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 Status
Claims 1-5 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Examiner notes that “decorative member” is subject to broadest reasonable interpretation and any visual presence provides some degree of “decoration” and no amount of “decorative” value is claimed.
Examiner further notes that in claim 5 “another” is subject to broadest reasonable interpretation and can be either the left or right side for each of the three limitations (where the occupant sits, where the transparent member is located and where the visual check member is located).
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 2 and 5 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 1, the claimed invention is directed to a human being as a required limitation and as such is directed to non-statutory subject matter. The broadest reasonable interpretation of “occupant” is people/humans for a vehicle. Although the “occupant” is first noted in the preamble, it gives life and meaning to the claim as claim 1 further recites “from a side where the occupant is located”. This limitation positively recites a human being’s presence to define that structural limitation of the claim. Therefore, a human organism is encompassed by the claim and it does not fall within the four categories of patent eligible subject matter. Applicant is suggested to remove the occupant from the claim or cancel the claim to avoid encompassing a human organism and making the claim eligible under 35 U.S.C. 101.
Regarding claim 2, the claimed invention is directed to a human being as a required limitation and as such is directed to non-statutory subject matter. The broadest reasonable interpretation of “occupant” is people/humans for a vehicle. Claim 2 recites “the occupant visually checks the visual check member”, which positively recites a human mind being claimed to operate a process and this does not fall within at least one of the four categories of patent eligible subject matter. The claim further recites “occupant…disposed in this order”, this limitation positively recites a human being’s presence to define that structural limitation of the claim. Therefore, a human organism is encompassed by the claim and it does not fall within the four categories of patent eligible subject matter. Applicant is suggested to remove the occupant from the claim or cancel the claim to avoid encompassing a human organism and making the claim eligible under 35 U.S.C. 101.
Regarding claim 5, the claimed invention is directed to a human being as a required limitation and as such is directed to non-statutory subject matter. The broadest reasonable interpretation of “occupant” is people/humans for a vehicle. Claim 5 recites “the occupant sits in a seat”, which positively recites a human being claimed to operate a process and this does not fall within at least one of the four categories of patent eligible subject matter. Applicant is suggested to remove the occupant from the claim or cancel the claim to avoid encompassing a human organism and making the claim eligible under 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, 3, 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tracy ("Here's What Those Black Dots at the End of Your Windshield Actually Do") (copy provided herewith).
Regarding claims 1, 4 and 5, Tracy teaches a vehicle (Pg. 2 image) with a black band around the edge of the glass called “frit” that is ceramic paint (Pg. 2 [1]) that is disposed between a vehicle occupant on the left side of the card facing forward (see hands of “driver”) and a side window (transparent member per claim 4) and side mirror both on the right side looking forward (visual check member per claim 4) (Pg. 2 image) where the frit has a dot matrix in a halftone pattern serving an aesthetic purpose (Pg. 3 [3]; decorative), where a smooth gradient from solid black to clear glass occurs by gradually decreasing the size of black dots as you move from the edge of the glass where the side mirror is toward the middle (and occupant) (Pg. 3 [3]; Pg. 1 image; the black strip of larger dots at the right edge with a side mirror is reduced reflectance compared to the smaller dots near the middle of the glass toward the occupant).
Tracy further teaches the frit band acts to provide a rougher surface for adhesive to stick to (Pg. 2 [4]) to secure the windshield to the vehicle (Pg. 2 [3]), and that the windshield is on the exterior of the vehicle (Pg. 2 image), one of ordinary skill in the art reasonably understands that where the window is on the exterior of the car the adhesive to hold it is on the interior, and that if the glue is applied to the rough frit for adherence, the frit is also necessarily facing the interior of the vehicle.
Regarding “occupant sits in the seat”, the image of page 2 shows the hands of the driver on the steering wheel on the left side (Pg. 2 image), one of ordinary skill in the art reasonably understands that when a driver is holding a steering wheel, they are sitting.
Applicants’ Fig. 1 shows a side glass 122 to be synonymous with side window (Fig. 1; Pg. 5 [4]).
Regarding “decorative surface being formed such that the reflectance….”, this is product-by-process language, which provides no structural limitations beyond that of a decorative surface with the claimed reflectance, which is addressed above. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond decorative surface with the claimed reflectance, addressed above. The burden therefore shifts to applicant to come forward with a non-obvious difference between the claimed product and the prior art product (MPEP 2113 II).
Regarding claim 3, Tracy teaches each limitation of claim 1 above, and further teaches “frit” that is ceramic paint (Pg. 2 [1]) that is disposed between a vehicle occupant (see hands of “driver”) and a passenger (right looking forward) side transparent window (transparent member per claim 4) and side mirror (visual check member per claim 4) in that order in a width direction (Pg. 2 image) where the frit has a dot matrix in a halftone pattern serving an aesthetic purpose (Pg. 3 [3]; decorative), where a smooth gradient from the solid black to clear glass occurs by gradually decreasing the size of black dots as you move from the edge of the glass toward the middle (Pg. 3 [3]; Pg. 1 image; the black strip of larger dots is reduced reflectance compared to the smaller dots near the middle of the glass toward the occupant). The examiner considers the black dots the first part and the clear space surrounding the black dots the second part and they are shown in a gradation pattern (Pg. 1 image) and as described above. The amount of clear area (second part) is reduced from the driver’s side toward the passenger mirror (visual check member) (Pg. 2 Image with the above citations). The clear area (second part) has a higher reflectance than black dots (first part).
Regarding “formed by being subjected to gradation processing”, this is product-by-process language, which provides no structural limitations beyond that of a gradation, which is addressed above. The structure implied by the process steps should be considered when assessing the patentability of product-by process claims over the prior art (MPEP 2113 I). In this instance, no additional structure is implied beyond “gradation”, addressed above. The burden therefore shifts to applicant to come forward with a non obvious difference between the claimed product and the prior art product (MPEP 2113 II).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tracy in view of AD (“Blindzone Glare Elimination Mirror Method”) (copy provided herewith).
Regarding claim 2, Tracy teaches each limitation of claim 1 above, and further teaches “frit” that is ceramic paint (Pg. 2 [1]) that is disposed between a vehicle occupant (see hands of “driver”) and a passenger (right looking forward) side transparent window (transparent member per claim 4) and side mirror (visual check member per claim 4) in that order (Pg. 2 image) where the frit has a dot matrix in a halftone pattern serving an aesthetic purpose (Pg. 3 [3]; decorative). Tracy does not teach the occupant visually checks the visual check member through the transparent member.
AD is in a similar field of endeavor, passenger cars with mirrors (Pg. 1 [1]) and windows (graphic C) and teaches for a passenger’s side mirror that “you” (the occupant) position your head at the middle of the car and then check to see blindzones are truly eliminated (visually) (Pg. 2 [8]) and graphic C shows this to be done by looking through the side window (transparent member) and then to the mirror (visual check member) and behind (graphic C). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Tracy with the teaching of AD to incorporate the occupant visually checking the side mirror (visual check member) through the side window (transparent member). The motivation for doing so would be to change lanes to see if a vehicle is in the blind spot and safely change lanes (while driving) (Pg. 2 [10]-[11]), which is a necessary action when driving.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784