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 .
DETAILED ACTION
The text of those sections of Title 35, US Code not included in this action can be found in a prior Office action.
Examiner’s Comments
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element T should be construed as inherently also reciting “and relevant disclosure thereto”.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The amendment filed 3/9/26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the gaps between the punched portions are the same (newly recited in claims 1, 13, and 28). There is no support in the specification as originally filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 5-7, 9-10, 12-15, 18, 20, 23-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 13, and 28 all recite that the gaps between the punched portions are the same which finds no support in the specification as originally filed. Though the punched portions are enabled, the added limitations to the gaps as recite in the claims are not present in the description. There is no indication that the gaps are ‘the same’ as now claimed and this raises questions as to whether applicant had possession, at time of filing, of the punched portions including gaps that are the same.
For the purposes of examination, the recited limitation will not be treated on the merits.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 9-10, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over the well known prior art (FIG. 4 of the current application) in view of Yildirim (2022/0281393).
For claim 1, the well known prior art of FIG.4 of the current application discloses a glass run for a door of a vehicle, the glass run (FIG.4) comprising:
a core (122) arranged in the glass run, wherein the core (122) comprises:
a flat portion (122b) extending to a predetermined height in a longitudinal direction of the core, and
punched portions (122c) extending in a direction perpendicular to the longitudinal direction of the core from the flat portion,
wherein the punched portion extending from an upper end of the flat portion,
wherein the glass run is mountable to the door of the vehicle to support a door glass,
wherein the punched portions (122c) are repeatedly arranged at predetermined gaps along the longitudinal direction of the core;
wherein the glass run includes an upper fixing portion (upper portion of 121,FIG.4) and a lower fixing portion (lower portion of 121) coupled to a door panel (111,FIG.3);
wherein a sealing portion (not numbered, FIGS.3-4) is formed between the upper fixing portion and the lower fixing portion to seal a portion between the door panel and the door glass; and
wherein the punched portions are located above the sealing portion.
PNG
media_image1.png
324
261
media_image1.png
Greyscale
PNG
media_image2.png
192
283
media_image2.png
Greyscale
The well known prior art fails to provide a punched portion at a lower end of the flat portion having the same length as the punched portion at the upper end so that the core is configured symmetrically.
Yildirim (2022/0281393) teaches a core (FIG.1) having a flat portion with repeatedly arranged punched portions (2) symmetrically ([0027]) positioned on either side thereof at both upper and lower ends.
PNG
media_image3.png
362
258
media_image3.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided the well known prior art of FIGS.1-4 above with oppositely symmetrically disposed punched portions as taught by Yildirim ‘393 in order to change the flexibility or stiffness of the trim portion of the prior art of FIGS.1-4 as desired.
For claim 9, the core (122) is inserted into the upper fixing portion (121) fixed to the door panel (111) on an upper portion of the glass run.
For claim 10, a portion of the door panel (111) is inserted into each of the upper fixing portion and the lower fixing portion to mount the glass run on the door panel.
For claim 12, the sealing portion protrudes from the glass run and has an end portion in contact with the door glass (FIG.1) to be sealed.
Claims 2, 5, 13, 15, 18, 20, 25, and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over the well known prior art of FIGS.1-4 as provided above and in view of Miyata et al. ‘540 and Msglassoutlet.com. (MS Glass Outlet).
The well known prior art of FIGS.1-4 discloses a glass run for a door of a vehicle as set forth in the rejection above and further discloses the glass run comprising:
synthetic rubber ([0003]), wherein the glass run is a single member, and
wherein a portion of the glass run is exposed to an outside when assembled to a door panel (the portion being covered by a molding 123), and wherein the glass run is mountable to the door of the vehicle to support a door glass.
The well known prior art discloses providing a metal (stainless steel) trim molding (frame molding 123) upon the exposed portion, the portion exposed to an outside (the finishing portion) is flat.
The well known prior art fails to provide the portion being coated with silicone as recited.
Miyata et al. (2021/0229540) teaches a glass run for a door of a vehicle having a finishing portion exposed to an outside (see FIG.2), the portion being flat and coated with a material (24) and a decorative member (25).
PNG
media_image4.png
778
627
media_image4.png
Greyscale
Msglassoutlet.com teaches applying silicone spray or paste to rubber weather-stripping because it “protects” weather-strip rubber “from the sun’s heat and repels water and ice to further prevent seal damage”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided the exposed portion of the well known prior art of FIGS.1-4 with a coating thereon as taught by Miyata et al. ‘540, the coating being of silicone as taught by Msglassoutlet.com, in order to provide a decorative exterior of the glass run and prevent cracking thereof.
For claims 2 and 15, an imaginary surface of the glass run, which is projected from the flat portion to a surface of the glass run, is flat and becomes the finishing portion (with silicone) exposed to an outside when the glass run is assembled to a door panel (as described above).
For claims 18, 20, and 27, please refer to claims 10, 12, and 9, respectively, above.
Claims 6 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over the well known prior art of FIGS.1-4, as modified above, and further in view of Miyata et al. ‘540.
Miyata et al. ‘540 further teaches the specific material of the glass run including ethyl propyl diene monomer (EPDM), and discloses that the design layer may be made in a desired color.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided the glass run of the well known prior art of FIGS.1-4, as modified, from EPDM material as taught by Miyata et al. ‘540 and to have implemented the silicone in either matte or gloss of a user specific color as taught by Miyata et al. ‘540 as an obvious design expedient because 1) the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination since the court has held that the use of a different material is obvious over that of the prior art if it performs the same function (See MPEP 2144.07 and also Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)); and 2) changing the color does not change the design of the invention or produce and unexpected result and since the court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)).
Claims 7, 14, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over the well known prior art of FIGS.1-4, as set forth above with respect to claim 1 and as modified above with respect to claim 13, and in view of either JPH 10513416 or JPH 0215694.
The well known prior art fails to include a sealing portion of the glass run in contact with the door glass being coated with urethane. Both JPH 416 and JPH 694 teach applying a urethane coating to a weather strip to “improve abrasion resistance and sealing property” (JPH 416) or for “for sliding resistance reduction” (JPH 694).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided urethane as taught by either of JPH 416 or JPH 694 to the sealing portion of the glass run of the well known prior art of FIGS.1-4 that is in contact with the door glass in order to improve abrasion resistance and sealing properties.
Response to Arguments
Applicant’s arguments with respect to claim(s) as amended have been considered but are moot because the new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Elvira (4610907) teaches a core (FIGS.1 and 7) having a flat portion (1) with repeatedly arranged punched portions (2) symmetrically positioned on either side thereof at both upper and lower ends (below, left).
Kii et al. (5871682) (below, right) teaches a core having a flat portion (22) with repeatedly arranged punched portions (21) symmetrically positioned on either side of the flat portion (22) at both upper and lower ends thereof.
PNG
media_image5.png
127
243
media_image5.png
Greyscale
PNG
media_image6.png
213
397
media_image6.png
Greyscale
It should be noted that claims 1, 4, 8-13, and 21 could likewise be rejection over the well known prior art of FIGS.1-4 of the current application in view of either Elvira (4610907) or alternatively, Kii et al. (5871682).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references provided show alternative glass runs including, for example, JP 2528235 (below, left), Miyata et al. (2017/0361693) (below, right).
PNG
media_image7.png
308
246
media_image7.png
Greyscale
PNG
media_image8.png
477
388
media_image8.png
Greyscale
Washnwhips.com teaches applying silicone (or a thin coast of silicone-based conditioner) to all rubber seals creates a “barrier against UV rays and heat, preventing cracking and drying out” of the seals.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HILARY L GUTMAN whose telephone number is 571.272.6662. 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, VIVEK KOPPIKAR can be reached on 571.272.5109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the 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. Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HILARY L GUTMAN/Primary Examiner, Art Unit 3612B
Prosecution Insights