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 .
Election/Restrictions
Applicant’s election of Species A-3 and B-1 in the reply filed on August 12, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“sealing/reinforcement assembly” recited in claim 1
“expandable component” recited in claim 7
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Examiner notes that the limitation “sealing/reinforcement assembly” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“assembly”).
(B) The generic placeholder is modified by functional language (“sealing/reinforcement” or ‘for sealing/reinforcement’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “sealing/reinforcement assembly” will be interpreted so as to comprise ‘a heat activated expandable material,’ as taught by the Specification (page 2, fourth paragraph), or functional equivalent thereof.
Examiner notes that the limitation “expandable component” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“component”).
(B) The generic placeholder is modified by functional language (“expandable” or ‘configured for expansion’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “expandable component” will be interpreted so as to comprise ‘the heat activated expandable material,’ as taught by the Specification (page 2, fourth paragraph), or functional equivalent thereof.
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 1 – 20 are 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 1 recites the limitation “the position” in the preamble of the claim. There is insufficient antecedent basis for the limitation in the claim.
Claim 1 further recites the limitations “the designed cavity” and “the defined cavity” in the preamble of the claim. There is insufficient antecedent basis for the limitations in the claim. For the purposes of this Office Action, Examiner will interpret the limitations so as to refer to the “cavity” previously set forth in the claim.
Claim 1 further recites the limitation “an expandable sealing/reinforcement assembly” in the preamble of the claim. It is unclear as to whether Applicant intends the limitation to refer to, and further define, the “sealing/reinforcement assembly” previously set forth in the claim, or whether Applicant intends to set forth a second ‘sealing/reinforcement assembly’ which is separate and independent from the ‘sealing/reinforcement assembly’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to, and further define, the “sealing/reinforcement assembly” previously set forth.
Claim 1 further recites the limitations “the cross-section,” “the orientation of the axial extension,” “the data,” and “steps a – b.” There is insufficient antecedent basis for the limitations in the claim. For the purposes of this Office Action, Examiner will interpret the limitation “steps a – b” as “steps i and ii.”
Claim 1 further recites the limitation “determine the axial extension of the cavity without any hole.” It is generally unclear as to Applicant’s intent regarding “without any hole.”
Claim 2 recites the limitation “the center of the cross-section.” There is insufficient antecedent basis for the limitation in the claim.
Claim 3 recites the limitations “the center of the cross-section of the cavity” and “the center of the cross-section of the sealing/reinforcement assembly.” There is insufficient antecedent basis for the limitations in the claim.
Claim 4 recites the limitation “the width and the height.” There is insufficient antecedent basis for the limitation in the claim.
Claim 5 recites “wherein, the expected expansion length is divided into two sub-length.” The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the expected expansion length.” Secondly, Applicant’s intent regarding the claim is generally unclear.
Claims 9 – 11 each recite the limitation “the expandable material.” There is insufficient antecedent basis for the limitation in the claims. For the purposes of this Office Action, Examiner will interpret the limitations as “the sealing/reinforcement assembly.”
Claim 10 recites the limitation “the rate of expansion.” There is insufficient antecedent basis for the limitation in the claim.
Claim 12 recites the limitation “more than one sealing/reinforcement assembly.” It is unclear as to whether Applicant intends the limitation set forth a plurality of the ‘sealing/reinforcement assembly’ previously set forth in claim 1, or whether Applicant intends to set forth a plurality of ‘sealing/reinforcement assemblies’ which are separate and independent from the ‘sealing/reinforcement assembly’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “more than one of the sealing/reinforcement assembly.”
Claim 12 further recites the limitation “one cavity.” It is unclear as to whether Applicant intends the limitation to refer to the ‘cavity’ previously set forth in claim 1, or whether Applicant intends to set forth a second ‘cavity’ which is separate and independent from the ‘cavity’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the ‘cavity’ previously set forth.
Claim 15 recites the limitation “its axial extension.” It is unclear as to Applicant’s intent regarding the limitation. For the purposes of this Office Action, Examiner will interpret the limitation as “the axial extension of the cavity.”
Claim 16 recites the limitation “the cavity’s extension in axial direction.” It is unclear as to whether Applicant intends the limitation to refer to the “axial extension of the cavity” previously set forth in claim 1, or whether Applicant intends to set forth an additional ‘cavity extension’ which is separate and independent from the “axial extension” previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “the axal extension of the cavity.”
Claim 17 recites the limitation “the maximal expansion length.” There is insufficient antecedent basis for the limitation in the claim.
Claim Rejections - 35 USC § 102
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 - 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gaberell (International Publication Number WO 2021/018624 A1).
Because Gaberell was published in German, all citations to Gaberell will actually refer to U.S. Patent Application Publication Number 2022/0396316, which claims priority from Gaberell.
As to claim 1, Gaberell teaches a method to design a cavity of a vehicle (abstract), the cavity comprising a sidewall and defining a position of a sealing/reinforcement assembly, which comprises a heat activated expandable material, in the cavity and seal and/or reinforce the cavity with the sealing/reinforcement assembly (figure 2b, element 5 being the ‘cavity,’ element 4 being the ‘sidewall,’ and element 1’ being the ‘sealing/reinforcement assembly’; paragraphs 65 – 67) comprising the following steps: i) determine a cross-section of the cavity (figure 2a, element 5); determine an orientation of an axial extension of the cavity (figure 2a, see below). Examiner notes that a vertically oriented extension is a reasonable interpretation of the limitation because Applicant’s Specification expressly teaches the ‘axial extension’ being vertically oriented (figure 3a, element 8; page 7, last paragraph).
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Gaberell further teaches sealing the sealing/reinforcement assembly from a predetermined data set based on data according to steps i and ii (figures 2a and 2b, elements 1 and 5; paragraphs 65 – 77). Examiner notes that this can be found because Gaberell teaches selecting the appropriate sealing/reinforcement assembly so as to adequately and partially fill the cavity, based on the length of the axial extension of the cavity and the size of the cross-section of the cavity (figure 2b, elements 1 and 5; paragraphs 65 – 77). Gaberell further teaches determining the axial extension of the cavity without any hole (figure 2a, element 5; paragraphs 65 – 67). Examiner notes that Gaberell does teach the cavity having a hole. Gaberell further teaches placing the sealing/reinforcement assembly in the cavity (figure 2a, element 1; paragraph 65); and expanding the sealing/reinforcement assembly (figure 2b, element 1’; paragraphs 65 – 67).
As to claim 2, Gaberell further teaches that the sealing/reinforcement assembly is fixed in the cavity in a fixation location in a horizontal center of the cross-section of the cavity (figure 2b, elements 1’ and 5).
As to claim 3, Gaberell teaches that a horizontal center of the cross-section of the cavity coincides with a horizontal center of a cross-section of the sealing/reinforcement assembly (figure 2a, elements 5 and 1).
As to claim 4, Gaberell teaches that the data set comprises data about a width and a height of the cross section of the cavity (figures 2a and 2b, elements 5 and 1’). Examiner notes that this can be found because Gaberell teaches that the sealing/reinforcement assembly should be selected such that, upon expansion of the sealing/reinforcement assembly, the sealing/reinforcement assembly should completely fill the height of the cavity and partially fill the width of the cavity (figure 2b, elements 5 and 1’; paragraphs 65 – 77).
As to claim 5, Gaberell teaches that an expected expansion length is divided into two sub-lengths (figure 2b, element 1’, see below).
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As to claim 6, Gaberell teaches that the sub-lengths differ (figure 2b, element 1’, see above).
As to claim 7, Gaberell teaches that an expandable component, comprising the heat activated expandable material, is provided on a carrier to form the sealing/reinforcement assembly (figure 2a, element 2 being the ‘expandable component’ and element 3 being the ‘carrier’; paragraph 63).
As to claim 8, Gaberell teaches that the carrier and the expandable component are overmolded (figure 2a, elements 3 and 2; paragraphs 66 – 67).
As to claim 9, Gaberell teaches that the sealing/reinforcement assembly is expanded due to energy input (figures 2a and 2b, elements 1 and 1’; paragraphs 65 – 67 and 53).
As to claim 10, Gaberell teaches that the data set is dependent on circumstances that influence a rate of expansion of the sealing/reinforcement assembly (figure 2a, element 1; paragraphs 65 – 77).
As to claim 11, Gaberell teaches that the sealing/reinforcement assembly is expanded due to heat energy input from an oven (figures 2a and 2b, elements 1 and 1’; paragraphs 65 – 67 and 53).
As to claim 12, Gaberell teaches that two of the sealing-reinforcement assemblies are located in the cavity (figure 2a, each of elements 2 being the ‘sealing-reinforcement assemblies’; paragraph 63).
As to claim 13, Gaberell teaches that the two sealing/reinforcement assemblies are arranged parallel relative to one another (figure 2a, elements 2).
As to claim 14, Gaberell teaches that the cross-section of the cavity at which the sealing/reinforcement assembly is placed is elliptic (figure 2a, element 5).
As to claim 15, Gaberell teaches that the cross section of the cavity changes with the axial extension of the cavity, so that an average shape is determined (figure 2a, element 5).
As to claim 16, wherein the axial extension of the cavity is measured vertical (figure 2a, element 5, see above).
As to claim 17, Gaberell teaches a step of determining a maximal expansion length of the expandable component (figures 2a and 2b, element 2; paragraphs 65 – 77).
As to claim 18, Gaberell teaches that the maximal expansion length is measured from a location where the sealing/reinforcement assembly is fixed in the cavity (figure 2a, element 2; paragraphs 65 – 77).
As to claim 19, Gaberell teaches a step of forming one or more holes in the cavity that extend beyond the maximal expansion length of the expandable component (paragraph 18). Examiner notes that this can be found because Gaberell teaches that controlling the maximal expansion length of the expandable component provides the benefit of allow for unblocked holes in the cavity (paragraph 18).
As to claim 20, Gaberell teaches that a geometrical horizontal center of the expandable component is identical to a horizontal geometrical center of the cavity (figures 2a and 2b, elements 2 and 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726