable expectation of success, as taught by Jacob et al., to guide the plastic film as it unrolls and ensure it unrolls in a straight line across the windshield.
Claim 15, as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, as applied to claim 12 above, and further in view of Woldemariam.
Regarding claim 15, Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, discloses the windshield cover as in claim 12, wherein the actuator comprises: a rod 15, elongated and removably attached to the caps (see Figures 1-3; Col. 2, lines 44-52); a coupler 16, removably attached to a rod 15 (see Figures 1 and 3; Col. 2, line 44-52), a ratchet gear 17, removably attached to the coupler 16, said ratchet gear 17 being configured to rotate the rod 15 (see Figure 3; Col. 2, line 44-Col. 3, line 4).
Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, fails to disclose a small motor and the rachet gear is connected to and powered by a motor, and the motor causes the ratchet gear to rotate when powered.
Woldemariam discloses a windshield cover assembly 10 having a curtain 20 wrapped around a spool 12 that moves from a stored position to a deployed position covering a windshield 18 by the actuation of a motor 24 using a control 30 having buttons 32, 34 and a power source 38, or “electrical component” (see Figure 1; Paragraphs 19-20 and 22). The buttons 32, 34, when pressed, cause the spool to rotate up or down by the motor, moving the curtain 20 and are located inside the vehicle (see Figure 1; Paragraph 22).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to connect the ratchet gear of Schur, as modified by Woldemariam twice, Barhorst et al., and Yang, to a small motor such that the ratchet gear rotates when the motor is powered, with a reasonable expectation of success, as taught by Woldemariam, to automate the process of moving the spool and enable a user to move the spool from within the vehicle without having to touch the soiled cover.
Claim 16, as understood, is rejected under 35 U.S.C. 103 as being unpatentable over Schur, as modified by Woldemariam twice, in view of Lee (KR 20150003175).
Regarding claim 16, as understood, Schur, as modified by Woldemariam twice, discloses the windshield cover as in claim 10, wherein a mounting assembly to attach the housing units 5, 8 to the vehicle body (see Figures 1-2; Col. 2, lines 16-25).
Schur, as modified by Woldemariam twice, fails to disclose the mounting assemblies each comprise a pair of c-clips or snap rings and a connective member, said connective member coupling the c-clips or snap rings, said mounting assemblies attaching to either the frame or vehicle windshield frame by detachable means, said mounting assemblies configured to receive the housing units and removably attach the housing units to the frame or vehicle windshield frame.
Lee discloses a windshield cover 15 for a vehicle 100 with a housing unit 20 having a mounting assemblies 30 comprising a pair of snap rings 32a and a connective member 32c (see Figure 4; Paragraphs 31 and 34), said connective member 32c coupling the snap rings 32a to the vehicle windshield frame by detachable means 31 (see Figure 4; Paragraph 34), said mounting assemblies 30 configured to receive the housing unit 20 and removably attach the housing unit 20 to the vehicle windshield frame (see Figure 6; Paragraphs 31 and 38).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the housing units of Schur, as modified by Woldemariam twice, with mounting assemblies comprising a pair of snap rings and a connective member, wherein the connective members couple the snap rings to the vehicle windshield frame by detachable means and the snap rings receive the housing units to attach the housing units to the vehicle windshield frame, with a reasonable expectation of success, to provide a secure and removable means of mounting the housing to the vehicle, as taught by Lee.
Response to Arguments
In the response, filed October 2, 2025, Applicant filed amended claims, cancelling claims 1-9. The previously presented rejections have been withdrawn, as the previously rejected claims have been cancelled.
On page 4 of Remarks, filed October 2, 2025, Applicant asserts that “Examiner’s rejections are conclusory and unsupported”. Examiner respectfully disagrees. Examiner specifically maps each recited feature set forth in each claim to features in the prior art references presented and provides a reason to combine the cited references (a more thorough explanation is provided below, in paragraph 15 of this Office action), making the rejection reasonable and meeting the “prima facie” standard set forth by the Office.
On page 5 of Remarks, filed October 2, 2025, Applicant asserts that “Examiner failed to show a reasonable motivation to combine”. Although the previous rejections have been withdrawn, the new rejections made under 35 USC 103 are presented in a similar format and Examiner would direct attention to this format to demonstrate that a motivation to combine is, in fact, present in each of the presented rejections. Examiner formats the 103 rejection beginning “Regarding claim…” to show that a base reference includes certain limitations of the recited claim language. In the following paragraph, Examiner outlines what limitations are not included in the prior art reference. In a third paragraph, Examiner includes the features of a teaching reference. Finally, in a fourth paragraph, Examiner includes a statement about how a teaching is applied to a base reference of the prior art, including a reason for the teaching, or motivation to combine the references. This is the format of each 35 USC 103 rejection made in this and the previous Office action.
On page 6 of Remarks, filed October 2, 2025, Applicant asserts that “Examiner’s rejections rely on non-analogous prior art”. Applicant additionally asserts “Here, the application is directed to protecting the vision of a vehicle operator, specifically in recreational vehicles. The examiner cites to multiple references directed to providing shading from the sun to conventional passenger vehicles.” Examiner respectfully disagrees with Applicant’s assertion that the prior art presented is not analogous. The main reference relied upon, Schur, is a cover for a windshield, which is the direct application of current invention. There is not a substantial difference between the function or use of a windshield for a recreational vehicle and a passenger vehicle and the same windshield cover could be used in either application, making the art analogous. Examiner also points to the disclosure of Schur, which states “Besides being useful in connection with automobile windshields, the instant invention may be applied to the windshields of such conveyances as aircraft, electric, and steam trains, etc. It is to be understood, therefore, that the windshields of such other conveyances are considered to be the equivalents of an automobile windshield and that the expression “automobile windshield” used in the appended claims is to be construed pursuant to the doctrine of equivalents, as embracing the windshields of such other conveyances” (see Col. 4, lines 11-21). The teaching references used as prior art are also related to window coverings, car covers, or windshield covers, making them analogous to the current invention and properly applied.
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 VERONICA M CONDO whose telephone number is (571)272-9415. The examiner can normally be reached Mon-Fri 8am-3pm EST.
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/VERONICA M CONDO/Examiner, Art Unit 3612
/AMY R WEISBERG/Supervisory Patent Examiner, Art Unit 3612