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
Claim 1 is amended. Claim 10 is cancelled. Claims 12-14 are still withdrawn.
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(s) 1-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2003/0151250 to Miura et al.
Regarding claim 1, Miura ‘250 discloses a drain grommet 2 coupled to a vehicle body panel 3 in a state in which a drain hose 1 is fixedly inserted into the drain grommet 2, the drain grommet comprising: a grommet body 2 provided with a through hole 21 into which the drain hose 1 is inserted; and a first stopping part 24a which is provided to protrude from an outer circumferential surface of the grommet body and on which one surface of the vehicle body panel is hooked (fig. 1), wherein a tension groove 22 is formed in an inner circumferential surface of the grommet body to allow the grommet body to be elastically deformed inward when coupled to the vehicle body panel 3 in a state in which the drain hose 1 is fixedly inserted into the grommet body (fig. 1 – also note the soft material of the grommet allows for elastic deformation during attachment, as implied and expected to one of ordinary skill in the art – see more motivation below), wherein a separation distance between an inner wall of the tension groove 22 and an outer wall of the drain hose 1 is smaller than a length of a portion on which the vehicle body panel is hooked on the first stopping part 24a (fig. 1).
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The examiner submits that it appears that the separation distance between the inner wall of the tension groove and the outer wall of the hose is smaller in length than the hook portion of the stopping part, as annotated above. (The examiner highlights the length of the top grooves for better understanding and visualization of the distance)
Noting that while patent drawings are not drawn to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of the claims. See In re Mraz, 59 CCPA 866, 455 F.2d 1069, 173 USPQ 25 (1972).
However, for the sake of argument, it would have been an obvious matter of design choice to change the size of the tension groove length relative to the first stopping part portion for better control and precision during attachment and support, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
As to the implied deformation where the grommet body is to be elastically deformed inward when coupled to the vehicle body panel - note that the mere fact that Miura ‘250 states that the “grommet 2 making up a holding member is formed of a soft material, such as rubber” para 0027 means Miura ‘250 contemplated that the grommet body would elastically deform inward when coupled to the vehicle body panel. Noting that it is well settled case law that a reference is valid for what it would convey explicitly or implicitly to one skilled in the art. See In re Aller et al. 105 USPQ 233, In re McKee et al. 37 USPQ 613, In re Meinhardt 157 USPQ 270.
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 differences in length between the tension groove and stopping part portion and the deforming properties of the tension groove relative to the panel while supporting the hose in order to enhance the precision of attachment and securement of the grommet relative to the panel while supporting the hose.
Regarding claim 2, Miura ‘250 discloses wherein the tension groove 22 is formed to be recessed downward from an upper surface of the grommet body 2.
Regarding claim 3, Miura ‘250 discloses wherein the tension groove 22 is formed to be recessed downward below a lower surface of the vehicle body panel 3.
Regarding claim 4, Miura ‘250 discloses wherein an expanding portion (annotated below) of which a diameter increases in an upward direction is formed in an upper portion of the tension groove 22.
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Regarding claim 5, Miura ‘250 discloses wherein a second stopping part 24b having a smaller diameter than the first stopping part 24a is formed below the first stopping part.
Regarding claim 6, Miura ‘250 discloses wherein the second stopping part 24b is formed to be positioned at a level which is the same as or below a level of a lower end of the tension groove 22.
Regarding claim 7, Miura ‘250 discloses wherein the diameter of the second stopping part 24b corresponds to an inner surface of the vehicle body panel hooked on the first stopping part 24a.
Regarding claim 8, Miura ‘250 discloses wherein each of the first stopping part 24a and the second stopping part 24b has a hook structure.
Regarding claim 9, Miura ‘250 discloses wherein a protruding part 23 is provided to protrude from a lower surface of an edge of the grommet body.
Regarding claim 11, Miura ‘25 discloses wherein the separation distance could be greater than 1 mm. See above modification regarding dimensions.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA E MILLNER whose telephone number is (571)270-7507. The examiner can normally be reached M-F 8am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA E MILLNER/Primary Examiner, Art Unit 3632