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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11, 28-31 and 33-34 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.
Regarding claim 11, in lines 4-6, the phrase “wherein the film has one or a plurality of the following features: a) the film is media-impermeable or micro-perforated, wherein the characteristic dimensions of the micro-perforations are smaller than 100 microns” is indefinite. Because of the current presentation of the “or” language, the claim presents a scenario where the film is both media-impermeable and wherein the characteristic dimensions of the micro-perforations are smaller than 100 microns, which is not possible. The Examiner suggests breaking up the “media-impermeable, or microperforated” language into an additional separate feature of the alternative features # a-f of the current claim. The Examiner will interpret the “wherein the characteristic dimensions of the micro-perforations are smaller than 100 microns” language as only being required if the film is micro-perforated, and not applicable to the scenario where the film is “media-impermeable,” as that appears to be Applicant’s intention.
Regarding claim 28, the phrase “comprising a thermoformed component in accordance with Claim 1” is indefinite, as claim 1 does not require a “a thermoformed component”. If Applicant is intending to claim the acoustically-effective component is a thermoformed component, the claim should be amended in such a way to require that the acoustically effective component of claim 1 is made through a thermoforming process, or that it is a thermoformed component.
Regarding claim 29, in its current form, the claim appears to begin as an independent claim, establishing “a method of production of an acoustically moulded product”, and then includes “or” language referring back to “the production of an acoustically effective component in accordance with a method in accordance with Claim 25”. It is improper for a claim to have language that is alternatively independent or dependent on another claim. Because the claim dependency on claim 25 appears to be optional, for the rejection, the Examiner will interpret the claim as being optionally independent, or dependent claim 25.
Regarding claim 31, in its current form, the claim appears to begin as an independent claim, establishing “Use of an acoustically-effective component”, and then includes “or” language referring back to “a moulded part in accordance with Claim 28”. It is improper for a claim to have language that is alternatively independent or dependent on another claim. Because the claim dependency on claim 28 appears to be optional, for the rejection, the Examiner will interpret the claim as being optionally independent, or dependent claim 28.
Additionally, claim 31 (and claims 33-34) is a “use claim” which is further indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). The claimed “use…as an acoustically-effective damping element in a motor vehicle” does not require any active, positive steps delimiting how this use is actually practiced.
Claims 29-34 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 29 and 31, which respectively depend from claims 25 and 28, each require a number of limitations before the “or” language (as referenced in the 112b rejection above) that are not required by the claims from which they depend, and therefor fail to further limit the subject matter claimed, as they are not “construed to incorporate by reference all the limitations of the claim to which it refers”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 31 and 33-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the "Use" claims do not purport to claim a process, machine, manufacture, or composition of matter, as required by 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 ").
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 1-12, 14, 24-25, 31 and 33-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arata (2015/0034414).
With respect to claim 1, Arata teaches an acoustically-effective component (Figures 3-5 and 9-11, #6A/6C), comprising: a) a pouch (11) formed from at least a first cover layer (one of 13/14), which forms a first chamber (defined by chamber accommodating chips #12/21, in the same way as Applicant’s), wherein the first cover layer (one of #13/14) comprises a flexible material with an extended surface area and a specific flow resistance of between 10 and 1,500 rayls, ([0107], [0111], [0123] – note that the thickness and airflow resistance ranges described in [0111] and [0123] yield a specific flow resistance covering the claimed range) b) a first filling (defined by chip layer 21 in Figures 3-5, or one of chip layers forming layer #21 on one side of intermediate membrane #27 in Figures 9-11), which is arranged in the first chamber, wherein the first filling comprises: i) voluminous non-woven material, ii) foam particles, iii) synthetic fibres, iv) natural fibres; or v) mixtures of the aforementioned materials ([0058]-[0066]).
With respect to claim 2, Arata teaches wherein the component has a second cover layer (other of 13/14) with an extended surface area, wherein the first and second cover layers (13/14) are joined together at the edges, so that the first and second cover layers (13/14) together form the pouch with the first chamber (defined by chamber accommodating chips #12/21, in the same way as Applicant’s).
With respect to claim 3, Arata teaches wherein the material of the first cover layer (one of 13/14) and/or the material of the second cover layer (other of 13/14) can be welded ([0107]). It is noted that layers #13/14 can be formed from polyethylene terephthalate (PET), which “can be welded” as claimed in the same way as Applicant PET cover layers can be welded (See Applicant’s Specification, Page 8, paragraph beginning with “Regardless of the Specific design…”). The “can be welded” language merely requires the ability for the material to be welded, which is inherent to the PET material, as noted by Applicant’s disclosure.
With respect to claim 4, Arata teaches wherein the material of the first cover layer (one of 13/14) and/or the material of the second cover layer (other of 13/14) is a non-woven material, or comprises such a material ([0107]).
With respect to claim 5, Arata teaches wherein the non-woven material of the first cover layer (one of 13/14) and/or the material of the second cover layer (other of 13/14) has one or a plurality of the following features: a) a thermoplastic fibre material, or is formed from such a material ([0107]), b) it-takes the form of a needled non-woven material, c) the thickness of the non-woven material is between 0.7 and 1.5 millimetres, d) the weight per unit surface area of the non-woven material is between 30 and 50 g/m3, and e) the air permeability of the non-woven material in accordance with DIN EN ISO 9237 is 4,000 - 6,000 1/m2s.
With respect to claim 6, Arata teaches wherein the first cover layer (one of 13/14) is sewn, pressed, bonded or welded to itself, or to the second cover layer (other of 13/14), so as to form the pouch (11) ([0039], [0056]).
With respect to claim 7, Arata teaches wherein the pouch (Figures 9-11, #11) forms at least a first and a second chamber (defined by other of chip layers forming layer #21 on other side of intermediate membrane #27 in Figures 9-11), wherein the second chamber is filled with a second filling (defined by other layer of chips in second chamber on other side of intermediate layer #21, best seen in Figures 11), wherein the second filling comprises: a) voluminous non-woven material, b) foam particles, c) synthetic fibres, d) natural fibres, or e) mixtures of the aforementioned materials ([0058]-[0066]).
With respect to claim 8, Arata teaches wherein the first and second fillings (chip layers #21 on either side of intermediate membrane #27) are identical or different ([0058]-[0066]).
With respect to claim 9, Arata teaches wherein the component has an intermediate layer (27) that separates the first and second chambers from one another.
With respect to claim 10, Arata teaches wherein the material of the first cover layer (one of #13/14), and/or the material of the second cover layer (other of #13/14), and/or the material of the intermediate layer (27) is a film, or comprises such a film.
With respect to claim 11, Arata teaches wherein the film (of layers #13/14/27) has one or a plurality of the following features: a) the film is media-impermeable or micro-perforated, wherein the characteristic dimensions of the micro-perforations are smaller than 100 microns, b) the film comprises a thermoplastic material, or is formed from such a material [0107], c) the thickness of the film is between 30 and 100 microns, d) the density of the film is between 0.8 and 1.2 g/cm3, e) the film comprises at least two layers, and f) the film can be welded, for example thermally, by ultrasound or by friction welding.
With respect to claim 12, Arata teaches wherein the foam particles comprise an open-cell, and/or a mixed-cell, foam ([0063] – note that “the cells of the foam (pores of a sponge) forming the elastomeric foam chips are preferably exposed at the surface of the foam without covering at least part of the foam with a skin layer” renders at least some of the cells being “open-cell”).
With respect to claim 14, Arata teaches wherein the first and, if applicable, the second filling (defined by chip layer 21 in Figures 3-5, or each of chip layers forming layer #21 on either side of intermediate membrane #27 in Figures 9-11), have an average density of 24 kg/m3+ 6 kg/m3 ([0061], [0123] - note that the foam density described in [0061] and [0123] yields an average covering the claimed range).
With respect to claim 24, Arata teaches wherein the first and second fillings (defined by chip layer 21 in Figures 3-5, or each of chip layers forming layer #21 on either side of intermediate membrane #27 in Figures 9-11) have different densities, and/or comprise different materials and/or material compositions ([0058]-[0066], [00123]). Because the chips on either side of layer #27 can be a mixture of randomly shaped/sized differing materials, it is considered to be inherent that the first and second filing layers be not be exactly identical (i.e. different) in density, material and material composition.
With respect to claim 25, Arata teaches a method for the production of an acoustically-effective component (Figures 3-5 and 9-11, #6A/6C), the method including the following steps: a) providing at least one first cover layer (one of 13/14) made from a flexible material with an extended surface area, and a specific flow resistance of between 10 and 1,500 rayls, ([0107], [0111], [0123] – note that the thickness and airflow resistance ranges described in [0111] and [0123] yield a specific flow resistance covering the claimed range) b) forming a pouch (11) from at least the first cover layer (one of #13/14), such that the pouch (11) forms a first chamber (defined by chamber accommodating chips #12/21, in the same way as Applicant’s) with an access opening (20), c) filling the first chamber with a first filling (defined by chip layer 21 in Figures 3-5, or one of chip layers forming layer #21 on one side of intermediate membrane #27 in Figures 9-11), wherein the first filling comprises: i) voluminous non-woven material, ii) foam particles, iii) synthetic fibres, iv) natural fibres, v) particles of a polymeric or rubber-elastic heavy-duty layer, or vi) mixtures of the above materials ([0058]-[0066]); and d) closing the access opening (20) to the first chamber ([0108], [0120]).
With respect to claim 31, Arata teaches use of an acoustically-effective component (Figures 1-5 and 9-11, #6A/6C) comprising a pouch (11) formed from at least a first cover layer (one of 13/14), which forms a first chamber (defined by chamber accommodating chips #12/21, in the same way as Applicant’s), wherein the first cover layer (one of 13/14) comprises a flexible material with an extended surface area and a specific flow resistance of between 10 and 1,500 rayls ([0107], [0111], [0123] – note that the thickness and airflow resistance ranges described in [0111] and [0123] yield a specific flow resistance covering the claimed range); and a first filling (defined by chip layer 21 in Figures 3-5, or one of chip layers forming layer #21 on one side of intermediate membrane #27 in Figures 9-11), which is arranged in the first chamber, wherein the first filling comprises: voluminous non-woven material, foam particles, synthetic fibres, natural fibres or mixtures of the materials ([0058]-[0066]), or a moulded part in accordance with Claim 28, as an acoustically-effective damping element (6/6A/6C) in a motor vehicle (1). It is noted that this claim is interpreted as being independent as the dependency on claim 28 appears to be optional, see 112b rejection above.
With respect to claim 33, Arata teaches wherein the damping element (6/6A/6C) takes the form of an acoustically-effective interior or exterior component ([0102]).
With respect to claim 34, Arata teaches wherein the damping element (6/6A/6C) takes the form of a side member infill, a sillinfill, an A/B/C pillar infill, a bulkhead insulation, a tunnel absorber, a door insulation, or a wheel arch absorber ([0102]).
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.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Arata (2015/0034414).
With respect to claim 13, Arata teaches the acoustically-effective component of claim 1. Arata further teaches wherein the foam particles have an average size of at 0.5-5 millimetres.
Arata fails to explicitly teach wherein the foam particles have an average size of at least 10 millimetres.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the foam particles have an average size of at least 10 millimetres, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, increasing the average size of the foam particles would have been obvious to one of ordinary skill in the art so as to acoustically tune the device, which is well known in the art.
With respect to claim 15, Arata teaches the acoustically-effective component of claim 1. Arata further teaches wherein first and, if applicable, the second chamber (defined by other of chip layers forming layer #21 on other side of intermediate membrane #27 in Figures 9-11), have a first and a second chamber volume, and the non-compressed volume of the first and second fillings is of an unspecified, but obvious amount of the first and second chamber volume respectively
Arata fails to explicitly teach wherein the non-compressed volume of the first and second fillings is approximately 50%+15% of the first and second chamber volume respectively.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the non-compressed volume of the first and second fillings is approximately 50%+15% of the first and second chamber volume respectively, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, defining or altering the amount of non-compressed volume of the first and second fillings within the first and second chamber volume respectively would have been obvious to one of ordinary skill in the art so as to acoustically tune the device, which is well known in the art.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Arata (2015/0034414) in view of Kofferath (DE 102013101151 – see translation provided by Examiner).
With respect to claim 28, Arata teaches the acoustically-effective component of claim 1. Arata further teaches wherein the foam particles have an average size of at 0.5-5 millimetres.
Arata fails to explicitly teach an acoustically-effective moulded part, comprising a thermoformed component (1) in accordance with Claim 1.
Kofferath teaches a similar acoustically-effective component (Figures 1-6c, #1), comprising: a) a pouch (10) formed from at least a first cover layer (one of 12/14), which forms a first chamber (defined by chamber accommodating foam flakes #20) comprises a flexible material with an extended surface area ([0008]-[0009]) b) a first filling (20), which is arranged in the first chamber, wherein the first filling comprises: i) voluminous non-woven material, ii) foam particles (20), iii) synthetic fibres, iv) natural fibres; or v) mixtures of the aforementioned materials; including an acoustically-effective moulded part (1 - [0016]-[0018], [0034]), comprising a thermoformed component (1) in accordance with Claim 1, such that the molding process (i.e. twin sheet molding process) is particularly suitable for mass production ([0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus of Arata, with the apparatus of Kofferath so as to form the device using a molding process that is particularly suitable for mass production.
With respect to claim 29, Arata teaches method for the production of an acoustically-effective moulded part, the method including the following steps: a) provision of an acoustically-effective component comprising: a pouch formed from at least a first cover layer, which forms a first chamber, wherein the first cover layer comprises a flexible material with an extended surface area and a specific flow resistance of between 10 and 1,500 rayls; and a first filling, which is arranged in the first chamber, wherein the first filling comprises: voluminous non-woven material, foam particles, synthetic fibres, natural fibres or mixtures of the materials, or the production of an acoustically-effective component (Figures 3-5 or 9-11, #6A/6C) in accordance with a method in accordance with Claim 25 (as defined in the rejection of claim 25 above), wherein the materials of the first cover layer (one of 13/14) and/or first filling (21) can be thermoplastically moulded and are formed by an unspecified process. The “can be molded” language merely requires the ability for the material to be molded, which is inherent to the PET material, in the same way as Applicant’s PET cover material can be molded.
Arata fails to teach thermoforming of the component.
Kofferath teaches a method in accordance with claim 25, including a similar method for the production of an acoustically-effective component (Figures 1-6c, #1), the method including the following steps: a) providing at least one first cover layer (one of 12/14) made from a flexible material with an extended surface area b) forming a pouch (10) from at least the first cover layer (one of #12/14), such that the pouch (10) forms a first chamber (defined by chamber accommodating foam flakes #20) with an access opening (18/19), c) filling the first chamber with a first filling (20), wherein the first filling comprises: i) voluminous non-woven material, ii) foam particles (20), iii) synthetic fibres, iv) natural fibres, v) particles of a polymeric or rubber-elastic heavy-duty layer, or vi) mixtures of the above materials; and d) closing the access opening (1819) to the first chamber ([0031]-[0033]); wherein the materials of the first cover layer (one of 12/14) and/or first filling (20) can be thermoplastically moulded ([0016]-[0018], [0034]), and b) thermoforming of the component (1) ([0016]-[0018], [0034]), such that the molding process (i.e. twin sheet molding process) is particularly suitable for mass production ([0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus of Arata, with the apparatus of Kofferath so as to form the device using a molding process that is particularly suitable for mass production.
With respect to claim 30, Kofferath teaches wherein it is obvious that after step b), the moulded part is stamped out of the thermoformed component (1) ([0018], [0031]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pertinent arts of record relating to Applicant’s disclosure are disclosed in the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY AUSTIN LUKS whose telephone number is (571)272-2707. The examiner can normally be reached Monday-Friday (9:00-5:00).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at (571) 270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMY A LUKS/Primary Examiner, Art Unit 2837