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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Germany on 5/31/2023. It is noted, however, that applicant has not filed a certified copy of the German application as required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “raised and recessed area” and claimed “recessed area” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Please note that the raised area is shown and the written specification supports a “raised and/or recessed area”, but the recess area is not clearly drawn.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “configured to” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 14 is 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 14, throughout the claim, uses the term “and/or”. It is unclear to the Examiner what are the metes and bounds of the claim. In other words, the frequent use of “and/or” in the claim makes it unclear what limitations are to included or excluded from the claim.
Due to this confusion, an art rejection for claim 14 will not be forthcoming in this office action.
Claim Rejections - 35 USC § 102
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 1-13 and 15 are rejected under 35 U.S.C. 102a1 as being anticipated by Kneib (DE 10202120362 A1), of record by Applicant.
Regarding independent claim 1, Kneib (‘362) teaches in figure 1 and the corresponding text an operating element (1) for a vehicle interior (not shown), comprising an at least partially transparent cover layer (9) having at least one tactilely detectable raised and/or recessed area (no clear number, but the bump in the middle) on an upper side (no number) of the cover layer (9) facing the vehicle interior, a light source (11) configured to emit light toward an underside (no number) of the cover layer (9) opposite the upper side (no number), a non-transparent mask layer (7, read translucent) arranged between the light source (11) and at least a portion of the cover layer (9), and an actuating element (5), that can be activated by touching the upper side (no number) of the transparent cover layer (9), configured to output an operating signal when activating the actuating element (5).
Regarding dependent claim 2, Kneib (‘362) teaches the mask layer covers at least a portion of the cover layer.
Regarding dependent claim 3, Kneib (‘362) teaches the mask layer at least partially covers the raised and/or recessed region of the cover layer.
Regarding dependent claim 4, Kneib (‘362) teaches the mask layer does not cover a surrounding area of the cover layer surrounding the raised and/or recessed area.
Regarding dependent claim 5, Kneib (‘362) teaches the mask layer (400) comprises at least one recess (8) for allowing the light emitted by the light source (300) to pass through to the cover layer.
Regarding dependent claim 6, Kneib (‘362) teaches the actuating element (500) can be actuated in the area of the at least one recess.
Regarding dependent claim 7, Kneib (‘362) teaches the upper side of the cover layer comprises tactilely detectable areas of different surface properties, in particular different surface roughness (read deformation).
Regarding dependent claims 8, 9,12, and 13, Kneib (‘362) teaches the final structure.
The applicant is claiming the product of the above element including a method (i.e. a process) of making by employing vapor deposition, consequently, this claim is considered a “product-by-process” claim. In spite of the fact that the product-by-process claim may recite only process limitations, it is the product and not the recited process that is covered by the claim. Further, patentability of a claim to a product does not rest merely on the difference in the method by which the product is made. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.
Furthermore, it is well established that a claimed apparatus cannot be distinguished over the prior art by a process limitation. Consequently, absent a showing of an unobvious difference between the claimed product and the prior art, the subject product-by-process claim limitation is not afforded patentable weight (see MPEP 2113).
Regarding dependent claim 10, Kneib (‘362) teaches the cover layer rests against the mask layer without an intermediate air gap.
Regarding dependent claim 11, Kneib (‘362) teaches the cover layer is integrally bonded to the mask layer.
Regarding dependent claim 15, Kneib (‘362) teaches a stacked, in particular immediately stacked, arrangement according to the following order: the cover layer, the mask layer, a first transparent adhesive layer (read glue) by means of which the mask layer is connected to the actuating element, the actuating element, comprising or designed as a transparent capacitive actuating layer, a second transparent adhesive layer (read glue) by means of which the actuating element is connected to the light source, the light source, and a haptic actuator configured to generate a vibration when the actuating element is actuated.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH L WILLIAMS whose telephone number is (571)272-2465. The examiner can normally be reached M-Th 6:30 AM- 5:00 PM.
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, JAMES R. GREECE can be reached at (571) 272-3711. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOSEPH L. WILLIAMS
Primary Examiner
Art Unit 2875
/JOSEPH L WILLIAMS/ Primary Examiner, Art Unit 2875