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 .
1.Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on November 21, 2025 is acknowledged.
2.Claims 4, 9 and 10 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.
Claim 4, lines 2-3, “the film seating rib” lacks antecedent basis—ie, the dependency of claim 4 should be changed to claim 3. Claims 9 and 10 recite an inner and outer radius of a convex ridge of the film and use the same variable—“R”—for both of these. The variable should be differentiated dependent on the exact radius being recited—ie, use R1 and R2 for the different radius as appropriate.
3.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.
Claim(s) 1, 3, 4 and 6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Japanese Patent 2005-74743 (see 62, 69, 71 and 64 in Figs. 11a-11d; pages 2-3 of the translation).
JP -743 discloses a molding apparatus known in the art (see Figs. 11a-11d) that comprises a mold including a core (69), a cavity (62) and a first nozzle (71), wherein the cavity aligns with the core to form a space into which molten resin (74) is injected, wherein the first nozzle (71) injects the resin through the core (69—see Fig. 11c), wherein a film (64) is inserted into the cavity (62) and wherein the cavity (62) includes a fixation portion (vacuum holes 68) for fixing a portion of the film. The prior art of JP -743 essentially lacks a disclosure of the exact product being made by the apparatus—ie, a hidden lighting lens having a film for adjusting transmissivity. However, it is submitted that this constitutes a recitation with respect to the manner in which the claimed apparatus is intended to be employed and does not differentiate the claimed apparatus from a prior art apparatus satisfying the structural limitations of that claimed, see Ex parte Masham, 2 USPQ 2nd 1647. Ex parte Thibault 164 USPQ 666 states that the purpose to which an apparatus is to be put and expression relating the apparatus to the contents thereof during intended operation are not significant in determining patentability of an apparatus claim. Hence, it is submitted that the instant recitations directed to forming the instant product would carry no patentable weight in an apparatus claim. Figures 11a-11d show film seating ribs at the edges of the cavity that protrude toward the core from the cavity to support end portions of the film as set forth in instant claim 3. The seating ribs meet instant claim 4 since they protrude further toward the core than the middle portions of the film when it is inserted into the cavity. The seating ribs on the edges of the cavity would also constitute a cavity sidewall as set forth in instant claim 6, said cavity sidewall having a greater height than the upper surface of the film inserted into the cavity bottom.
4.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(s) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent 2005-74743.
JP -743 discloses the basic claimed molding apparatus as set forth in paragraph 3, supra, the applied reference essentially lacking certain aspects that are submitted to have been within the skill level of the art. Modifying the cavity structure so that a film insertion portion can receive the end portion of the film as recited in instant claim 5 would have been an obvious feature over the fixing arrangement shown in Figs. 11a-11d of the applied reference dependent on the degree of fixing required. While clamps 65 provide the fixture means for the ends of the film in Figs. 11a and 11b, it certainly would have been obvious to modified the cavity to provide a film end insertion portion if so desired. The aspect of employing a second nozzle to inject an additional resin onto the product as recited in instant claim 7 would have been an obvious modification to the apparatus of Figs. 11a-11d of JP -743 dependent on the exact nature of the final product. Mult-step injection using more than one nozzle is conventional in the art—Official Notice is hereby taken of this—and such would have been an obvious aspect in the apparatus of Figs. 11a-11d of JP -743 to provide additional support or color to the final product as desired. The last three lines of claim 7 are directed to the formation of the instant product and such would have been an obvious product to make using the apparatus of Figs. 11a-11d of JP -743. Note that JP -743 is directed to forming instrument panels such as speedometers for automobiles—see the Abstract.
5.Claim(s) 2 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent 2005-74743 in view of Japanese Patent 2020-32554 (see 5, 50 and 31 in Fig. 4; the third paragraph from the bottom of page 5 of the translation).
JP -743 discloses the basic claimed apparatus as set forth in paragraph 3, supra, the primary reference essentially lacking the use of a pin to fix the film and the aspects of instant claims 8-10. JP -554 (see Fig. 4) discloses forming automobile instrument panels (see page 1 of the translation, penultimate paragraph) which contain a sheet (5) that is fixed to a mold (3(2)) cavity using a protrusion (31) that is inserted into a hole (5) in the sheet. It is submitted that such fixing is conventional in the art and would have been an obvious modification to the fixing of the primary reference to further ensure that the film does not move during product molding. Instant claim 8 sets forth structural limitations of the hidden light lens and recites that the cavity has a shape that forms such a product. It is submitted that the exact structure of the product constitutes an obvious design choice that would be dependent on the exact structure desired for the product. Obviously, the cavity mold would have to be the inverse of this structure so that the product can be formed from the mold. The formation of the hole in the flange of the film as set forth in instant claim 9 is submitted to have been within the skill level of the art dependent on fixing convenience and location of the protrusion. It is submitted that the apparatus structural limitations of instant claims 9 and 10 constitute an obvious design choice to form the product with a desired structure. It is noted that the primary reference is directed to forming an instrument panel for a speedometer and the molded portion would therefore be termed a lens as used in the instant claims. It certainly would have been obvious to have modified the method of Figs. 11a-11d of JP -743 by forming a speedometer lens with a desired radius of curvature for aesthetic and design considerations.
6.The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Korean Patent KR 10-2002-0081142 discloses forming a speedometer instrument panel by injecting the lens portion over a film.
7.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742