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 .
Applicants’ Supplemental Response, filed 7/30/2026, has been entered. As requested, the Supplemental Response supersedes applicants’ amendment filed 7/6/2026. Claims 1-4, 6-10, 12-13, 16, and 18-24 are pending with claims 11 and 14-15 being previously cancelled, claims 5 and 17 being currently cancelled, and claim 24 being currently added.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/16/2024 has been at least partially considered by the examiner. The examiner is again attaching an annotated IDS showing crossed out cites having an incomplete US patent publication numbers. Apparently, the previous annotated IDS (mailed 4/8/2026), when electronically transmitted (within the office and outside the office), did not retain the strikeout positions as intended by the examiner.
It should be noted that the issue with the US patent publications is that they do not show the full 11 digit publication number (i.e. the 4 digit year followed by 7 additional digits). Cites 1-3, 6, and 10-13 are crossed out because these cites show publication numbers having only 10 digits (i.e. there are only 6 digits following the 4 digit year).
Applicants argue that cites 1, 2, 10, and 12 were also cited in an IDS in the parent application (Appl. No. 17609078). However, the publication numbers, for these publications, were also incorrect in the parent case IDS (i.e. showed only 10 digits).
Applicants are encouraged to provide an IDS with correct Publication Numbers in order to ensure that applicants’ applicable publications have been reviewed and considered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 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: 1414
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, 6, 8-9, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shantz et al. (US 20130241226).
Regarding claim 1: Shantz discloses a cavity filling system comprising a structure of an automotive vehicle cavity and a filling member ([0003]). Shantz discloses a carrier member 12 comprising a first and a second surface (Figs. 1-3). Shantz discloses a mass 13 of expandable material located on the carrier member (Figs. 1-3). Shantz discloses an attachment 18 attached to the carrier member, the expandable material or both (Figs. 1-4C; [0025]). Shantz discloses locating the filling member relative to one sidewall of the automotive vehicle cavity 20 (Figs. 4A-4C; [0025]). Shantz discloses a pre-tensioning means located adjacent and integrally formed with the attachment ([0023], [0025]). Shantz discloses that the mass of expandable material is only provided on one of the first surface or the second surface of the carrier member that is opposite to the sidewall of the automotive vehicle cavity to which the filling member is affixed (Figs. 1-4C – as best understood, the examiner finds that Shantz illustrates substantially the same positional relationship between the carrier member surfaces and the mass as disclosed and illustrated by the instant invention). Shantz discloses that upon expansion the mass of expandable material forms a foam that occupies a volume that is at least 500% of the volume occupied by the original unexpanded mass of expandable material and the mass of the expandable material expands from the first surface or the second surface on which the mass of expandable material is applied into the automotive vehicle cavity and that the carrier member is elastically and/or plastically deformable so that the carrier member adapts to at least a portion of a shape of the automotive vehicle cavity (Figs. 4A-4C; [0003], [0016], [0024]; claim 1).
Regarding claim 2: Shantz discloses that pre-tensioning means includes one or more wings that are elastically deformable ([0023], [0025] - the figures show several structures that can be interpreted as the recited wings).
Regarding claim 3: Shantz discloses that the mass of expandable material is provided in segments which are spaced apart ([0017]).
Regarding claim 4: Shantz discloses that the carrier member has a longitudinal extension and the attachment is provided in a middle of the longitudinal extension (Figs. 1-4C).
Regarding claim 6: Shantz discloses that the mass of expandable material expands to form a foam that occupies a volume that is at least 1500% of the volume occupied by the original unexpanded mass of expandable material ([0016]).
Regarding claim 8: Shantz discloses that the mass of expandable material is a heat activated thermosetting material that foams, expands and cures upon exposure to temperature in an e-coat or bake oven ([0016], [0019]).
Regarding claim 9: Shantz discloses that the attachment is a fastener that extends into an opening of the structure for at least partially attaching the filling member to the structure (Figs. 1-4C; [0021], [0025]).
Regarding claim 12: Shantz discloses an automotive vehicle structure with a multitude of cavities and a filling system in at least some of the cavities, that each cavity of the multitude of cavities that is filled comprises a multitude of holes being normalized for the attachment (Figs. 1-4C; [0021], [0025]).
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 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 of this title, 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shantz et al. (US 20130241226), alone.
Shantz discloses the invention substantially as claimed and as discussed above.
Regarding claim 7: Shantz does not explicitly disclose that the volume of each segment of the mass of expandable material is greater than 1 cm3 but less than 2 cm3 prior to expansion of the mass of expandable material. However, Shantz teaches various expansion amounts (100% - 2000%) which may vary depending upon the sealing and/or baffling needs of a particular cavity ([0016]). Further, Shantz teaches that the expandable material may be die-cut sheets and provides a list of suitable part numbers ([0017]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Shantz so that each segment of the mass of expandable material is greater than 1 cm3 but less than 2 cm3 prior to expansion of the mass of expandable material. As Shantz discloses various expansion amounts, that the expandable material can be in sheets, that expansion and segments may vary depending upon the sealing and/or baffling needs of a particular cavity, and that the expandable material can be placed is several positions ([0024] – creating living joints 14), it would have been within routine skill to have selected a specific size expandable material section from a finite selection of sizes (i.e. select a specific size based on the specific sealing and/or baffling needs of a specific cavity). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Claims 10, 13, 16, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Shantz et al. (US 20130241226) in view of Quaderer (US 20140087126).
Shantz discloses the invention substantially as claimed and as discussed above.
Regarding claim 10: Shantz does not explicitly disclose that the filling members are provided as part of a kit of multiple identical filling members and that each filling member differs only in longitudinal extension. Quaderer discloses that the filling members are provided as part of a kit of multiple identical filling members and that each filling member differs only in longitudinal extension (Figs. 1-5; [0016]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Shantz so that the filling members are provided as a kit of multiple identical filling members which only differ in their longitudinal extension, as taught by Quaderer. As Shantz and Quaderer are both directed to cavity filling structures in a vehicle, as vehicle cavity fillers are very well known in the art, as Shantz is silent regarding a kit, and as Quaderer explicitly discloses a kit of multiple identical filling members which only differ in their longitudinal extension, it would have been within routine skill to have selected a kit of multiple identical filling members which only differ in their longitudinal extension from a finite selection of number and sizes of filling members (i.e. identical filling members and differing members). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 13: Shantz, as modified by Quaderer, discloses an automotive vehicle structure with a multitude of cavities and a filling system in at least some of the cavities, that the filling members are provided as a kit of multiple filling members, and that each filling member at least partially differs in longitudinal extension. (Shantz - Figs. 1-4C; [0021], [0025]; Quaderer - Figs. 1-5; [0016]).
Regarding claim 16: Shantz, as modified by Quaderer, discloses a method to produce a kit, wherein one single mold-machine is utilized for all members of the kit and that the single mold machine is provided with chambers and that the chambers are opened or closed depending on a desired longitudinal extension of the carrier member and/or the desired amount of the mass of expandable material (Shantz - Figs. 1-4C; [0017], [0023], [0025]; Quaderer - Figs. 1-5; [0016], [0032] - kit).
Regarding claim 18: Shantz, as modified by Quaderer, discloses that the attachment is centrally located along a longitudinal axis of the carrier member (Shantz – Fig. 2; Quaderer – Figs. 1-5).
Regarding claim 19: Shantz, as modified by Quaderer, discloses that the ends of the carrier member curve inward toward the interior of the automotive vehicle cavity upon installation in the automotive vehicle cavity (Shantz – Figs. 1-4C; Quaderer – Figs. 1-5).
Regarding claim 20: Shantz, as modified by Quaderer, discloses that the mass of expandable material is molded within the walls of the carrier (Shantz – Figs. 1-4C; Quaderer – Figs. 1-5 – material is molded within the cavity at least when it expands).
Regarding claim 21: Shantz, as modified by Quaderer, discloses integrally molding the attachment with the carrier member (Shantz – [0023]; Quaderer – [0031]).
Regarding claim 22: Shantz, as modified by Quaderer, does not explicitly disclose cutting each member to about 80 mm in length. However, as discussed above, Shantz teaches various amounts of members and expansion amounts which may vary depending upon the sealing and/or baffling needs of a particular cavity (Shantz - [0016]). Quaderer teaches that the size and shape of the device may depend on the size and shape of the cavity in which the device will be located (Quaderer – [0016]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Shantz, as modified by Quaderer, so as to cut each member at about 80 mm in length. As Shantz and Quaderer are both directed to cavity filling structures in a vehicle, as vehicles are known to have various cavities and cavity fillers are very well known in the art, and as Shantz and Quaderer discloses that expansion and segments may vary depending upon the sealing and/or baffling needs of a particular cavity, it would have been within routine skill to have selected a specific size expandable material section from a finite selection of sizes (i.e. select a specific size based on the specific sealing and/or baffling needs of a specific cavity). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 23: Shantz, as modified by Quaderer, does not explicitly disclose cutting each carrier member so that the length of the carrier member is less than three times the length of the attachment. However, as discussed above, Shantz teaches various amounts of members and expansion amounts which may vary depending upon the sealing and/or baffling needs of a particular cavity (Shantz - [0016]). Quaderer teaches that the size and shape of the device may depend on the size and shape of the cavity in which the device will be located (Quaderer – [0016]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Shantz, as modified by Quaderer, so as to cut each member so that the length of the member is less than three times the length of the attachment. As Shantz and Quaderer are both directed to cavity filling structures in a vehicle, as vehicles are known to have various cavities and cavity fillers are very well known in the art, and as Shantz and Quaderer discloses that expansion and segments may vary depending upon the sealing and/or baffling needs of a particular cavity, it would have been within routine skill to have selected a specific size expandable material section from a finite selection of sizes (i.e. select a specific size based on the specific sealing and/or baffling needs of a specific cavity). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Shantz et al. (US 20130241226) in view of Lindgren et al. (US 20240317510).
Shantz discloses the invention substantially as claimed and as discussed above.
Regarding claim 24: Shantz does not explicitly disclose that the filling member is installed by a robot. Lindgren discloses that the filling member is installed by a robot. (Figs. 1-5; abstr.; [0001], [0002], [0008], [0130]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Shantz so that the filling members are installed by a robot, as taught by Lindgren. As Shantz and Lindgren are both directed to cavity filling structures in a vehicle, as vehicle cavity fillers are very well known in the art, as robots are very well known in automobile assembling stations, as Shantz is silent regarding a robot, and as Lindgren explicitly teaches the use of robots for installing insulating elements, it would have been within routine skill to have selected an installation method from a finite selection of installation methods (i.e. manual or robotic). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Response to Arguments
Applicants’ amendments and arguments, filed 7/30/2026, with respect to the previous rejections of claims 1-10, 12-13, and 16-23 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants argue that the Office Action does not clearly identify specific parts such as a first surface or second surface, pre-tensioning means, etc. (see Remarks filed 7/30/2026). Applicants assert that the examiner merely refers to figures and cites paragraphs without explicitly identifying each part. Thus, applicants conclude that they have not been properly put on notice and cannot properly evaluate the allegations set forth in the Office Action. The examiner disagrees with applicants’ analysis and conclusions. Unfortunately, Shantz, as well as the other cited reference, do not include the same verbiage as the instant application. These references do not show the exact same figures as shown in the instant application. These references do not use the same reference numbers that are used in the instant application. Thus, the examiner must use the existing reference drawings and cite appropriate reference paragraphs that disclose what applicants are broadly claiming. Applicants should be able to view the cited figures, paragraphs, and examiner statements to understand the rejections. The rejections above explicitly set out the examiner’s rejections. The examiner believes that as applicants are able to present arguments to refute the examiner’s rejection, applicants are able to understand the examiner’s rejections.
Regarding the rejections of the dependent claims, the applicants appear to argue that a claim is not disclosed because the reference does not use the explicit language of the instant claims.
As the applicants’ claims are broad and thus easily disclosed by art that is not exactly the same as applicants’ invention, it is suggested that applicants attempt to amend claims so as to explicitly differentiate them from the cited references as opposed to arguing semantics of the cited reference
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Taras P Bemko/
Primary Examiner, Art Unit 3672
8/24/2026
Prosecution Insights