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’ Amendment, filed 8/19/2026, has been entered. Claims 1 and 4-18 pending with claims 2-3 being currently cancelled and claims 14-18 being currently added.
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 and 4-18 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 that “a second component of the acoustic seal has a third contact area, which is in contact with the roof frame”. Claim 15 recites “a second component sealing portion contacting the roof frame, wherein the first sealing portion and the second sealing portion are formed from different elastomeric materials”. These recitations are indefinite as it is unclear whether the claimed seal is a single piece having two components (as at least alluded to in the applicants’ arguments and the original disclosure) or if the seal is two separate parts.
The seal, as broadly claimed, is interpreted as being more than one piece (i.e. more than one seal).
Dependent claims 4-14 and 16-18 do not act to cure the deficiencies of parent claims 1 and 15 and are thereby rejected for at least the same rationale.
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:
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, 4-7, 9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mino et al. (DE 3140050 – see IDS).
Please note that cited portions of Mino are from the Espacenet Translation (see IDS).
Regarding claim 1: Mino discloses a vehicle roof 1 (Fig. 1; title; [0003], [0004]). Mino discloses a roof frame (Figs. 1, 9 - frame of 1 – illustrated but not numbered). Mino discloses an outer roof skin element and a headliner 10, 11, 22 which forms a visible surface visible from a vehicle interior (Figs. 1, 9; [0065], [0077]). Mino discloses an acoustic seal 9 (Mino teaches noise reduction and a seal will at least be some type of acoustic barrier) which fully bridges a gap between the outer roof skin element and the headliner (Figs. 9, 21, 22; [0077], 0078], [0085]). Mino discloses that a first component of the acoustic seal has a first contact area, which is in contact with the outer roof skin element and a second contact area, which is in contact with the headliner (Figs. 9, 21, 22). Mino discloses that, and that a second component of the acoustic seal has a third contact area, which is in contact with the roof frame (Figs. 9, 21, 22 – at least a portion of seal 9 (or a second seal) is at least indirectly in contact with the roof (roof/roof frame)).
Regarding claim 4: Mino discloses that the first contact area of the first component of the acoustic seal is a tube portion (Figs. 9, 21, 22).
Regarding claim 5: Mino discloses that the second contact area of the first component of the acoustic seal is a solid portion (Figs. 9, 21, 22).
Regarding claim 6: Mino discloses that the third contact area the second component of the acoustic seal has a seal base, which is fixed to a counter element of the roof frame (Figs. 9, 21, 22 - at least a portion of seal 9 (or a second seal) is at least indirectly in contact with a counter element).
Regarding claim 7: Mino discloses that the seal base has a groove, in which a rib of the roof frame engages, said rib forming the counter element (Figs. 9, 21, 22).
Regarding claim 9: Mino discloses that the second contact area of the first component of the acoustic seal is in contact with an edge surface of an edgefold of the headliner (Figs. 9, 21, 22 – at least an indirect contact is illustrated).
Regarding claim 11: Mino discloses that the first contact area of the first component of acoustic seal is in circumferential contact with the outer roof skin element from below and in contact with the headliner from above (Figs. 9, 21, 22 – at least an indirect contact is illustrated).
Regarding claim 12: Mino discloses that the outer roof skin element comprises an at least partially transparent window element (Fig. 1; [0058], [0061]).
Regarding claim 13: Mino discloses that the outer roof skin element is a fixed roof element or a lid element of a roof opening system (Fig. 1; [0058], [0061]).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mino et al. (DE 3140050 – see IDS) in view of Kohout et al. (US 20020070586).
Please note that cited portions of Mino are from the Espacenet Translation (see IDS).
Mino discloses the invention substantially as claimed and as discussed above.
Regarding claim 8: Mino does not explicitly disclose that the acoustic seal is provided with a lubricating varnish and that the lubricating varnish is disposed on the first contact area and the second contact area of the first component of the acoustic seal. Kohout discloses that a vehicle seal can be provided with a lubricating varnish ([0008], [0017], claims 7, 13). 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 Mino to use a lubricating varnish, as taught by Kohout to greatly reduce friction and wear, so that Mino’s acoustic seal is provided with a lubricating varnish and that the lubricating varnish is disposed on the first contact area and the second contact area of the first component of the acoustic seal. As Mino and Kohout are both directed to seals associated with an opening roof, as acoustic seals are very well known in the vehicle arts, as Mino is silent regarding lubrication, and as Kohout explicitly teaches a lubricating varnish for roof opening seals to reduce friction and wear, it would have been within routine skill to have selected a lubricant for acoustic seals from a finite selection of configurations of acoustic roof seals (i.e. select desired seals and desired lubricants). Such a simple substitution/addition and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mino et al. (DE 3140050 – see IDS) in view of Kalkbrenner et al. (US 20200016964).
Please note that cited portions of Mino are from the Espacenet Translation (see IDS).
Mino discloses the invention substantially as claimed and as discussed above.
Regarding claim 10: Mino does not explicitly disclose that the first contact area of the first component of the acoustic seal is in contact with a foamed or injection-molded mold portion of the outer roof skin element. Kalkbrenner discloses that a vehicle outer roof skin element can include a foamed or injection-molded mold portion ([0033]). 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 Mino to include a foamed or injection-molded mold portion, as taught by Kalkbrenner, so that the first contact area of the first component of Mino acoustic seal can be in contact with a foamed or injection-molded mold portion of the outer roof skin element. As Mino and Kalkbrenner are both directed to vehicle roofs having a lid for opening and closing a roof opening, as lids for roof openings are very well known in the art, as Mino is silent regarding manufacturing details of the roof structures, and as Kalkbrenner explicitly teaches injection molded parts that are part of the outer roof skin, it would have been within routine skill to have selected a specific outer roof skin configuration from a finite selection of outer roof skin configurations (i.e. those configurations having molded parts). Such a simple substitution/addition and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Claims 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Mino et al. (DE 3140050 – see IDS) in view of Ortega et al. (US 20220134968).
Please note that cited portions of Mino are from the Espacenet Translation (see IDS).
Mino discloses the invention substantially as claimed and as discussed above.
Regarding claim 15: Mino discloses a vehicle roof assembly 1 (Fig. 1; title; [0003], [0004]). Mino discloses a roof frame (Figs. 1, 9 - frame of 1 – illustrated but not numbered). Mino discloses an outer roof skin element and a headliner 10, 11, 22 spaced from the outer roof skin element (Figs. 1, 9; [0065], [0077]). Mino discloses a two-component acoustic seal (Mino teaches noise reduction and a seal will at least be some type of acoustic barrier; Mino discloses multiple seals) mounted on the roof frame and extending circumferentially between the outer roof skin element and the headliner (Figs. 9, 21, 22; [0077], 0078], [0085] – Mino’s seals meet the broadly recited limitation). Mino discloses that the acoustic seal comprises a first component sealing portion contacting the outer roof skin element and the headliner and a second component sealing portion contacting the roof frame (Figs. 9, 21, 22 – at least a portion of seal 9 (or a second seal) is at least indirectly in contact with the roof (roof/roof frame)).
Mino does not explicitly disclose that the first sealing portion and the second sealing portion are formed from different elastomeric materials. Ortega teaches that different portions of a seal can have differing materials ([0065]). 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 Mino so that the first sealing portion and the second sealing portion are formed from different elastomeric materials, as taught by Ortega. As Mino and Ortega are both directed to sealing, as seals around a movable roof portion are very well known in the art, as Mino is silent regarding manufacturing details of the seals, and as Orte explicitly teaches that different portions of a seal can have differing materials, it would have been within routine skill to have selected a specific seal configuration from a finite selection of seal configurations (i.e. seals of one material or seals with differing materials). Such a simple substitution/addition and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 17: Mino, as modified by Ortega, discloses that the two-component acoustic seal is an extrusion ([0050]).
Regarding claim 18: Mino discloses that the acoustic seal is configured for mechanically decoupling the headliner from the outer roof skin element and forming a visible trim region that conceals the gap therebetween from the vehicle interior (Figs. 1, 9; [0065], [0077]).
Allowable Subject Matter
Claims 14 and 16 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.
Vehicle roof openings including seals, internal headliner, and roof frames (surrounding the opening) are very well known in the art. Representative art which appears close to the claimed invention includes Mino et al. (DE 3140050 – see IDS), Ortega et al. (US 20220134968), Kalkbrenner et al. (US 20200016964), Kohout et al. (US 20020070586), Huelsen et al. (US 20210241752), van Boxtel et al. (US 11479100), Allali (US 20170240035), Zunzer (US 12240297), Iimori et al. (US 6485092), Brocke et al. (US 5538317), and Begg et al. (US 20220032577). In general, this art, alone or in combination, discloses various recited features, including but not limited to, a vehicle, a vehicle roof, a vehicle roof assembly, a roof frame, an outer roof skin element, a headliner spaced from the outer roof skin element, a two-component acoustic seal mounted on the roof frame and extending circumferentially between the outer roof skin element and the headliner, that the acoustic seal comprises a first component sealing portion contacting the outer roof skin element and the headliner and a second component sealing portion contacting the roof frame, and that the first sealing portion and the second sealing portion are formed from different elastomeric materials. Thus, upon reviewing these cited publications, and their included references, it appears that the claimed subject matter might teach a generally known concept. However, this art fails to disclose or fairly suggest the specifically combined structure as being claimed in the instant application. Specifically, the explicitly identified materials of the two components of the seal when combined with the independent claims are not taught. It could be argued that the individual structure is generally known in the art and thus, could just be assembled to disclose the claimed invention but such is not easily conceived from this art. The instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. Further, the claimed structures are sufficiently detailed to be distinguishable when configured as claimed. The examiner can find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application. Thus, it would not have been within routine skill to glean the specifically combined limitations of the instant invention, from the art, without the benefit of hindsight reasoning or extensive experimentation.
Response to Arguments
Applicants’ amendments and arguments, filed 8/19/2026, with respect to the previous rejections of claims 1-13 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants’ primary argument appears to focus on a two component seal and that various components have various contact areas. Although this argument has merits, it is not clear from the broadly recited claims as to what the seal comprises. It appears from the specification and at least alluded to in claim 15 that the two component seal is actually a single seal that is formed from two different components (and materials as stated in claims 14 and 16). The claims can be broadly interpreted so that a two component seal is actually two separate seals that can be made from different materials. As discussed in the Interview of 7/21/2026, it was suggested that the two component seal is better defined and that it is explicitly clear that a single seal has the three claimed contact areas as well as the two differing structural components of the single seal. Although claim 15 attempts to better define the seal structure, it still falls short of distinguishing the claim over the cited art.
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). Applicant is 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.
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/Taras P Bemko/
Primary Examiner, Art Unit 3672
9/11/2026
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