DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to wiper blade, classified in B60S1/38.
II. Claims 17-20, drawn to a method, classified in C03C 17/32.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process of applying an adhesive onto paper or applying the coating on a windshield surface without scratches.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Christopher Rauch on July 29, 2025 a provisional election was made without traverse to prosecute the invention of group I, claims 1-16.
Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 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).
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 a seal to mitigate premature curing of the reparative material prior to application, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 claims directed to the result of using the claimed wiper blade, such as fill scratches on the surface of the windshield or configured to cure when exposed to ultraviolet light or oxygen or cured reparative material is configured to reduce refraction from a surface of the windshield are directed to the result of the intended use of the apparatus along with the type of substrate.
It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (MPEP2183). Additionally, in apparatus claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim (MPEP2111).
The courts have held that expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim (MPEP 2115).
With regards to the claimed reparative material, applicants’ specification paragraph 28 provides examples for the material, such as polyester resins, phenolic resins, alkyd resins, polycarbonate resins, polyamide resins, polyurethane resins, silicone resins, epoxy resins, polyethylene resins, acrylic resins, polystyrene resins, polypropylene resins, etc.
If the prior art teaches the coating or solution comprises one of the above listed components, then is it interpreted to meet the claimed limitation.
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 12-13 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.
In regards to claim 12, it unclear how the seal is incorporated on the wiper blade or with the reparative material. Would keeping the reparative material within a container be container be sufficient to achieve the claimed functions? Or would it be necessary for the entire wiper blade be in a container? Clarification is requested.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van De Rostyne (US 2010/0095472).
In regards to claim 1, Van De Rostyne teaches a wiper blade (1) comprising:
a wiper blade rubber (2, squeegee) (fig. 1; para. 24-25);
a wiping lip with a surface layer (3, coating) which comprises a material such as polyethylene, polyamide, polypropylene or polytetrafluoroethylene (fig. 1-2; para. 24-27, 37, 41).
In regards to claim 4-7, Van De Rostyne teaches the surface layer comprises polyamide. The surface layer of polyamide is equivalent reparative material to applicants, therefore the surface layer represents a configuration capable of fill scratches on the surface of the windshield, cure when exposed to oxygen, cure when exposed to ultraviolet (UV) light and reduce refraction from a surface of the windshield.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yves (US EP2208649, provided translation cited below).
In regards to claim 1, Yves teaches a wiper blade comprising:
a squeegee provided as a elastomer profile (1) (fig. 1; abstract, para. 40);
a wiping lip is provided as a base layer (3), where the base layer comprises a coating of a particulate anti-friction agent (2, reparative material) (fig. 1; abstract, para. 40).
In regards to claim 2, Yves teaches the wiper blade comprises a top layer (4, seal) on cover the base layer which includes the particulate anti-friction agent (fig. 1; abstract, para. 40).
In regards to claim 3, Yves teaches the top layer is barrier and provides temporary shielding and remains intact during handling, processing, packaging, storage (para. 11, 12). With this information, the top layer comprises a UV light filter.
In regards to claim 4-7, Yves teaches the anti-friction agent comprises polyamide (para. 14, 25). The surface layer of polyamide is equivalent reparative material to applicants, therefore the surface layer represents a configuration capable of fill scratches on the surface of the windshield, cure when exposed to oxygen, cure when exposed to ultraviolet (UV) light and reduce refraction from a surface of the windshield.
Claims 8 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Egner-Walter (US 2012/0005855).
In regards to claim 8, Egner-Walter teaches a wiper blade (6) comprising:
a supporting elements-9 and shell-like spoiler elements-10, where shell-like spoiler elements-10 connects to washing ducts-20/21 (reservoir) that holds a fluid (fig. 1, 3-7, 10-15; para. 23, 25, 28-29);
a wiping rubber-8 (squeegee) is connected to the supporting elements-9 and shell-like spoiler elements-10, the wiping rubber-8 has a wiping lip-12 (fig. 1, 3-7, 10-15; para. 24-25);
a plurality of injection openings-22 are connected to the washing ducts-20/21 are provided along the length of the wiper blade (fig. 1-15; para. 28, 32, 34).
In regards to claim 14, Egner-Walter teaches a tube section-23.2 (filler port) is connected to the washing ducts-20/21 and supplies the fluid to the washing ducts-20/21 (fig. 2, 9; para. 30, 39).
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.
Claim 9-11 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Egner-Walter as applied to claims 8 and 14 above, and further in view of Fang (US 2013/0045332).
In regards to claims 9-11 and 15-16, Egner-Walter as discussed above but does not explicitly teach the fluid comprises a material capable of fill scratches on the surface of the windshield, cure when exposed to oxygen, cure when exposed to ultraviolet (UV) light and reduce refraction from a surface of the windshield.
However, Fang teaches a water repellant compound comprising a silicone based fluid. Fang teaches the fluid is sprayed onto the surface (para. 10-11, 13, 28, 40, 47, 53, 57).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the water repellant compound comprising silicone of Fang onto the fluid of Egner-Walter because Fang teaches it will provide water repellency to the surface (para. 8-9).
With regards to the specific recitations of fill scratches on the surface of the windshield, cure when exposed to oxygen, cure when exposed to ultraviolet (UV) light and reduce refraction from a surface of the windshield, as Fang teaches the silicone compound, which is comparable to the compound disclosed by applicants’ specification paragraph 28, the performance of the applied fluid will be the same.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Egner-Walter as applied to claims 8 and 14 above.
In regards to claims 12-13, Egner-Walter teaches the washing ducts-20/21 (reservoir) holds a fluid prior to ejection (fig. 1, 3-7, 10-15; para. 23, 25, 28-29).
As the washing ducts-20/21 represent an enclosure, this enclosure represent a seal, closure or separate for outside of the washing ducts-20/21 and is capable to provide a function mitigate premature curing of the reparative material prior to application and being an ultraviolet (UV) light filter.
Functional recitations merely require the ability to so perform. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (MPEP 2114).
Also, it is well known that wiper blades come in packaging. This packaging could also being considered a seal which blocks or filters UV.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 8 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18590252 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Binu Thomas whose telephone number is (571)270-7684. The examiner can normally be reached Monday to Thursday, 8:00AM-5:00PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Binu Thomas/Primary Examiner, Art Unit 1717
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