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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 February 2026 has been entered with the RCE of 15 March 2026.
Claim Rejections - 35 USC § 112
Claims 4 and 5 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.
“[Overmold]” lacks sufficient antecedent basis. For claim 4, it is presumed that Applicant intended to state the overmold assembly includes an edge portion that is encapsulated by overmolding. For claim 5, it is presumed the claim requires ribbing to be connected to one of the panels.
Objection to the Drawings
The drawings are objected to for the following reasons:
It is unclear how Fig. 4 is related to Figs. 10-17. In particular, Applicant is reminded that the same number scheme must be used consistently throughout the figures, and that the same element shall have the same numbering. For instance, the inner panel is labeled as both “16” and “102”. Similar issues are also present for the reinforcement and the additional inner panel. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Furthermore, whereas the polymeric panels are shown to immediately contact the reinforcement in Figs. 10-17, the various layers are shown to be spaced apart at the button portion in Fig. 4.
Applicant’s submission of drawing entered with the 1.114 Response resolves only some of the previously identified issues, but others (e.g. using both “16” and “102” for inner panel) remain.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 1, 2, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2017/0151985 A1 (“Pfaffelhuber”).
Considering claims 1, 2, 13, and 14, Pfaffelhuber discloses a laminate article comprising perforated plastic film 24 made of polypropylene or polyethylene; a core layer 26 made of sublayers 26a, 26b, 26c, each of which made from a respective nonwoven consolidated using polyolefin binder fibers; and layer 28 of plastic film that can be substantially similar to plastic film 24. (Pfaffelhuber ¶¶ 0037-0044 and Fig. 1). Each of the two film layers read on the claimed thermoplastic panel; furthermore, any one of the nonwoven sublayers read on the claimed additional first panel. As Pfaffelhuber discloses a plurality of perforations having diameter of up to 0.5 mm in its perforated plastic film 24, perforated plastic film 24 reads on the claimed first panel having openings. Pfaffelhuber is analogous art, for it is directed to the same field of endeavor as that of the instant application (vehicle panels).
Pfaffelhuber further discloses that to improve stiffness and strength of its laminate article when used as a wheel air dam, a metal layer can be incorporated in an interior of the laminate. (Id. ¶ 0028). The incorporation of such a layer under either of the plastic films is thus deemed to be disclosed with sufficient specificity or alternatively obvious in view of the benefits mentioned in Pfaffelhuber.
The limitation of “thermoplastic sandwich overmold assembly” is in the preamble of the claims. As such, the recitation of “overmold” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Furthermore, even if it were given patentable weight (not conceded), overmold is a product by process limitations. “[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, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113). In the instant case, with all layers in Pfaffelhuber laminated together, and with the claims not specifying location of overmold, the laminate of Pfaffelhuber reads on the limitation of overmold. Formation of the claimed article via overmolding as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 2, 4, 5, 7, 8, and 10-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2021/071841 A1 (“Ryutani”).
Considering claims 1, 2, 13, and 14, Ryutani discloses an upper trim panel 24 of a vehicle liftgate, the trim panel comprising an uppermost liner layer 66 made of a toughened polymer-based material, polymeric layer 62, and one of more layers of unidirectional tape 64, the various layers molded together. (Ryutani pg. 8 line 4 to pg. 9 line 33; and Figs 4 and 5). Ryutani is analogous art, for it is directed to the same field of endeavor as that of the instant application (vehicle panels).
Ryutani discloses that its liner layer 66 contains a plurality of apertures through which respective portions of layer 62 protrude. (Id. Figs. 6 and 7). Liner layer 66 is thus considered to have a plurality of openings. Although Ryutani does not disclose materials for its liner layer 66, given general disclosure re: usage of moldable thermoplastic materials for various layers associated with upper trim panel 24, and as Ryutani also discloses that the liner layer can be overmolded to other layers of trim panel 24, usage of thermoplastic moldable material for liner layer 66 is considered obvious. (Id. pg. 8 line 22 to pg. 9 line 18). As Ryutani discloses usage of multiple layers of UDT in its trim panel, and as Ryutani discloses usage of moldable thermoplastic materials reinforced with fiber reinforcements, various layers of UDT 64 reads on the claimed second panel and additional first panel.
Ryutani further discloses that its trim panel 24 may be made from or include a layer of sheet metal such as steel. (Id. pg. 10 line 7-12). This is taken to mean a layer of sheet metal may be added to and/or replace any of the layers incorporated into trim panel 24. As such, the additional incorporation of a sheet metal layer between liner layer 66 and layer 62, or alternatively usage of a sheet metal in place of layer 62 is considered obvious from the teachings of Ryutani. The resulting structure is a molded laminate of liner layer 66 comprising thermoplastic and having apertures, sheet metal having portions protruding through apertures of liner layer 66, layer 62, and various UDT layers 64, or alternatively a molded laminate of liner layer 66 comprising thermoplastic and having apertures, sheet metal having portions protruding through apertures of liner layer 66 and replacing layer 62, and various UDT layers 64. Either reads on claims 1, 2, 13, and 14.
The limitation of “thermoplastic sandwich overmold assembly” is in the preamble of the claims. As such, the recitation of “overmold” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Furthermore, even if it were given patentable weight (not conceded), overmold is a product by process limitations. “[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, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113). In the instant case, all layers in Ryutani are in fact molded together. Formation of the claimed article via overmolding as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art
Considering claims 4 and 10, Fig. 7 of Ryutani shows encapsulation of edge of the trim panel 24.
Considering claim 5, ribs 44 and 46 are at least indirectly connected to the trim panel 24.
Considering claims 7, 8, and 11, the trim panel 24 is part of a liftgate assembly. In view of Ryutani disclosing molding operation used to join various panels, the entire liftgate assembly is also deemed an overmold assembly. (Ryutani pg. 9 line 6-18). Ryutani further discloses incorporation of ribbing in its liftgate assembly. (Id. pg. 7 line 12-23).
Considering claim 12, the portions of sheet metal protruding through apertures in the liner layer 66 are deemed to be button portions.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ryutani, as applied to claim 7 above, and further in view of U.S. 2018/0104904 A1 (“Chaaya”).
Considering claim 9, Ryutani differs from the claimed invention, as it is silent re: a grained Class A finish. However, such surface finishing is known to be desirable in automotive articles, as evidenced by teachings of Chaaya. (Chaaya ¶ 0034). In view of this common knowledge in the art re: this particular type of surface optimization, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have given an exterior surface of the composite frame assembly of Imamura such a surface finish.
Response to Arguments
As Applicant has not provided amended drawings that remedy all of the issues previously identified, the previously instated objections to the drawings are maintained.
In view of amendments to the claims, all previously instated rejections have been withdrawn. New rejections have been instated above.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights