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 .
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 17-18 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.
Claims 17-18 recite “The sunshade of claim 14”; however, claim 14 is a method claim. It is indefinite whether Applicant intends claims 17-18 to depend from claim 14 or claim 6. The preamble of a dependent claim must match the preamble of the independent claim on which it depends. When applying prior art, Examiner interprets these claims to mean “The method of claim 14, wherein the…”.
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 (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 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.
Claims 6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (US Pat 5,358,440) in view of Zheng (US Pat 5,213,147), Huang (US Pat 5,035,460), and Bott (DE 102009035075).
Regarding claim 6, Zheng (‘440) discloses a circular disk 20, including: a rim 24 along a circumference of the circular disk 20 (see Figures 1 and 3; Col. 4, lines 38-41, 61-66); wherein, the rim 24 includes a first plurality of holes 34 that are circular (see Figure 1; Col. 4, lines 18-24); wherein, the rim 24 includes a raised and rounded edge 22 along the circumference of the circular disk 20 (see Figures 1 and 5; Col. 3, lines 38-60); a circular recess inside the raised and rounded edge; and an inner circular portion 30 inside the rim 24 (see Figure 1; Col. 4, lines 25-32), including a third plurality of holes placed along a diameter and a circumference of the inner circular portion 30 (see Figure 1; Col. 4, lines 8-27). The circular recess 26 is an opening through which the loop 28 passes (see Figure 5; Col. 3, lines 45-48).
Zheng (‘440) fails to disclose the circular disk is a sunshade configured to be placed between a door seal and a body of an automobile, causing the circular disk to be suspended at a window of the automobile; the rim includes a second plurality of holes; the second plurality of holes are circular and have different diameters than the first plurality of holes; and the first and second plurality of holes are alternately placed along the rim at an interval.
Zheng (‘147) discloses circular disk used as a sunshade for an automobile that is suspended at a window of the automobile (see Figures 4 and 14; Col. 2, lines 28-31).
Huang discloses a sunshade for a vehicle having a rim 65 that is positioned between a door seal and a body of an automobile, causing the sunshade to be suspended at a window of the automobile (see Figure 12; Col. 5, lines 36-39).
Bott discloses a sunshade 6 for a vehicle having a first plurality of openings 9 and a second plurality of openings 7 that are alternately placed throughout the sunshade (see Figure 2; Paragraphs 39-42). The first plurality of holes 9 allows for fresh air to flow into the vehicle while reducing sunlight and the second plurality of holes 7 further improve ventilation (see Paragraphs 40 and 42).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to use the circular disk of Zheng (‘440) as an automobile sunshade suspended at a window of the automobile, with a reasonable expectation of success, to provide an easily collapsible sunshade that can be quickly stored and simply deployed, as taught by Zheng (‘147).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to position the rim of Zheng (‘440), as modified by Zheng (‘147), between a door seal and a body of the automobile, with a reasonable expectation of success, as taught by Huang, to allow the sunshade to be suspended at the window of the automobile without the use of extra fasteners.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the sunshade of Zheng (‘440), as modified by Zheng (‘147) and Huang, with a second plurality of circular holes having a different diameter than the first plurality of holes and placed alternately along the rim at an interval, with a reasonable expectation of success, to provide an increased ventilation of the sunshade at the automobile window, as taught by Bott.
Regarding claim 8, Zheng (‘440), as modified by Zheng (‘147), Huang, and Bott, discloses the sunshade of claim 6.
Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, fails to disclose the first plurality of holes has a diameter of 3mm, the second plurality of holes has a diameter of 6mm, with 7mm gaps in between every two adjacent holes in the first plurality of holes and second plurality of holes.
Section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which 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.
Section 2144.04 II.A. of the MPEP sets forth In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), which hold that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the holes of Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, with alternating diameters of 3mm and 6mm, with a reasonable expectation of success, since it has been 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” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance, the sunshade of Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, would not perform differently by having alternating diameters of 3mm and 6mm.
Furthermore, it would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the holes of Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, with a gap of 7mm between each hole, with a reasonable expectation of success, since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this instance, the sunshade of Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, would not perform differently by having a gap of 7mm between each hole.
Regarding claim 9, Zheng (‘440), as modified by Zheng’ (‘147), Huang, and Bott, discloses the sunshade of claim 6, wherein the circular disk is capable of being moved along the door seal of the automobile.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zheng (‘440), as modified by Zheng (‘147), Huang and Bott, in view of Book (WO 9323262).
Regarding claim 7, Zheng (‘440), as modified by Zheng (‘147), Huang and Bott, discloses the sunshade of claim 6.
Zheng (‘440), as modified by Zheng (‘147), Huang and Bott, fails to disclose the third plurality of holes has a diameter to depth ratio of 1:3 to 1:4.
Book discloses a plastic sheet with holes throughout the center, which function is to ensure that the sunlight at higher angles won't pass through, providing shade without obstruction of view (see Page 3, Paragraph 2). The holes are .005in and the thickness of the panel is .012in, which gives the holes a diameter to depth ratio of 5:12.
Section 2144.04 II.A. of the MPEP sets forth In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), which holds that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the third plurality of holes of Zheng (‘440), as modified by Zheng (‘147), Huang, and Bott, with a specific diameter to depth ratio, with a reasonable expectation of success, to ensure that sunlight at higher angles won’t pass through, providing shade without obstruction of view, as taught by Book.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the third plurality of holes of Zheng (‘440), as modified by Zheng (‘147), Huang, Bott, and Book, with a diameter to depth ratio of 1:3 or 1:4, with a reasonable expectation of success, since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this instance, the sunshade of Zheng (‘440), as modified by Zheng (‘147), Huang, Bott, and Book, would not perform differently by having a diameter to depth ratio of 1:3 or 1:4.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (‘440) in view of Zheng (‘147) and Huang.
Regarding claim 10, Zheng (‘440) discloses a circular disk 20, including: a rim 24 along a circumference of the circular disk 20 (see Figures 1 and 3; Col. 4, lines 38-41, 61-66); wherein, the rim 24 includes a first plurality of holes 34 that are circular (see Figure 1; Col. 4, lines 18-24); wherein, the rim 24 includes a raised and rounded edge 22 along the circumference of the circular disk 20 (see Figures 1 and 5; Col. 3, lines 38-60); a circular recess inside the raised and rounded edge; and an inner circular portion 30 inside the rim 24 (see Figure 1; Col. 4, lines 25-32), including a second plurality of holes (see Figure 1; Col. 4, lines 8-27). The circular recess 26 is an opening through which the loop 28 passes (see Figure 5; Col. 3, lines 45-48).
Zheng (‘440) fails to disclose the circular disk is a sunshade configured to be placed between a door seal and a body of an automobile, causing the circular disk to be suspended at a window of the automobile and provide shade to a user without obstructing a view outside the automobile.
Zheng (‘147) discloses circular disk used as a sunshade for an automobile that is suspended at a window of the automobile (see Figures 4 and 14; Col. 2, lines 28-31).
Huang discloses a sunshade for a vehicle having a rim 65 that is positioned between a door seal and a body of an automobile, causing the sunshade to be suspended at a window of the automobile (see Figure 12; Col. 5, lines 36-39).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to use the circular disk of Zheng (‘440) as an automobile sunshade suspended at a window of the automobile, with a reasonable expectation of success, to provide an easily collapsible sunshade that can be quickly stored and simply deployed, as taught by Zheng (‘147).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to position the rim of Zheng (‘440), as modified by Zheng (‘147), between a door seal and a body of the automobile, with a reasonable expectation of success, as taught by Huang, to allow the sunshade to be suspended at the window of the automobile without the use of extra fasteners.
Regarding claim 11, Zheng (‘440), as modified by Zheng (‘147) and Huang, discloses the sunshade of claim 10, wherein the second plurality of holes includes holes placed along a diameter of the inner circular portion 30 (see Figure 1; Col. 4, lines 8-27).
Regarding claim 12, Zheng (‘440), as modified by Zheng (‘147) and Huang, discloses the sunshade of claim 10, wherein , including the second plurality of holes includes holes placed along a circumference of the inner circular portion 30 (see Figure 1; Col. 4, lines 8-27).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Zheng (‘440), as modified by Zheng (‘147) and Huang, in view of Bott.
Regarding claim 13, Zheng (‘440), as modified by Zheng (‘147) and Huang, discloses the sunshade of claim 10.
Zheng (‘440), as modified by Zheng (‘147) and Huang, fails to disclose the first plurality of holes includes a first group of holes and a second group of holes, wherein the first group of holes and the second group of holes have different diameters and are alternatively placed along the rim.
Bott discloses a sunshade 6 for a vehicle having a first plurality of openings 9 and a second plurality of openings 7 that are alternately placed throughout the sunshade (see Figure 2; Paragraphs 39-42). The first plurality of holes 9 allows for fresh air to flow into the vehicle while reducing sunlight and the second plurality of holes 7 further improve ventilation (see Paragraphs 40 and 42).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the sunshade of Zheng (‘440), as modified by Zheng (‘147) and Huang, with a second plurality of circular holes having a different diameter than the first plurality of holes and placed alternately along the rim at an interval, with a reasonable expectation of success, to provide an increased ventilation of the sunshade at the automobile window, as taught by Bott.
Claims 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Zheng (‘147), Zheng (‘440), and Bott.
Regarding claim 14, Huang discloses a method for partially blocking sunlight in an automobile, comprising: placing a rim 65 of a sunshade 12 between a rubber seal and a body of an automobile, causing the sunshade to be suspended at a window of the automobile (see Figures 12-14; Col. 5, lines 36-39).
Huang fails to disclose the sunshade includes: a circular disk, including: the rim along a circumference of the circular disk; wherein, the rim includes a first plurality of holes and a second plurality of holes; wherein, the first and second plurality of holes are circular and have different diameters; wherein the first and second plurality of holes are alternately placed along the rim at an interval; wherein, the rim includes a raised and rounded edge along the circumference of the circular disk, and a circular recess inside the raised and rounded edge; an inner circular portion inside the rim, including a third plurality of holes placed along a diameter and a circumference of the inner circular portion.
Zheng (‘147) discloses circular disk used as a sunshade for an automobile that is suspended at a window of the automobile (see Figures 4 and 14; Col. 2, lines 28-31).
Zheng (‘440) discloses a circular disk 20, including: a rim 24 along a circumference of the circular disk 20 (see Figures 1 and 3; Col. 4, lines 38-41, 61-66); wherein, the rim 24 includes a first plurality of holes 34 that are circular (see Figure 1; Col. 4, lines 18-24); wherein, the rim 24 includes a raised and rounded edge 22 along the circumference of the circular disk 20 (see Figures 1 and 5; Col. 3, lines 38-60); a circular recess inside the raised and rounded edge; and an inner circular portion 30 inside the rim 24 (see Figure 1; Col. 4, lines 25-32), including a third plurality of holes placed along a diameter and a circumference of the inner circular portion 30 (see Figure 1; Col. 4, lines 8-27). The circular recess 26 is an opening through which the loop 28 passes (see Figure 5; Col. 3, lines 45-48).
Bott discloses a sunshade 6 for a vehicle having a first plurality of openings 9 and a second plurality of openings 7 that are alternately placed throughout the sunshade (see Figure 2; Paragraphs 39-42). The first plurality of holes 9 allows for fresh air to flow into the vehicle while reducing sunlight and the second plurality of holes 7 further improve ventilation (see Paragraphs 40 and 42).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct automobile sunshade of Huang as a circular disk, with a reasonable expectation of success, to provide an easily collapsible sunshade that can be quickly stored and simply deployed, as taught by Zheng (‘147).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the automobile sunshade of Huang, as modified by Zheng (‘147), with the rim along the circumference of the circular disk having a first plurality of circular holes spaced apart along the rim, with a reasonable expectation of success, to allow air and some sunlight to pass through them, as taught by Zheng (‘440).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the sunshade of Huang, as modified by Zheng (‘147) and Zheng (‘440), with a second plurality of circular holes having a different diameter than the first plurality of holes and placed alternately along the rim at an interval, with a reasonable expectation of success, to provide an increased ventilation of the sunshade at the automobile window, as taught by Bott.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the rim of Huang, as modified by Zheng (‘147), Zheng (‘440), and Bott, with a raised and rounded edge along the circular disk and a circular recess inside the raised and rounded edge, with a reasonable expectation of success, to provide a means of gripping the rim more easily and providing a means of inserting a resilient loop to help maintain the shape of the sunshade without harming a user or causing damage to a vehicle surface, as taught by Zheng (‘440).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the automobile sunshade of Huang, as modified by Zheng (‘147), Zheng (‘440) twice, and Bott, with an inner circular portion having a third plurality of holes placed along a diameter and a circumference of the inner circular portion, with a reasonable expectation of success, to form the central portion of the circular disk from a material that will allow air and some sunlight to pass through the holes, as taught by Zheng (‘440).
Regarding claim 18, as understood, Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, discloses the method of claim 14 comprising the sunshade having a first and second plurality of holes.
Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, fails to disclose the first plurality of holes has a diameter of 3 mm, the second plurality of holes has a diameter of 6 mm, with 7 mm gaps in between each two adjacent holes from the first plurality of holes and the second plurality of holes.
Section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which 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.
Section 2144.04 II.A. of the MPEP sets forth In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), which hold that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the holes of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, with alternating diameters of 3mm and 6mm, with a reasonable expectation of success, since it has been 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” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this instance, the sunshade of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, would not perform differently by having alternating diameters of 3mm and 6mm.
Furthermore, it would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the holes of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, with a gap of 7mm between each hole, with a reasonable expectation of success, since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this instance, the sunshade of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, would not perform differently by having a gap of 7mm between each hole.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, in view of Book.
Regarding claim 17, as understood, Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, discloses the method of claim 14 having the third plurality of holes in the sunshade.
Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, fails to disclose the third plurality of holes has a diameter to depth ratio of 1:3 to 1:4.
Book discloses a plastic sheet with holes throughout the center, which function is to ensure that the sunlight at higher angles won't pass through, providing shade without obstruction of view (see Page 3, Paragraph 2). The holes are .005in and the thickness of the panel is .012in, which gives the holes a diameter to depth ratio of 5:12.
Section 2144.04 II.A. of the MPEP sets forth In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), which holds that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the third plurality of holes of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, and Bott, with a specific diameter to depth ratio, with a reasonable expectation of success, to ensure that sunlight at higher angles won’t pass through, providing shade without obstruction of view, as taught by Book.
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to construct the third plurality of holes of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, Bott, and Book, with a diameter to depth ratio of 1:3 or 1:4, with a reasonable expectation of success, since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this instance, the sunshade of Huang, as modified by Zheng (‘147), Zheng (‘440) thrice, Bott, and Book, would not perform differently by having a diameter to depth ratio of 1:3 or 1:4.
Allowable Subject Matter
Claims 15-16 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 15 recites a method for partially blocking sunlight in an automobile, comprising: placing a rim of a sunshade between a rubber seal and a body of an automobile, causing the sunshade to be suspended at a window of the automobile; and sliding the sunshade along the rubber seal of the automobile; wherein, the sunshade includes: a circular disk, including: the rim along a circumference of the circular disk; wherein, the rim includes a first plurality of holes and a second plurality of holes; wherein, the first and second plurality of holes are circular and have different diameters; wherein the first and second plurality of holes are alternately placed along the rim at an interval; wherein, the rim includes a raised and rounded edge along the circumference of the circular disk, and a circular recess inside the raised and rounded edge; an inner circular portion inside the rim, including a third plurality of holes placed along a diameter and a circumference of the inner circular portion. Huang discloses a method of placing a rim of a sunshade between a rubber seal of and a body of an automobile; however, Huang fails to disclose sliding the sunshade along the rubber seal of the automobile. Mowder et al. (US PG Pub 2012/0049562) disclose a method of placing a sunshade in a vehicle window; however, Mowder et al. fail to disclose sliding the sunshade along a rubber seal of the vehicle. Crozier (US Pat 8,286,688) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Crozier fails to disclose sliding the sunshade along the rubber seal. Lau (US Pat 7,673,924) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Lau fails to disclose sliding the sunshade along the rubber seal. Le (US PG Pub 2006/0000529) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Le fails to disclose sliding the sunshade along the rubber seal. Dohle (US Pat 6,869,127) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Dohle fails to disclose sliding the sunshade along the rubber seal. Wood (US Pat 7,059,650) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Wood fails to disclose sliding the sunshade along the rubber seal. Haas (US Pat 7,823,953) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Haas fails to disclose sliding the sunshade along the rubber seal. The prior art does not properly teach or suggest the recited method, making claim 15 allowable.
Claim 16 recites a method for partially blocking sunlight in an automobile, comprising: placing a rim of a sunshade between a rubber seal and a body of an automobile, causing the sunshade to be suspended at a window of the automobile; and rolling the sunshade along the rubber seal of the automobile, with respect to a center of the circular disk; wherein, the sunshade includes: a circular disk, including: the rim along a circumference of the circular disk; wherein, the rim includes a first plurality of holes and a second plurality of holes; wherein, the first and second plurality of holes are circular and have different diameters; wherein the first and second plurality of holes are alternately placed along the rim at an interval; wherein, the rim includes a raised and rounded edge along the circumference of the circular disk, and a circular recess inside the raised and rounded edge; an inner circular portion inside the rim, including a third plurality of holes placed along a diameter and a circumference of the inner circular portion. Huang discloses a method of placing a rim of a sunshade between a rubber seal of and a body of an automobile; however, Huang fails to disclose sliding the sunshade along the rubber seal of the automobile. Mowder et al. (US PG Pub 2011/0049562) disclose a method of placing a sunshade in a vehicle window; however, Mowder et al. fail to disclose rolling the sunshade along a rubber seal of the vehicle. Crozier (US Pat 8,286,688) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Crozier fails to disclose rolling the sunshade along the rubber seal. Lau (US Pat 7,673,924) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Lau fails to disclose rolling the sunshade along the rubber seal. Le (US PG Pub 2006/0000529) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Le fails to disclose rolling the sunshade along the rubber seal. Dohle (US Pat 6,869,127) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Dohle fails to disclose rolling the sunshade along the rubber seal. Wood (US Pat 7,059,650) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Wood fails to disclose rolling the sunshade along the rubber seal. Haas (US Pat 7,823,953) discloses a method of placing a sunshade of a vehicle between a rubber seal and a body of the vehicle; however, Haas fails to disclose rolling the sunshade along the rubber seal. The prior art does not properly teach or suggest the recited method, making claim 16 allowable.
Response to Arguments
Applicant’s arguments, see Pages 5-6, filed February 9, 2026, with respect to the rejections of claims 1-5 under 35 USC 102/103 have been fully considered. The rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Zheng (US Pat 5,358,440), Zheng (US Pat 5,213,147), and Huang (US Pat 5,035,460).
Examiner notes that the arguments regarding the structure of the rim serving an important functional purpose are noted; however, there is no objective evidence provided that the specific design and position of the holes in the rim improve the function of the sunshade. In an instance of claiming criticality, there must be provided evidence of “a sufficient number of tests both and inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” See MPEP 716.02(d). Applicant does not provide evidence that tests were performed to show the improvement in grip between the claimed invention and a sunshade having holes of different dimensions. Therefore, there is not provided sufficient evidence to substantiate the claims that the specific arrangement of holes along the rim of the sunshade “provide better grip necessary for additional stability while held between the door seal and the body of the automobile”, making the claims a matter of design choice and not given weight for patentable distinction, as outlined in the rejections above.
Conclusion
Applicant's amendment necessitated the new grounds 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 VERONICA M CONDO whose telephone number is (571)272-9415. The examiner can normally be reached Mon-Fri 8am-3pm EST.
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, 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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/VERONICA M CONDO/ Examiner, Art Unit 3612
/AMY R WEISBERG/ Supervisory Patent Examiner, Art Unit 3612