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 .
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Group I, claims 10-11, wherein a clip is extruded integrally with a carrier; and
Group II, claims 12-13, wherein a clip is introduced into an opening of a carrier.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: 1-9 and 14-15.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. Group II does not share the same or corresponding technical feature wherein a clip is extruded integrally with a carrier, as recite1d in Group I. Group I does not share the same or corresponding technical feature wherein a clip is introduced into an opening of a carrier, as recited in Group II.
During a telephone conversation with Tiffany Adigwe on April 9, 2026 a provisional election was made with traverse to prosecute the invention of Group II, claims 1-9 and 12-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claims 1-9 and 12-15 are objected to because of the following informalities: claim 1 is replete with improper idiomatic language.
The Examiner suggests the following amendments in claim 1, “wherein a cross section of the extrudate has a substantially rectangular basic shape perpendicularly to the extrusion direction, wherein a largest width of the extrudate is at most 20% more than a smallest width of the extrudate, and wherein a largest height of the extrudate is at most 20% more than a smallest height of the extrudate”.
Appropriate correction is required.
Claims not listed above are rejected as being dependent upon an objected claim.
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.
Claims 1-9 and 12-15 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.
Claim 1 recites “the extrudate” and “the trimmed extrudates” which lack antecedent basis. The Examiner suggests the following amendments:
1. (Currently Amended) A method for producing an insulating element for insulating a structural element in a motor vehicle, the method comprising the steps of:
extruding a carrier and an expandable material in an extrusion direction to form an extrudate, wherein a cross section of the extrudate having a substantially rectangular basic shape perpendicularly to the extrusion direction, wherein a largest width of the extrudate being at most 20% more than a smallest width of the extrudate, and wherein a largest height of the extrudate being at most 20% more than a smallest height of the extrudate;
trimming the extrudate to form trimmed extrudates; and
removing constituents of the carrier and/or of the expandable material from the trimmed extrudates in order to form individual insulating elements.
Claim 8 recites “a plurality of ribs” which lacks antecedent basis clarity making it unclear if it refers to the previously mentioned rib or to new ones. The Examiner suggests the following amendments:
8.(Currently Amended) The method as claimed in claim 5, wherein a plurality of ribs of the at least one rib are extruded between the walls in order to form a mechanically load-bearing carrier.
Claims not listed above are rejected as being dependent upon a rejected claim.
For further examination purposes, the scope of the claims are read in light of the suggested Examiner amendments.
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.
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(s) 1-4, 9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/224121 in view of Lemelson (US 3,422,648).
WO 2019/224121 (reference paragraphs are to US 2021/0086841 which is the English equivalent of WO 2019/224121) discloses a method for producing an insulating element for insulating a structural element in a motor vehicle (figs. 3a-3f; 4b, 4e, 5a-5c; [0001], [0009], [0075]-[0076], [0098]-[0131]), the method comprising the steps of:
extruding a carrier 11 and an expandable material 13 in an extrusion direction ([0076], the carrier and the expandable material are co-extruded, and the coextrudate is cut to length (i.e., the length direction is inherently the extrusion direction)), wherein a cross section of the extrudate having a substantially rectangular basic shape perpendicularly to the extrusion direction (figs. 3a-3f; 4b, 4e, 5a-5c), wherein a largest width of the extrudate being at most 20% more than a smallest width of the extrudate, and wherein a largest height of the extrudate being at most 20% more than a smallest height of the extrudate (“at most 20%” is understood to include 0% to 20%; figs. 3a-3d, 3f, 4b, 4e, 5b-5c show the substantially rectangular basic shape cross-section wherein a largest width of the extrudate being 0% more than a smallest width of the extrudate, and wherein a largest height of the extrudate being 0% more than a smallest height of the extrudate); and
trimming the extrudate to form trimmed extrudates ([0076], the coextrudate is cut (trimmed) to length).
However, WO 2019/224121 does not disclose removing constituents of the carrier and/or of the expandable material from the trimmed extrudates in order to form individual insulating elements.
Lemelson (US 3,422,648) discloses a method for producing extruded products (fig. 1; col. 4, line 71, to col. 9, line 24), the method comprising the steps of:
extruding an extrudate 15;
trimming an extrudate 15 to form trimmed extrudates (col. 6, lines 49-55; blade 30 for cutting the extrudate 15 into predetermined lengths (trimmed extrudates); and
removing constituents of the extrudate 15 from the trimmed extrudates in order to form individual extruded products (fig. 1; col. 7, lines 43-62; col. 9, lines 13-24; a tool 39’ such as a drill, end mill say or other shaping or cutting device is used to remove constituents of the extrudate to perform desired cross-sectional changes in the trimmed extrudates to form finished individual extruded products having a desired shape).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the method of WO 2019/224121 with a removing step, as disclosed by Lemelson (US 3,422,648), because such a modification is known in the extrusion art and would enable the trimmed extrudates to be formed into finished individual extruded products (which would define individual finished insulating elements).
WO 2019/224121 further discloses the method:
(Claim 2) wherein the extrudate is cut substantially perpendicularly to the extrusion direction during the trimming ([0076], the coextrudate is cut to length (i.e., the length direction is inherently the extrusion direction and the trimming is inherently substantially perpendicular to the extrusion direction in order to cut “to length”));
(Claim 3) wherein the carrier 11 is extruded with a first wall and a second wall, which
extend substantially parallel to one another and are connected to one another by at least one
rib (figs. 3d, 5a).
(Claim 4) wherein the expandable material 13 is extruded between the two walls (figs. 3d, 5a; [0076]);
(Claim 9) wherein the carrier 11 is extruded as a plate and wherein the expandable material 13 is extruded on one or both sides of the plate (figs. 3b-3d, 3f, 4b, 4e, 5b-5c; [0076]); and
(Claim 12) wherein the method comprises the additional steps:
forming at least one opening 7 in the extruded carrier 11 (fig. 4e; [0110]; fig. 4e shows the extrudate being an additional element 3) and
introducing a prefabricated clip 4 into the opening 7 (fig. 2a shows introducing a prefabricated clip 4 into an opening 7 of an additional element 3).
As to claim 13, it would have been further obvious to form the prefabricated clip from a different material than the extruded carrier OR to form the prefabricated clip from the same material as the extruded carrier because such options would have been within an artisan of ordinary skill with a reasonable expectation of success as there are only two options.
As to claim 14, as mentioned above, WO 2019/224121 further discloses that the base elements 2 (the trimmed extrudates) have the shape of a cuboid ([0027], and thus the trimmed extrudates have a rectangular basic outline which lies in a plane of the extrusion direction and of the width of the extrudate. It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the rectangular basic outline to be modified into a non-rectangular shape during the removal because such a modification would have been obvious in view of the removal teachings of Lemelson (US 3,422,648), as mentioned above, to achieve the desired shapes of the finished extruded products by cross sectional changes made during the removal. In other words, it would be obvious in view of such teachings that the finished extruded products can have various desired shapes, including such non-rectangular shape.
As to claim 15, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the method wherein a width of the cross section of the extrudate is reduced during the removal because such a modification would have been obvious in view of the removal teachings of Lemelson (US 3,422,648), as mentioned above, to achieve the desired shapes of the finished extruded products by cross sectional changes made during the removal. Note that cross sectional changes made during the removal would reduce the width and/or height of the cross section of the extrudate.
Allowable Subject Matter
Claims 5-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach or reasonably suggest the method, as recited by claims 5-8, particularly wherein the expandable material is extruded onto outer sides of the walls, a region between the walls remaining free from expandable material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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