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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4-15, 20, 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No.11,878,738. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims without adding additional limitations.
Claims 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,878,738 in view of Muteau et al. (US 2006/0008615). The patent does not claim the specifics of the walls and ribs. Muteau et al., in reference to claim 16, teaches the transverse walls are connected with longitudinal ribs, as shown in Figure 3. The transverse walls are the vertical portions of walls (3) and the longitudinal ribs are the horizontal portions of walls (3), as shown in Figure 3. In reference to claim 17, the longitudinal wall and transverse walls form the reinforcement cavities (2), as shown in Figure 1. In reference to claim 18, the longitudinal ribs and the transverse ribs form the reinforcement cavities (2), as shown in Figures 1-3. The transverse ribs are the vertical portions of walls (3) and the longitudinal ribs are the horizontal portions of walls (3), as shown in Figure 3. It would have been obvious to one of ordinary skill in the art to form the walls and ribs as claimed, as taught by Muteau et al., to provide a strong and lightweight device to reinforce the vehicle structure.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 2, 4, 5, 7-18, 20, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muteau et al. (US 2006/0008615).
Muteau et al., in reference to claim 1, discloses a device (1) for reinforcing a cavity including a carrier (1) with a length extending between a first end and a second end, as shown in Figure and disclosed in paragraph [0004]. The carrier (1) includes one or more longitudinal structures, one or more transverse structures, and a secondary material disclosed as the “overmoulded material”, as disclosed in paragraph [0046]. The carrier (1) includes one or more rib structure (3) forming one or more reinforcement cavities (2), as shown in Figures 1-5.
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In reference to claim 2, the device (1) is configured to attach to the cavity with one or more mechanical fasteners (8) and the secondary material, as shown in Figures 3-5 and disclosed in paragraph [0028].
In reference to claim 4, the one or more mechanical fasteners (8) are located on the carrier, as shown in Figures 3-5.
In reference to claim 5, the carrier (1) has one or more attachment portions for accepting the one or more mechanical fasteners (8), as shown in Figures 3-5.
In reference to claim 7, at least one transverse structure at reference number (6) is free from secondary material, as shown in Figure 3.
In reference to claim 8, at least one longitudinal structure is coated with the secondary material, as shown in Figure 3.
In reference to claim 9, the transverse structures (3) are positioned to form one or more channels (4) on the carrier (1), as shown in Figure 1 and disclosed in paragraph [0045].
In reference to claim 10, the secondary material is guided by the one or more channels (4) to a desired location on the device (1), as shown in Figure 1 and disclosed in paragraph [0045].
In reference to claim 11, the carrier has a longitudinal profile, as shown in Figures 1-5.
In reference to claim 12, the carrier has a curved profile, as shown in Figures 6-9.
In reference to claim 13, the carrier includes one or more guides for locating the device into the cavity, as shown in Figures 1-5. The angled lower surfaces form the guides, as shown in Figures 1-5.
In reference to claim 14, the carrier (1) includes one or more longitudinal walls forming the longitudinal structure and one or more transverse walls forming the transverse structures, as shown in Figure 3.
In reference to claim 15, the longitudinal wall is connected with one or more transverse ribs (3), as shown in Figure 3. The transverse ribs are the vertical portions of walls (3), as shown in Figure 1-3.
In reference to claim 16, the transverse walls are connected with longitudinal ribs, as shown in Figure 3. The transverse walls are the vertical portions of walls (3) and the longitudinal ribs are the horizontal portions of walls (3), as shown in Figure 3.
In reference to claim 17, the longitudinal wall and transverse walls form the reinforcement cavities (2), as shown in Figure 1.
In reference to claim 18, the longitudinal ribs and the transverse ribs form the reinforcement cavities (2), as shown in Figures 1-3. The transverse ribs are the vertical portions of walls (3) and the longitudinal ribs are the horizontal portions of walls (3), as shown in Figure 3.
In reference to claim 20, the carrier includes one or more holes (5), as shown in Figure 2.
In reference to claim 21, the holes (5) are through holes, as shown in Figure 2.
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.
The factual inquiries 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Muteau et al. (US 2006/0008615) in view of Enderich et al. (US 2009/0152896).
Muteau et al. discloses the device has fasteners (8) connected through holes in walls of the cavity. The device is considered to be configured to be slid into the cavity since the device is placed within a hollow and requires fasteners to hold the device in place before activating the foam to fill the gap between the device and the vehicle component. However, Muteau et al. does not disclose the fasteners are placed through walls of the cavity from an outside of the device.
Enderich et al. teaches placing fasteners (16,17) through walls (1) of a cavity from an outside into the device, as shown in Figure 3 and disclosed in paragraph [0039].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the fasteners taught by Enderich et al. for the fasteners of Muteau et al., with a reasonable expectation for success, such that the fasteners are placed through walls of the cavity from an outside of the device to allow removal of the fasteners to reduce weight from the finished vehicle and allow reuse of the fasteners in the assembly process to reduce assembly costs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY A BLANKENSHIP whose telephone number is (571)272-6656. The examiner can normally be reached 7-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Weisberg can be reached at 571-270-5500. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GREGORY A. BLANKENSHIP
Primary Examiner
Art Unit 3612
/GREGORY A BLANKENSHIP/Primary Examiner, Art Unit 3612 January 20, 2026