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
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”.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to an apparatus, classified in 114/361.
II. Claim 18, drawn to a process, classified in 264/165.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by a materially different process without the need for the recited steps of extruding and injecting the bonding agent.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
During a telephone conversation with Kyle Straughan on 1/10/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action.
Claim 18 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/370,417, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The provisional application includes no drawing figures illustrating the invention. The description alone does not provide support for that which is shown in the drawing of the current application. For example, the specification makes no mention of the channel having “parallel ridges” or that the “apex” of each ridge points at least partially away from portion that accommodates the windshield. There is no disclosure of the “space” created between the windshield and the channel. In addition, the specification of the provisional application makes no mention of the bonding agent being epoxy or epoxy based.
For the purposes of examination on the merits, the effective filing date will be 8/4/23.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the at least two sets of parallel ridges of claim 6; and the textured inner surface of claim 15 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Objections
Claim 17 is objected to because of the following informalities: on line 6, a comma should be inserted before “wherein”. Appropriate correction is required.
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 9, 11-12, and 15-16 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 pre-AIA the applicant regards as the invention.
Claim 9, lines 4-5, recites “a second longitudinal axis” which is unclear as to how this axis differs from the first longitudinal axis previously recited.
Claim 11, line 2, recites the at least one mounting projection “extending there” which is awkward and confusing. Perhaps applicant intended to recited “therefrom” or simply that the at least one mounting projection extends from the windshield mount extrusion.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 is directed only to a process limitation not further narrowing. Applicant should be aware of MPEP 2113, which provides that the method of forming or producing a product in an apparatus claim is not germane to the issue of its patentability. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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, 3, and 13 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Muhlberger.
For claim 1, Muhlberger (4750449) discloses a windshield mounting assembly, the assembly comprising,
a windshield (W) comprised of at least one edge (FIG.3),
one or more joiner extrusions (38)
wherein the joiner extrusions are comprised of a length of material with a channel running along a longitudinal axis of the length of material where such longitudinal axis is shaped to accommodate the at least one edge of the windshield with the windshield is inserted therein; and
a bonding agent (“adhesive”, Col 5, lines 32-38) configured to adhere to both the windshield and the one or more joiner extrusions.
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For claim 3, there are at least two joiner extrusions and such joiner extrusions are coupled to the at least one edge of the windshield at different positions along a length of the at least one edge (Col 5, lines 57-63).
For claim 13, the joiner extrusion is comprised of a polymer (vinyl) and the windshield is comprised of glass.
Claim Rejections - 35 USC § 103
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.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger as applied above in view of Brock et al. (3093844).
For claim 2, Muhlberger shows the channel of the joiner extrusion as rectangular and not substantially cylindrical as recited. This feature, however, is known from Brock et al. which shows a substantially cylindrical channel (FIG.2).
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 channel of Muhlberger as substantially cylindrical as taught by Brock et al. as an obvious expedient. The specific shape is deemed to be an obvious matter of design choice.
Applicant has not disclosed that having the recited shape solves any stated problem or is for any particular purpose and providing such a modification would not change the use of the device or produce an unexpected result.
Claims 4-5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger, as modified above with respect to claim 2, in view of Daniels (5269250) or alternatively Lewis (3172419).
Muhlberger, as modified, discloses a mounting extrusion (12) comprised of a mounting channel (14) and one or more mounting protrusions (16)
wherein the mounting channel (14) is configured to receive the one or more joiner extrusions (38) and the one or more mounting protrusions are configured to couple the mounting extrusion to a vehicle (deck, D).
Muhlberger, as modified, further discloses the outer surface of the joiner extrusions having projecting ribs (40) which cooperate with serrations (not numbered) formed on the inside surfaces of the sides (20,22) to “facilitate retention” of the joiner extrusions. Muhlberger provides the projecting ribs and serrations as two parallel ridges running along the longitudinal axis of the channel and joiner extrusion and being angled at least partially in the direction that the windshield (W) is inserted into the channel. The apex of each ridge (rib 40) points partially away from the joiner extrusion.
Muhlberger, as modified, provides the ridges (ribs/serrations) between the exterior surface of the joiner extrusion (38) and the channel (14) but fails to provides the same between the windshield and inner surfaces of the joiner extrusion, a feature taught by Daniels (FIG.8) and Lewis as seen in FIG.4 (FIG. IV) with serrations (9).
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 ribs (40) of Muhlberger, as modified, likewise on an inner surface of the joiner extrusions with apexes point partially away configured to contact a face of the windshield as taught by Daniels as an obvious expedient in order to further facilitate retention between the joiner extrusions and windshield.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger, as twice modified and applied above.
Muhlberger, as twice modified, provides a set of parallel ridges but fails to provide two sets.
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 Muhlberger, as twice modified, with a second set of ridges for it is a mere duplication of part involving only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04 (iv) (B).
For claim 7, it should be noted that 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 (MPEP 2113).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger, as thrice modified and applied above, and further in view of FR 2632348 (FR 348).
Muhlberger, as modified, fails to include a space between the windshield and interior face of the channel, a feature taught by FR 348. As seen in FIGS. 1-2, the extrusion (1) is shaped with a groove (2) to receive the edge of a windshield (3). The groove (2) includes a space designed to accommodate a bead of glue (bonding agent) (8). When the glue (8) is applied it is pushed into voids (7) which act as a “free space” so that no “overflowing” of glue occurs. This prevents an “expulsion of a more or less significant quantity of glue out of the groove” on either side of the windshield (glazing 3) and eliminates the need to remove burrs of glue which are visible at the junction between the windshield (glazing) and the extrusion.
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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 extrusion of Muhlberger, as modified, with a free space as taught by FR 348 in order to prevent the expulsion of glue and eliminate the need for removal of burrs.
For claim 9, the windshield mounting assembly is further comprised of:
a windshield mount extrusion (12) wherein the windshield mount extrusion is comprised of a second length of material with a mounting channel running along a second longitudinal axis shaped (via channel 14) to accommodate the one or more joiner extrusions.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger in view of the well known prior art.
For claim 14, Muhlberger discloses the adhesive is cyanoacrylate or an acrylic but fails to disclose epoxy.
The examiner takes official notice that epoxy and epoxy based adhesive are well known in the art for their superior strength, gap-filling, and chemical resistance.
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 a well known epoxy adhesive in place or the acrylic of Muhlberger as an obvious substitution.
The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR, 550 US at 82 USPQ2d at 1385 (Supreme Court 2007) (KSR) supports this rationale of a simple substitution.
Courts have recognized that it would have been obvious to substitute one known element for another that performs the same function, where the results of the substitution would have been predictable. See, e.g., Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Circ. 2008) (concluding that the claims were obvious, noting that “[t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch").
Applicant may seasonally challenge, for the official record in this application, this and any other statement of judicial notice in a timely manner in response to this office action. Please specify the exact statement to be challenged. Applicant is reminded, with respect to the specific challenge put forth, of the duty of disclosure under Rule 56 to disclose material which is pertinent to patentability including claim rejections challenged by applicant.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-12 and 15-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the primary reason for the indication of allowable subject matter for the claims in this application is the inclusion of the specific mounting channel configured to at least partially enclose around the one or more joiner extrusions such that the one or more joiner extrusions can rotate without leaving the channel in combination with the other elements recited which is not found in the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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, PAUL DICKSON can be reached on 571.272.7742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HILARY L GUTMAN/Primary Examiner, Art Unit 3614