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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/01/2026 has been entered.
Response to Amendment
Applicant’s arguments filed 05/01/2026 have been fully considered but they are not persuasive.
The applicant argues that the combination of Lin and Fukami would not produce a device in which the second marking unit is provided along the flange part in an annular manner surrounding the first marking unit and contains a light-emitting material or a reflective material. The applicant argues the combination of Lin and Fukami would not produce a device in which the first marking unit is fitted into a recess in the base member and is attachable to and detachable from the base member. The applicant also argues that Lin is fundamentally an active electrical device. Modifying Lin to incorporate Fukami's passive retroreflective and reflective elements would require removing or rendering superfluous Lin's core components: the drive circuit (32), sensor (33), illuminators (34), and power supply. The applicant further argues that the combination of Lin and Fukami would not produce the specific integrated structural configuration of amended claim 8 - a passive hole plug in which a retroreflective first marking unit is fitted into a recess of the base member and is detachable, while an annular second marking unit containing a light-emitting or reflective material is provided along the flange part surrounding the first marking unit. The examiner respectfully disagrees.
Lin (figures 7-11) discloses a vehicle-light marking tool as presented in claim 8 including a first marking unit (20; see at least paragraph 0027) that is provided at a position corresponding to the closing part on a front surface side of the base member, the first marking unit being configured to reflect incident light (the inner wall of light transmission plane 21 of the top cap 20 is provided with plural serrated reflection arrays 23; see at least paragraph 0027); and a second marking unit (11, 12) that is provided along the flange part in an annular manner and surrounds the first marking unit (20; figure 9) and emits light using the incident light or reflects the incident light. The examiner merely relies on Fukami (figures 11-16) for the teaching of the first marking unit containing a retroreflective material and being configured to reflect reflects incident light (the prism lens 20 has a smooth surface formed of transparent acrylic resin or the like, and has a chevron protrusion having a substantially right apex angle on the back surface, and refracts light incident from the front surface on the same surface, and then the chevron. It has a retroreflective property that reflects the light back in the incident direction by reversing the direction of the light by totally reflecting it twice on the inner surface of the protrusion and refracting the light in the reversed direction on the surface again; see at least paragraph 0041); and the second marking unit containing a light-emitting material and being configured to emit emits light using the incident light or the second marking unit containing a reflective material and being configured to reflect reflects the incident light (the reflective sheet 21 disposed around the prism lens 20 has an enlarged area as a mark; see at least paragraph 0044). 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 marking units as taught by Fukami in order to achieve high visibility and effectively perform the vehicle guidance function at night as well as in the daytime.
The examiner would like to draw the applicant’s attention to paragraph 0027 of Lin, which states that the inner wall of light transmission plane 21 of the top cap 20 is provided with plural serrated reflection arrays 23. In this embodiment, by means of said light refraction and reflection arrays 23, when the illuminators 34 of the light-emitting unit 30 are lightened, the light through the top cap 20 is refracted and diffused appropriately, and there is reflection effect when extraneous light comes in, there is dual caution effect of light emission and reflection.
The applicant should also note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claimed invention does not the marking tool to be a passive device.
In addition, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would recognize combining Lin, in view of Fukami, in order to achieve high visibility and effectively perform the vehicle guidance function at night as well as in the daytime.
The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
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 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.
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 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.
Claims 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (US 2018/0319322) in view of Fukami (JP 07305533).
Regarding claim 8, Lin (figures 7-11) discloses a vehicle-light marking tool comprising:
a base member (portions of 11-12) including a closing part that is inserted into a through-hole formed in a vehicle-constituting member and closes the through-hole (figures 10-11),
a flange part (12) that is formed integrally with the closing part and covers a peripheral part of the through-hole of the vehicle-constituting member, and
a locking part (11) as an attachment part that is formed integrally with the closing part and inserted into the through-hole and locked;
a first marking unit (20; see at least paragraph 0027) that is provided at a position corresponding to the closing part on a front surface side of the base member, the first marking unit being configured to reflect incident light (the inner wall of light transmission plane 21 of the top cap 20 is provided with plural serrated reflection arrays 23; see at least paragraph 0027); and
a second marking unit (11, 12) that is provided along the flange part in an annular manner and surrounds the first marking unit (20; figure 9) and emits light using the incident light or reflects the incident light,
wherein the first marking unit is fitted into a recess (as shown in figures 8-9) provided at a position corresponding to the closing part on the front surface side of the base member (portions of 11-12), and is attachable to and detachable from the base member.
Lin discloses the limitations as shown in the rejection of claim 8 above. However, Lin is silent regarding the first marking unit containing a retroreflective material and being configured to reflect incident light; and the second marking unit containing a light-emitting material and being configured to emit emits light using the incident light or the second marking unit containing a reflective material and being configured to reflect the incident light. Fukami (figures 11-16) teaches the first marking unit containing a retroreflective material and being configured to reflect reflects incident light (the prism lens 20 has a smooth surface formed of transparent acrylic resin or the like, and has a chevron protrusion having a substantially right apex angle on the back surface, and refracts light incident from the front surface on the same surface, and then the chevron. It has a retroreflective property that reflects the light back in the incident direction by reversing the direction of the light by totally reflecting it twice on the inner surface of the protrusion and refracting the light in the reversed direction on the surface again; see at least paragraph 0041); and the second marking unit containing a light-emitting material and being configured to emit emits light using the incident light or the second marking unit containing a reflective material and being configured to reflect reflects the incident light (the reflective sheet 21 disposed around the prism lens 20 has an enlarged area as a mark; see at least paragraph 0044). 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 marking units as taught by Fukami in order to achieve high visibility and effectively perform the vehicle guidance function at night as well as in the daytime.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Lin discloses the claimed invention except for the first marking unit being attachable to and detachable from the base member. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the first marking unit being attachable to and detachable from the base member, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Also, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the two elements separable in order to easily repair/access the inner parts of the device. In addition, the claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.” In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-97911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
