DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the claims filed on 05/04/2026.
Claims 1-6 are currently pending and have been examined below.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
In line 6 of claim 1, “has a same elastic deformation during” was objected and brought to applicant’s attention as the previous claim 1 recites “same elastic deformation shape during”. This was objected because the amended recitations seems to inadvertently deleted ‘shape’ without strikethrough or proper indication. Note that no objections were previously set forth that leads to the deletion of ‘shape’ and the rejection below also removes ‘shape’. Applicant is requested to amend the claims with proper indicators.
In claim 1, “by bringing the front windshield with the vehicle sealing material close to the headlamp” (lines 7-8) and “by bringing the headlamp close to the front windshield” (lines 9-10) are objected because of the relative term ‘close’. How close is applicant’s limitation of ‘close’?
In lines 1-2 of claim 3, “the lip seal section” should read --the seal lip section--.
Appropriate correction is required. Above provides non-limiting examples, the applicant(s) must find and correct all issues similar to those discussed above.
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.
Claim 3 is 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.
Claim 3
Recitations such as “a protruding position of a seal protruding end section at which one of the oblique lip section and the connecting lip section are connected is configured to contact each of the front windshield and the headlamp” on lines 3-5 recites new matter issue. The amended limitation requires the seal protruding end section 11 to contact the front windshield and the headlamp which recites a different scope from the previous recitation in claim 3 and the original disclosure.
The original disclosure merely discloses:
“a protruding position of a seal protruding end section to which one the oblique lip section and the connecting lip section are connected is located within a predetermined range with reference to the virtual contact circle contacting the front windshield and the headlamp, respectively.” (par. 21); and
“the protruding position of the seal protruding section 11 protruded by elastic deformation (protruding to the right in Fig. 5B) is a virtual contact circle C contacting against each of the front windshield 2 and the headlamp 3 (see the two-dot chain line in Fig. 5B) It is designed to be positioned within a predetermined range as a reference.” (par. 53).
These sections from pars. 21 and 53 do not provide support nor disclose that the seal protruding end section 11 contacts the windshield or the headlamp. Additionally, neither figures 5B nor 6C show component 11 to contact either components. Furthermore, although the amended limitation recites intended use language, this changes the scope of the claims and the structure of the claimed invention diverges from applicant’s actual invention.
Lastly, examiner notes that the suggested language on page 4 of the previous Office Action (02/05/2026) was directed to the now deleted virtual contact circle.
Claim Rejections - 35 USC § 102
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kakito (JP 2006-21547).
Claim 1
(Kakito discloses) A vehicle sealing material (6; figure 4) to be mounted between a front windshield (1; note that ‘windshield’ was interpreted as -- A shield placed to protect an object from the wind --; see definition below) and a headlamp (3), comprising:
a seal base section (13; figure 4) installed along a periphery of the front windshield (figure 4); and
a seal lip section (28 and 30) extending from one end of the seal base section, contacting a part of the headlamp (headlamp 3; see figure 4 showing the contact of the seal lip section with the headlamp), and having a hollow cross-sectional shape that is elastically deformable (figure 4),
wherein the seal lip section has a same elastic deformation during an installation of the front windshield to a vehicle body (8) by bringing the front windshield with the vehicle sealing material close to the headlamp pre-installed on the vehicle body along a front windshield installing direction (Annotated figure 4 below), and while replacing the headlamp by bringing the headlamp close to the front windshield with the vehicle sealing material along a headlamp replacing direction (Annotated figure 4 below), being different from the front windshield installing direction (this was interpreted as product-by-process limitation; see MPEP 2113 (I); such that the final deformed shape of the seal lip section when all parts are installed and mounted is the same as shown in Annotated figure 4 below whether the windshield is being installed or the headlamp is being replaced).
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Annotated figure 4
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Source: American Heritage® Dictionary of the English Language, Fifth Edition. Copyright © 2016 by Houghton Mifflin Harcourt Publishing Company. Published by Houghton Mifflin Harcourt Publishing Company. All rights reserved.
Claim 2
(Kakito discloses) The vehicle sealing material according to claim 1,
wherein the seal lip section further comprising:
a lip base section (28) extending from the seal base section;
a pair of oblique lip sections (Annotated figure 4 above) extending along an oblique direction from a lip tip end section and lip base end section of the lip base section (both shown in Annotated figure 4 above), respectively; and
a connecting lip section (Annotated figure 4 above) connecting between the pair of oblique lip sections,
wherein the hollow cross-sectional shape of the seal lip section is formed by the lip base section, the pair of oblique lip sections, and the connecting lip section to form a cross-sectional quadrilateral shape (Annotated figure 4 above), and
wherein the cross-sectional quadrilateral shape is changed by elastic deformation of the seal lip section (Annotated figure 4 above).
Claim 3
(Kakito discloses) The vehicle sealing material according to claim 2, in the seal lip section mounted between the front windshield and the headlamp and is in a state of elastic deformation (figure 4), a protruding position of a seal protruding end section (protruding position of 34) at which one of the oblique lip section and the connecting lip section are connected (Annotated figure 4 (II) below) is configured to contact each of the front windshield and the headlamp within a predetermined range (due to the new matter issue set forth above, this was interpreted as best understood by the examiner as similar to applicant’s original disclosure of the ‘virtual contact circle’ which contacts the headlamp and windshield; note that applicant’s own seal protruding end section is located outside of an intangible reference virtual contact circle, as such this was interpreted similarly as shown in Annotated figure 4 (II) below).
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Annotated figure 4 (II)
Claim 4
(Kakito discloses) The vehicle sealing material according to claim 2,
wherein the lip base section including the seal base section and a part of seal lip section (part of 28), are formed of same material (solid rubber mounting base; Excerpt 1 from page 5 below), and
wherein the pair of oblique lip sections and the connecting lip section are formed of same material (sponge rubber seal; Excerpt 1 below; note that Excerpt 1 discusses the other embodiment 14) and are formed of different material from the seal base section and the lip base section (Excerpt 1 below).
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Excerpt 1
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kakito, as applied to claims 1-4 above, in view of Hikichi et al. (US 20200238804) (hereinafter “Hikichi”).
Claim 5
(Kakito discloses) The vehicle sealing material according to claim 4,
wherein the seal base section and the part of the seal lip section are formed of hard rubber material (Excerpt 1 above), and
wherein the pair of oblique lip sections and the connecting lip section are formed of soft foam sponge material (Excerpt 1 above).
Kakito is silent regarding the soft foam sponge material having different specific gravity and hardness from the hard rubber material.
(However, Hikichi teaches) A vehicle sealing material (17; Hikichi figures 1-2) comprising a soft foam sponge material (21; Hikichi figure 2) having different specific gravity and hardness from a hard rubber material (20; Excerpt 2 from par. 26 below discussing the lower specific gravity and ‘easily deformable’ property of 21 which indicates difference in hardness compared to 20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the soft foam sponge material and hard rubber material of Kakito such that they have different specific gravity and hardness as taught by Hikichi, with a reasonable expectation of success, for effectively allowing the pair of oblique sections and connecting lip section to deform and create an effective seal against the headlamp without affecting the durability of the seal base section and lip base section.
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Excerpt 2
Claim 6
(Kakito, as modified above, discloses) The vehicle sealing material according to claim 5.
Modified Kakito is silent regarding:
(i) wherein the hard rubber material is hard rubber made from ethylene-propylene-diene-rubber, and
(ii) wherein the soft foam sponge material is a spongy ethylene-propylene-diene rubber made from ethylene-propylene-diene rubber.
(However, Hikichi teaches) A vehicle sealing material (17 Hikichi figure 2) having a hard rubber material (20) and a soft foam sponge material (21) both made from ethylene-propylene-diene rubber (Excerpt 3 from pars. 20 and 23 below discussing the entire sealing material 17 including both hard rubber material 20 and soft foam sponge material 21 being made of EPDM).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the hard rubber material and soft foam sponge material of modified Kakito such that they are formed of ethylene-propylene-diene rubber as taught by Hikichi, with a reasonable expectation of success, for the predictable and expected benefits of using EPDM such as being highly resistant to sunlight and temperature extremes while being durable, flexible, and cost-effective material.
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Excerpt 3
Response to Arguments
The drawing and specification objection was reconsidered in light of applicant’s arguments and the objections were withdrawn.
Applicant's arguments filed on 05/04/2026 have been fully considered but they are not persuasive.
Regarding “One of ordinary skill in the relevant art would have clearly understood that Kakito describes a conventional gasoline-powered vehicle including a front [glass] windshield (not shown), an engine (the engine is not shown) under an engine hood 1a, and a headlight 3” and “This is clearly improper. One of ordinary skill in the relevant would have clearly understood that the recitation of the term, "front windshield" in the pending claims refers to a transparent screen (as of glass) that protects the occupants of a vehicle (as supported by the disclosure of the subject application and the extrinsic evidence from the Merriam-Webster Dictionary definition)”, applicant is arguing that the windshield is well-known by the ordinary skill in the art as solely the transparent screen (or glass) that protects the occupants of a vehicle. The arguments were found unpersuasive as the original disclosure does not actually establish nor disclose that the windshield is only made of transparent screen or glass. Furthermore, examiner notes the attached description of windshield from (American Heritage® Dictionary of the English Language, Fifth Edition. Copyright © 2016 by Houghton Mifflin Harcourt Publishing Company. Published by Houghton Mifflin Harcourt Publishing Company. All rights reserved.) above provides a broad and acceptable interpretation for the windshield.
Since the original disclosure does not actually establish that the front windshield is the glass part of the vehicle and there is an acceptable BRI for the term ‘windshield’ which meets the rejection presented above, examiner finds applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 PATRICK B PONCIANO whose telephone number is (571)272-9910. The examiner can normally be reached M-F 6:30-4:00.
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, Daniel Cahn can be reached at (571) 270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK B. PONCIANO/Examiner, Art Unit 3634
/GREGORY J STRIMBU/Primary Examiner, Art Unit 3634
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