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 preliminary amendment and response filed on August 03, 2023 has been entered. Claims 1-10 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on January 27, 2026 is acknowledged. Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/024,894. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap or varying slightly in scope.
Claims 1 and 2 are anticipated by claims 1 and 3 of US ‘894. Likewise, claims 5 and 8 are anticipated by claims 5 and 8, respectively, of US ‘894.
Regarding claims 6 and 7, it would have been within the level of ordinary skill in the art to have discovered the workable ranges of resin of the first and second resins to be at least 60% of the member or filling through routine experimentation. As set forth in MPEP 2144.05, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, it would have been obvious to one of ordinary skill in the art to have added a colorant to the first and/or second member layers, motivated by the desire to obtain a layered structure having desired appearance properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 6-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Okumura et al. (US Pub 2019/0232886).
Regarding claim 1, Okumura discloses a layered structure (Figure 3) for an automobile emblem comprising a first member (#41) comprising a first resin material [0089], a second member (#32) comprising the first resin material [0083] and facing the first member, and a filling member (#36) comprising a second resin material [0089] provided between the first and second members.
Regarding claim 2, Okumura discloses that the first resin material can be polycarbonate ([0083], [0089]).
Regarding claims 6 and 7, the first and second members and filling member are made entirely of the resin materials.
Regarding claim 8, Okumura discloses a decorative layer (#50) located between the second member and the filling member .
Regarding claim 9, Okumura discloses a colored layer or paint layer can be provided as part of the second member ([0114], [0115]).
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2016141355. The English language translation provided in the IDS of 08/03/2023 is relied upon in the below rejection.
Regarding claim 1, JP ‘355 discloses a layered structure (Figure 3) for an automobile emblem comprising a first member (#2) comprising a first resin material [0013], a second member (#3) comprising the first resin material [0014] and facing the first member, and a filling member (#50 or adhesive material [0024]) comprising a second resin material ([0041] or [0024]) provided between the first and second members.
Regarding claim 2, JP ‘355 discloses that the first resin material can be polycarbonate ([0013], [0014]).
Regarding claim 3, JP ‘355 discloses that a thermoset adhesive, such as an epoxy or urethane resin [0024], can be used to join the members.
Regarding claims 6 and 7, the first and second members and filling member are made entirely of the resin material.
Regarding claim 8, JP ‘355 discloses a decorative layer (#5: #51/#50) located between the second member and the filling member .
Regarding claim 9, JP ‘355 discloses that the first member can contain coloring pigments and fillers [0013].
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al. (US Pub 2019/0232886).
Okumura does not specifically disclose the thickness of the filling member. However, Okumura is directed to the same type of articles as the present invention, i.e., automobile emblems. It would have been within the level of ordinary skill in the art to have discovered the workable ranges, including using a filling member within the claimed range of from 0.1 mm to 3.0 mm, motivated by the desire to obtain an automobile emblem having a desired aesthetic or appearance properties. See MPEP 2144.05.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016141355.
Regarding claim 4, JP ‘355 does not disclose that the second resin material is a bisphenol A type epoxy resin or a polyol-based urethane resin. However, JP ‘355 discloses that the thermoset adhesive used can be an epoxy or urethane resin [0024]. As bisphenol A type epoxy resins and polyol-based urethane resins are common thermoset adhesives, it would have been within the level of ordinary skill in the art to have selected either of these resins based on the generic disclosure in JP ‘355.
Regarding claim 5, JP ‘355 does not specifically disclose the thickness of the filling member. However, JP ‘355 is directed to the same type of articles as the present invention, i.e., automobile emblems. It would have been within the level of ordinary skill in the art to have discovered the workable ranges, including using a filling member within the claimed range of from 0.1 mm to 3.0 mm, motivated by the desire to obtain an automobile emblem having a desired aesthetic or appearance properties. See MPEP 2144.05.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al. (US Pub 2019/0232886) in view of JP 2016141355.
Okumura does not disclose a second resin selected from an epoxy or urethane resin. However, Okumura suggests that an adhesive could be used to join the bases [0146]. As set forth above, JP ‘355 discloses that a thermoset adhesive, such as an epoxy resin, can be used to join the members of the layered structure. It would have been obvious to the skilled artisan to have joined the members of Okumura using an epoxy resin, as taught in JP ‘355, motivated by the desire to use an adhesive that has a low dielectric loss tangent and is unlikely to be decamped by heat during molding (JP ‘355 [0024]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781