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
Response to Arguments
Applicant’s arguments with respect to claim 8 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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, 17-18, 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 (11) 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 at the flange part and emits light using the incident light or reflects the incident light.
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 reflects 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 reflects 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.
Regarding claim 17, Lin (figures 7-11) discloses wherein the second marking unit is attachable to and detachable from the base member.
“[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.
Regarding claim 18, Lin (figures 7-11) discloses wherein: a recess is provided at a position corresponding to the closing part on a front surface side of the base member, and the second marking unit is fitted into the recess (figure 11).
“[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.
Regarding claim 20, Lin (figures 7-11) discloses wherein the vehicle-constituting member is a vehicle door.
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 extension fee 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 date of this final action.
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 571-272-9791. 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