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 .
Response to Amendment
The amendments to Claims 1,3-6,9, in the submission filed 11/21/2025 are acknowledged and accepted.
Cancellation of Claims 2,10, is acknowledged and accepted.
New Claims 11-16 are acknowledged and accepted as the subject matter of the claims is similar to the originally filed claims.
Pending Claims are 1,3-9,11-16.
Response to Arguments
Applicant's arguments (Remarks, filed 11/21/2025, pages 5-6) with respect to claims 1-2, 7-8, have been considered, but are moot in view of the amended claims and the new grounds of rejection in view of Shigeru et al.
Applicant's arguments (Remarks, filed 11/21/2025, pages 6-7) with respect to claims 3-5,9, have been considered, but they are not persuasive.
a) There is no description anywhere in Sato indicating that transparency is present in skeleton 51, ribs 56 or substrate 52 which are separate from transparent skin member 53.
Sato recites (para 62) “The skin 53 is formed of a thermoplastic resin material such as a polycarbonate resin, a polyethylene resin, or an ABS resin material, which may be the same as or different from the resin material of the skeleton 51 or the substrate 52.”. This teaches that the skeleton 51 which comprises the ribs 56 or substrate 52 are made of the same transparent material as the skin 53. This indicates that transparency is present in skeleton 51, ribs 56 or substrate 52 which are separate from transparent skin member 53.
In view of the above arguments, rejection of claims is upheld.
Claims 1,3-9,11-16 are rejected as follows:
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 7,11, as best understood, 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 7 recites “second base portion”. It is not clear whether it is the base portion of the reflective design portion or whether there are two base portions in the reflective design portion and it is the second base portion of the reflective design portion being recited. For the purposes of examination, second base portion is considered to be the base portion of the reflective design portion.
Claim 11 recites “wherein the back surface portion is configured to reflect the at least part of light transmitted at the back surface portion where the unevenness is formed such that the light emitted from the front surface portion has a shade of color.” It is not clear whether the entire back surface portion is transmitting and reflecting light which creates a shade of color or whether parts of back surface portion reflect the transmitted light differently and creates a shade of color. From the current specification (para 48), it appears that the light reflected by the rib portion 66 is smaller than the light reflected by the base portion 64 which creates shades of colors. For the purposes of examination, different parts of back surface portion reflect the transmitted light differently and create a shade of color.
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.
Claim(s) 1, 7, 8,12,16, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shigeru et al (JP 61-132445, of record).
Regarding Claim 1, Shigeru teaches (fig 2,9d, 9e) an exterior member (transparent decorative body of a front grille of an automobile, page 4) having a light transmitting property, comprising:
a reflective design portion (brightening treatment portion 14 provided on the front surface of bright member 11, pages 3-4, fine quadrangular pyramids, page 7, 2nd para, fig 9d,e) having unevenness (fine quadrangular pyramids, page 7, 2nd para, fig 9d,e) provided on a front surface portion (front surface of bright member 11, fig 2) of the exterior member (transparent decorative body of a front grille of an automobile, page 4) that is a side where light is incident from a light source located outside (light incident from outside, page 4), the unevenness reflecting at least a part of light from the light source (‘the light is reflected by the brightening treatment portion of the bright member”, page 4); and
a transmissive design portion (fine quadrangular pyramids formed on both surfaces , page 7, 2nd para, fig 9d,e) provided on a back surface portion (back surface of bright member 11) of the exterior member (transparent decorative body of a front grille of an automobile, page 4) that is an opposite side to the side where light is incident from the light source located outside, and the transmissive design portion having unevenness (fine quadrangular pyramids formed on both surfaces , page 7, 2nd para, fig 9d,e) being configured to partially change a transmission amount of light,
wherein a design is different between the unevenness of the reflective design (fine quadrangular pyramids, page 7, 2nd para, fig 9d,e, formed on front surface of bright member 11) portion and the unevenness of the transmissive design portion (fine quadrangular pyramids, page 7, 2nd para, fig 9d,e, formed on the back surface of bright member 11) (shifting the pitches of the concave and convex portions formed on the surfaces, page 7, para 5).
Regarding Claim 7, Shigeru teaches the exterior member according to claim 1.
wherein the reflective design portion (brightening treatment portion 14 provided on the front surface of bright member 11, pages 3-4, fine quadrangular pyramids, page 7, 2nd para, fig 9d,e) includes a second base portion (bright member 11 without the unevenness, page 4) and a retraction portion (grooves on fine quadrangular pyramids, page 7, 2nd para, are considered as retractions) that retracts from the second base portion (bright member 11 without the unevenness, page 4) to an inner side in a thickness direction of the exterior member (transparent decorative body of a front grille of an automobile, page 4).
Regarding Claim 8, Shigeru teaches a vehicle (automobile, page 4) comprising:
an exterior part including the exterior member (transparent decorative body of a front grille of an automobile, page 4) according to claim 1.
Regarding Claim 12, Shigeru teaches the exterior member according to claim 1,
wherein the exterior member (transparent decorative body of a front grille of an automobile, page 4) is configured as a single material from the front surface portion (front surface of bright member 11, page 4) to the back surface portion (front surface of bright member 11).
Regarding Claim 16, Shigeru teaches a vehicle comprising an exterior part including the exterior member according to claim 1,
wherein in a state where the exterior part (front grille of an automobile, page 4) is attached to the vehicle, the front surface portion (front surface of bright member 11, fig 2) is disposed to expose outward of the vehicle (as in fig 2), and the back surface portion (back surface of bright member 11, fig 2) is disposed to face an interior space of the vehicle (as in fig 2).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeru et al (JP 61-132445, of record) in view of Sato et al (US 2022/0055708 A, of record).
Regarding Claim 3, Shigeru teaches the exterior member according to claim 1.
However, Shigeru does not teach
wherein the transmissive design portion includes a first base portion and a rib portion protruding from the first base portion to a thickness direction of the exterior member.
Shigeru and Sato are related as external members with transmissive design portions.
Sato teaches (fig 1, 5),
wherein the transmissive design portion (front center cowl 23a includes a substrate 52, and a skin 53, para 58) includes a first base portion (substrate 52, para 58) and a rib portion (skeleton 51, para 58, ribs 56, para 59) protruding from the first base portion (substrate 52, para 58) to a thickness direction of the exterior member (“a cowl 13 attached to the vehicle body frame 12”, para 47, “a front cowl 23 covering the front of the head pipe 14”, para 48).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the transmissive portion of Shigeru to include the transmissive design portion of Sato for the purpose of utilizing a decorative molded component (para 6).
Claim(s) 4, 11, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeru et al (JP 61-132445, of record).
Regarding Claim 4, Shigeru teaches the exterior member according to claim 1,
wherein the reflective design portion and the transmissive design portion (fine quadrangular pyramids formed on both surfaces, page 7, 2nd para, fig 9d,e) each have an uneven shape.
However, Shigeru does not teach
the transmissive design portion has an amount of unevenness greater than an amount of unevenness of the reflective design portion.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). The unevenness of the design portions can be in a range of values. An increase in transmissive design unevenness over the reflective design results in sturdier external member but makes the reflectance less. A decrease in transmissive design unevenness over the reflective design results in less sturdy external member but makes the device reflective of externa light. Therefore, relative unevenness of the transmissive and reflective design portions is a result effective variable.
One would have chosen the transmissive design portion having an amount of unevenness greater than an amount of unevenness of the reflective design portion according to a result effective variable balancing the need to improving sturdiness while maintaining reflectivity.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to optimize the relative unevenness. One would have been motivated to have the transmissive design portion having an amount of unevenness greater than an amount of unevenness of the reflective design portion to have an optimal unevenness balancing a desired sturdy member and desired reflectivity of external light and from destruction of the member.
Regarding Claim 11, Shigeru teaches the exterior member according to claim 1.
However, one embodiment of Shigeru does not teach
wherein the back surface portion is configured to reflect the at least part of light transmitted at the back surface portion where the unevenness is formed such that the light emitted from the front surface portion has a shade of color.
One embodiment (page 4, line 1) of Shigeru and another embodiment (alternate in page 4, line 1) of Shigeru are related as exterior members.
Another embodiment (alternate in page 4, line 1) of Shigeru teaches
wherein the back surface portion (back surface of bright member 11, pages 3-4) is configured to reflect the at least part of light transmitted at the back surface portion (brightening treatment portion 14 provided on the back surface of bright member 11, pages 3-4) where the unevenness (fine quadrangular pyramids, page 7, 2nd para, fig 9d, e) is formed such that the light emitted from the front surface portion has a shade of color (Because the structure of the claimed system, as identified above and in the original action, is the same as that claimed, it must inherently perform the same function and having the back surface portion reflect light provides same structure as claimed and hence it would provide different shade of color). See MPEP § 2112.01.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the external member of Shigeru to back surface portion reflecting light of another embodiment for the purpose of providing brilliant optical effects (page 4).
Claim(s) 5,13, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeru et al (JP 61-132445, of record) in view of Bacon et al (US 5,614,286 A, of record).
Regarding Claim 5, Shigeru teaches the exterior member according to claim 1.
However, Shigeru does not teach
wherein the reflective design portion includes an embossed structure on the front surface portion.
Shigeru and Bacon are related as external members with reflective design portions.
Bacon teaches (fig 1, 5),
wherein the reflective design portion (“A polymethyl methacrylate cube corner retroreflective sheeting was then laminated”, col 17, lines 12-15, cube corner segments 12, col 6, lines 47-50) includes an embossed structure on the front surface portion (“.For example, too1 162 can be pressed against conformable carrier layer 52 at a pressure”, col 9, lines 34-39)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the reflective portion of Shigeru to include the reflective design portion of Bacon for the purpose of utilizing a common method of manufacturing conformable reflective designs (col 9, lines 34-39).
Regarding Claim 13, Shigeru teaches the exterior member according to claim 1.
However, Shigeru does not teach
wherein the unevenness of the front surface portion and the unevenness of the back surface portion are formed by molding.
Shigeru and Bacon are related as external members with reflective design portions.
Bacon teaches (fig 1, 5),
wherein the unevenness is formed by molding (“pressing the sheet onto the molding surface of the tool to thereby form a plurality of cube corner segments”, col 4, lines 28-29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of forming unevenness of Shigeru to include molding technique of Bacon for the purpose of utilizing a common method of manufacturing conformable designs for multiple uses (col 2, lines 50-55).
Claim(s) 6,9,14, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeru et al (JP 61-132445, of record) in view of Wei et al (US 6,972,147 B1, of record).
Regarding Claim 6, Shigeru teaches the exterior member according to claim 1.
However, Shigeru does not teach
wherein the exterior member contains a coloring material that absorbs the light transmitting the exterior member.
Shigeru and Wei are related as external members.
Wei teaches (fig 1),
wherein the exterior member (retroreflective sheeting article, col 11, lines 61-65) contains a coloring material (UV light absorbing polymer and a fluorescent colorant, col 11, lines 61-65) that absorbs the light transmitting the exterior member (retroreflective sheeting article, col 11, lines 61-65).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the external member of Shigeru to include the coloring material of Wei for the purpose of UV light resistant articles (col 1, lines 1-25).
Regarding Claim 9, Shigeru teaches (fig 2,9d, 9e) an exterior member (transparent decorative body of a front grille of an automobile, page 4) having a light transmitting property, comprising:
a front surface portion (front surface of bright member 11, page 3-4) that is a side where light is incident from a light source located outside (light incident from outside, page 4) and having unevenness (fine quadrangular pyramids, page 7, 2nd para, fig 9d, e); and
a back surface portion (back surface of bright member 11, page 3-4) that is an opposite side to the side where light is incident from the light source located outside (light incident from outside, page 4) and having unevenness (fine quadrangular pyramids formed on both surfaces, page 7, 2nd para, fig 9d,e),
wherein a design (fine quadrangular pyramids, page 7, 2nd para, fig 9d,e, formed on the back surface of bright member 11) is different between the unevenness of the front surface portion and the unevenness of the back surface portion (shifting the pitches of the concave and convex portions formed on the surfaces, page 7, para 5).
However, Shigeru does not teach
the exterior member contains a coloring material and is formed as being translucent.
Shigeru and Wei are related as external members.
Wei teaches (fig 1),
wherein the exterior member (retroreflective sheeting article, col 11, lines 61-65) contains a coloring material (UV light absorbing polymer and a fluorescent colorant, col 11, lines 61-65) and is formed as being translucent.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the external member of Shigeru to include the coloring material of Wei for the purpose of UV light resistant articles (col 1, lines 1-25).
Regarding Claim 14, Shigeru-Wei teaches the exterior member according to claim 6.
However, Shigeru-Wei do not teach
wherein transmittance of the exterior member is 20% or less.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). The transmittance of the exterior member can be in a range of values. An increase in transmittance results in most of the outside light transmitting but makes the device difficult to be seen. A decrease in transmittance results in increase in opacity but makes the device discerning for optical effects. Therefore, the transmittance of the exterior member is a result effective variable.
One would have chosen the transmittance to be 20% or less according to a result effective variable balancing the need to improving interesting optical effects with optical device opaque.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to optimize the transmittance of the exterior member. One would have been motivated to have the transmittance of the exterior member to be in the claimed range to have an optimal transmission of light balancing a desired optical effect and opacity.
Claim(s) 15, is/are rejected under 35 U.S.C. 103 as being unpatentable over Shigeru et al (JP 61-132445, of record) in view of Wei et al (US 6,972,147 B1, of record) and further in view of Nakagawa et al (US 2018/0230328 A1).
Regarding Claim 15, Shigeru-Wei teaches the exterior member according to claim 6.
However, Shigeru-Wei does not teach
wherein the coloring material is a black colorant.
Shigeru-Wei and Nakagawa are related as coloring materials.
Nakagawa teaches (fig 1),
wherein the coloring material is a black colorant (“wherein the coloring material is a black colorant”, para 22).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the external member of Shigeru-Wei to include the black coloring material of Nakagawa for the purpose of having a color or tone which can be seen as the outer surface of the external member (para 22).
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 JYOTSNA V DABBI whose telephone number is (571)270-3270. The examiner can normally be reached M-Fri: 9:00am-5:00pm.
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/JYOTSNA V DABBI/Primary Examiner, Art Unit 2872 2/10/2026