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 § 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 11-15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scholl (U.S. 3,025,854). Scholl teaches a hole closure element (elements 1-7; figure 2) for closing an opening located in a car body component of a motor vehicle during a production process of the motor vehicle (capable of closing an opening in a car body component), comprising a carrier element 1 made of a film material (“thermoplastic film”), and an adhesive at 5 located on one side of the carrier element 1, wherein the adhesive at 5 does not require thermal activation (pressure sensitive adhesive; col. 3 lines 11-26) and covers a first surface region of the carrier element (figure 3), wherein the adhesive does not cover a second surface region at 2 of the carrier element (col. 3 lines 1-2), and wherein the second surface region at 2 not covered by the adhesive protrudes from a virtual plane (figure 2) formed by the carrier element and is dimensioned to be received within the opening so as to thereby guide and position the hole closure element relative to the opening such that the opening is closed by the hole closure element (protruding portion at 2 capable of guiding the hole closure element into the opening via the tapered shape of the second surface region), and a protective layer 6, 7, wherein the protective layer is removably disposed on the carrier element 1 such that the protective layer covers the first surface region covered by the adhesive 5 and the second surface region 2 not covered by the adhesive that protrudes from the virtual plane when the hole closure element is not disposed in the opening located in the body component (figure 2) and such that the protective layer is removed to expose the first surface region covered by the adhesive and the second surface region not covered by the adhesive that protrudes from the virtual plane when the hole closure element is to be disposed in the opening located in the body component (col. 3 lines 11-26) for closing the opening.
Regarding claim 12, the second surface region 2 not covered by the adhesive is formed by a thickening of the film material (thickening formed by heat sealing of element 2 to element 1).
Regarding claim 13, the second surface region 2 not covered by the adhesive is formed by a protrusion of the film material (figure 2).
Regarding claim 14, the second surface region 2 not covered by the adhesive 5 has a peripheral taper at an end that is most distant from the adhesive (see lead line 4 in figure 2).
Regarding claim 15, the second surface region 2 not covered by the adhesive 5 is located in a center of the hole closure element (figure 2) and wherein the first surface region covered by the adhesive is located outside of the center of the hole closure element (figures 2 and 3).
Regarding claim 17, the adhesive is a pressure-sensitive adhesive (col. 3 lines 11-26).
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Scholl (U.S. 3,025,854).
Regarding claim 16, Scholl discloses the claimed invention except for A1 being between ¼ and 1/3 the size of A2. It would have been obvious to one having ordinary skill in the before the effective filing date of the claimed invention to provide the apparatus of Scholl with A1 being between ¼ and 1/3 the size of A2, in order to cover an appropriately sized wound, and since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Additionally, it has been held that “where 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).
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Scholl (U.S. 3,025,854) in view of Kolmorgen (DE102004018047A1).
Regarding claim 18, Scholl discloses the claimed invention except for the body component being a car body. Kolmorgen teaches that it is known to provide a hole sealing apparatus on a car body (see Abstract). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the hole sealing apparatus of Scholl being used on a car body, as taught by Kolmorgen, in order to seal holes in a car body.
Regarding claim 19, the second surface region 2 not covered by the adhesive is at a distance from an edge of the opening when the hole closure element is disposed in the opening (depending on size of wound).
Regarding claim 20, Scholl discloses the claimed invention except for A3 being between ¼ and 1/3 the size of A2. It would have been obvious to one having ordinary skill in the before the effective filing date of the claimed invention to provide the apparatus of Scholl with A3 being between ¼ and 1/3 the size of A2, in order to cover an appropriately sized wound, and since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Additionally, it has been held that “where 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).
Response to Arguments
Applicant's arguments filed May 22, 2026 have been fully considered but they are not persuasive. Applicant argues that Scholl does not teach that the second surface region is a region of the carrier element. It is the examiner’s position that the carrier element is comprised of both of elements 1 and 2. With this interpretation, the second surface region of 2 is a region of the carrier element. The claims do not define the carrier element sufficiently to define the carrier element over the combination of elements 1 and 2 of Scholl.
Applicant argues that Scholl does not teach that the pad 2 is dimensioned to be received within the opening so as to thereby guide and position the hole closure element relative to the opening such that the opening is closed by the hole closure element. It is the examiner’s position that the claims are drawn to the subcombination of the hole closure element and not the combination of the hole closure element and the hole. The claim is attempting to draw a size relationship between the closure element which is claimed and the hole which is not an element of the claimed invention. The hole can be of any size and there is no standard size of a car body hole. The hole closure element of Scholl is dimensioned to be received within an appropriately sized hole.
In response to applicant's argument that Scholl is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The field of endeavor is “not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field." (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016)). A reference outside of the field of endeavor is reasonably pertinent if a person of ordinary skill would have consulted it and applied its teachings when faced with the problem that the inventor was trying to solve. Airbus, 41 F.3d at 1380-82. Furthermore, a reference need not be from the same field of endeavor as the claimed invention in order to be analogous art. Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Additionally, it has been held that "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Wyers v. Master Lock Co., 616 F.3d 1231, 1238, 95 USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402, 127 S. Ct. at 1727). It is the examiner’s position that well known bandages are known to persons of ordinary skill in any art and are considered familiar items with uses beyond their primary purpose. A bandage is reasonably pertinent to the problem of covering a damaged area.
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 NIKI MARINA ELOSHWAY whose telephone number is (571)272-4538. The examiner can normally be reached Monday through Friday 7: 00 a.m. to 3:00 p.m..
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, Orlando E. Avilés can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIKI M ELOSHWAY/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
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