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 § 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.
Claims 1, 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Koga et al. US 2020/0164819 in view of JP 2006-240134.
Regarding claim 1, Koga et al. disclose:
A structural member (100; Fig. 2; “bumper beam” in para [0054], line 4) for a mobile (vehicle; abstract line 1) body having an elongated shape, the structural member comprising:
a first member (105; Fig. 2) including a first top plate, a pair of first vertical walls, a pair of first flanges, and a pair of first ridge portions (all of which are pointed out in annotated Fig. 2 below), and extending in a longitudinal direction of the structural member (in that Fig. 2 is a vertical cross section of the transversely extending bumper beam (100; Fig. 2)) the first vertical walls being disposed to face each other (as shown in annotated Fig. 2 below), end edges of the first vertical walls being connected to each other by the first top plate (as shown in annotated Fig. 2 below), the first flanges being disposed opposite to the first top plate with respect to the first vertical walls and protruding outward relative to the first vertical walls (as shown in annotated Fig. 2 below), the first ridge portions connecting the first vertical walls and the first flanges (as shown in annotated Fig. 2 below).
Furthermore, the first member (105; Fig. 2) of the structural member (100; Fig. 2) of Koga et al. is of a hat shaped or U shaped cross section with an open end facing forwardly of the vehicle as shown in annotated Fig. 2 below. This open end is closed by way of a closing panel disposed on an outer side (the side where an impact load (P; Fig. 2) is applied to the bumper beam 100; Fig. 2) of the mobile body relative to the first member, as pointed out in annotated Fig. 2 below.
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However, Koga et al. does not disclose that the structural member (100; Fig. 2) includes a second member including a second top plate, a pair of second vertical walls, a pair of second flanges, and a pair of second ridge portions, and extending in the longitudinal direction, the second top plate being disposed inside of the first vertical walls and facing the first top plate with a space between the second top plate and the first top plate, the second vertical walls being disposed along the first vertical walls inside of the first vertical walls, end edges of the second vertical walls being connected to each other by the second top plate, the second flanges being disposed opposite to the second top plate with respect to the second vertical walls, protruding outward relative to the second vertical walls, and being joined to the first flanges, the second ridge portions connecting the second vertical walls and the second flanges; and resin filled in between the second vertical walls, wherein the second member is disposed on an outer side of the mobile body relative to the first member.
Notwithstanding, and with reference to annotated Fig. 5 below which identifies various recited structural features, JP 2006-240134 discloses:
A structural member (see page 1, line 1 of the English language translation provided with the Office action of 3/2/26; “structural member for automobile”) for a mobile body (see the abstract) having an elongated shape (as indicated by the cross section shown in Fig. 5 along the length thereof, i.e., the structural member is taken to extend out of the page as the drawing is read in light of the cross section), the structural member comprising:
a first member (as shown in annotated Fig. 5 below) including a first top plate, a pair of first vertical walls, a pair of first flanges, and a pair of first ridge portions, and extending in a longitudinal direction of the structural member, the first vertical walls being disposed to face each other (as shown in annotated Fig. 5 below), end edges of the first vertical walls being connected to each other by the first top plate (as shown in annotated Fig. 5 below), the first flanges being disposed opposite to the first top plate with respect to the first vertical walls and protruding outward relative to the first vertical walls (as shown in annotated Fig. 5 below), the first ridge portions connecting the first vertical walls and the first flanges(as shown in annotated Fig. 5 below);
a second member (as shown in annotated Fig. 5 below) including a second top plate, a pair of second vertical walls, a pair of second flanges, and a pair of second ridge portions, and extending in the longitudinal direction, the second top plate being disposed inside of the first vertical walls (as shown in annotated Fig. 5 below) and facing the first top plate with a space between the second top plate and the first top plate (as shown in annotated Fig. 5 below), the second vertical walls being disposed along the first vertical walls inside of the first vertical walls (as shown in annotated Fig. 5 below), end edges of the second vertical walls being connected to each other by the second top plate (as shown in annotated Fig. 5 below), the second flanges being disposed opposite to the second top plate with respect to the second vertical walls (as shown in annotated Fig. 5 below), protruding outward relative to the second vertical walls (as shown in annotated Fig. 5 below), and being joined to the first flanges (as shown by “X” marks therethrough in annotated Fig. 5 below), the second ridge portions connecting the second vertical walls and the second flanges (as shown in annotated Fig. 5 below); and
resin (as shown in annotated Fig. 5 below; as disclosed in the abstract provided by Examiner, the DESCRIPTION section, lines 1-5, where the filling can be various types of resins) filled in between the second vertical walls (also, see claim 1 of the machine translation provided by applicant).
Furthermore, the first member (annotated Fig. 5 below) of the structural member of JP 2006-240134 is of a hat shaped or U shaped cross section with an open end facing downwardly in annotated Fig. 2 below. This open end is closed by way of a closing panel, as pointed out in annotated Fig. 5 below.
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A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The JP 2006-240134 reference is considered to be relevant art in that the JP 2006-240134 reference is in the same field of endeavor, namely that which pertains vehicle structural members, as the Koga et al. reference.
Therefore, it 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 to provide the structural member of Koga et al. with a reinforcement structure in the form of a second member including a second top plate, a pair of second vertical walls, a pair of second flanges, a pair of second ridge portions and a resin filled in between the second vertical walls, where such reinforcement structure is positioned between the first member and the closing panel of Koga et al., and where such closing panel is disposed on an outer side of the mobile body relative to the first member so that the second member is also disposed on an outer side of the mobile body relative to the first member, as taught by JP 2006-240134 with a reasonable expectation of success to improve rigidity and provide collision safety. Motivation provided in the last paragraph of page 1 of the English language translation of JP 2006-240134 provided with the Office action of 3/2/26.
Regarding claim 3, Koga et al., as modified by JP 2006-240134, discloses:
The structural member according to claim 1, as explained above, wherein a filling height of the resin is equal to the positions of ends of the second ridge portions close to the second vertical walls, i.e., where the second ridge portions connect to the second vertical walls. See in annotated Fig. 5 of JP 2006-240134 above where the fill of the resin does not extend beyond the second flanges so that “the resin is equal to the positions of ends of the second ridge portions close to the second vertical walls”.
Regarding claim 9, Koga et al., as modified by JP 2006-240134, discloses:
The structural member according to claim 1, wherein the resin is filled in between the second vertical walls (as shown in annotated Fig. 5 above of JP 2006-240134) at a portion (where the cross section shown in annotated Fig. 5 above represents a “portion” of the second member along the structural member) of the second member in the longitudinal direction (the structural member is taken to extend in and out of the page as the drawing is read in light of the cross section in Fig. 5 above of JP 2006-240134).
Claims 2, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Koga et al. US 2020/0164819, as modified by JP 2006-240134, as applied above to claim 1.
Regarding claim 2, Koga et al., as modified by JP 2006-240134, discloses:
The structural member according to claim 1, as explained above, except for the specific size of each gap formed between the first vertical walls and the second vertical walls is 2.0 mm or less.
However, section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Therefore, it 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 to construct the structural member of Koga et al., as modified by JP 2006-240134, where a size of each gap formed between the first vertical walls and the second vertical walls is 2.0 mm or less with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 6, Koga et al.,, as modified by JP 2006-240134, discloses:
The structural member according to claim 1, as explained above, except wherein assuming a height of the second vertical walls as H2 and a height of the first vertical walls as H1 in a direction perpendicular to both the longitudinal direction and the direction in which the first vertical walls face each other, H2/H1 is more than 1/12.
However, it 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 to construct the structural member of Koga et al., as modified by JP 2006-240134, wherein assuming a height of the second vertical walls as H2 and a height of the first vertical walls as H1 in a direction perpendicular to both the longitudinal direction and the direction in which the first vertical walls face each other, H2/H1 is more than 1/12 with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 7, Koga et al., as modified by JP 2006-240134, and as further modified above with respect to claim 6, discloses:
The structural member according to claim 6, as explained above, except wherein H2/H1 is 1/2 or less.
However, it 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 to construct the structural member of Koga et al., as modified by JP 2006-240134, and further modified above with respect to claim 6, where H2/H1 is 1/2 or less with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Koga et al. US 2020/0164819, as modified by JP 2006-240134, as applied above to claim 1, and further in view of Yokoi et al. US 10,703,417.
Regarding claim 4, Koga et al., as modified by JP 2006-240134, discloses:
The structural member according to 1, as explained above, except wherein the second top plate includes a protruding portion that protrudes in a direction opposite to the first top plate and that extends in the longitudinal direction.
However, Yokoi et al. discloses (as can be seen in annotated Fig. 3 below) a pillar (10; Figs 2 and 3), i.e., a “structural member” having a first member (12; Figs. 2 and 3) with a first top plate (annotated Fig. 3 below) and a second member (16; Figs 2 and 3) having a protruding portion (annotated Fig. 3 below) that protrudes in a direction opposite to the first top plate (as can be seen in annotated Fig. 3 below) and that extends in the longitudinal direction in that it extends along the second member 16 which is shown in Fig. 2 as extending in a longitudinal direction with respect to its largest dimension of extent.
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A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The Yokoi et al. reference is considered to be relevant art, in that the Yokoi et al. reference is in the same field of endeavor, namely that which pertains to a vehicle structural member construction, as the Koga et al., reference.
Therefore, it 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 to construct the structural member of Koga et al., as modified by JP 2006-240134, wherein the second top plate includes a protruding portion that protrudes in a direction opposite to the first top plate and that extends in the longitudinal direction as taught by Yokoi et al. with a reasonable expectation of success in order to increase the strength of the vehicle structural member. Motivation provided by Yokoi et al. in col 4, lines 28-29.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over 103 as being unpatentable over Koga et al. US 2020/0164819, as modified by JP 2006-240134 and Yokoi et al., as applied above with respect to claim 4.
Regarding claim 5, Koga et al., as modified by JP 2006-240134 and Yokoi et al., discloses:
The structural member according to claim 4, as explained above, except wherein assuming a length of the protruding portion as w2 and a distance between the first vertical walls as W1 in a direction in which the first vertical walls face each other, w2/W1 is 1/2 or more and 7/8 or less.
However, section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Therefore, it 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 to construct the structural member of Koga et al.,, as modified by JP 2006-240134 and Yokoi et al., wherein assuming a length of the protruding portion as w2 and a distance between the first vertical walls as W1 in a direction in which the first vertical walls face each other, w2/W1 is 1/2 or more and 7/8 or less with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Koga et al. US 2020/0164819, as modified by JP 2006-240134, as applied above to claim 1, and further in view of JP 2016-88206.
Regarding claim 8, constructing the structural member Koga et al., in view of the teachings of JP 2006-240134 as encompassed by the obviousness statement in paragraph 5 above includes certain features of the structural member construction of the teaching reference JP 2006-240134 as detailed directly below:
JP 2006-240134 discloses the structural member (B-pillar) where the resin is filled at least at a portion (where the cross section shown in annotated Fig. 5 above represents a “portion” of the second member along the structural member) of the second member in the longitudinal direction, i.e., a length (the structural member is taken to extend in and out of the page as the drawing is read in light of the cross section in Fig. 5). The resin can be a foaming type resin as disclosed in the abstract provided by Examiner, the DESCRIPTION section, line 3.
However, Koga et al., as modified by JP 2006-240134, does not disclose wherein the resin is contiguously filled in between the second vertical walls over an overall length of the second member.
However, JP 2016-88206 discloses a vehicle structural member 22 (Fig. 4) with a foaming material 36 filled (a resin material; see para. [0015], the second to last line, of the machine translation provided by applicant) therein over an overall length thereof. See paragraph (57) of the machine translation provided by applicant, the “SOLUTION’ section, lines 1-3 and 6-7.
A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The JP 2016-88206 reference is considered to be relevant art, in that the JP 2016-88206 reference is in the same field of endeavor, namely that which pertains to vehicle structural members, as the Koga et al. reference.
Therefore, it 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 to provide the foaming filling resin of Koga et al., as modified by JP 2006-240134, to be contiguously filled in between the second vertical walls over an overall length of the second member as taught by JP 2016-88206 with a reasonable expectation of success in order to further strengthen the vehicle structural member.
Response to Arguments
Applicant’s arguments in the remarks filed 5/1/26 with respect to claims 1-9 are persuasive because adding resin in between the second vertical walls of the B-pillar of WO 98/56641 (applied in the last Office action) would interfere with the operation of the hinge by obstructing the rear door from fully opening. However, upon further consideration a new grounds of rejection has been applied to claims 1-9 as explained in detail above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph D. Pape whose telephone number is (571)272-6664. The examiner can normally be reached Monday to Friday 7 AM-3:30 PM.
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/Joseph D. Pape/Primary Examiner, Art Unit 3612
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