DETAILED ACTION
Response to Amendment
Applicant's amendment filed April 14th, 2026 has been entered. Claims 19-20 have been added.
Election/Restrictions
Applicant's election with traverse of Group II, claims 18-20, in the reply filed on April 14th, 2026 is acknowledged. The traversal is on the ground(s) that since claim 18 requires all of the limitations of claim 1 that a search for claim 18 would inherently necessitate finding all of the limitations of claim 1.
This is not found persuasive because that is not how product-by-process claims are examined. Product-by-process claims are examined only for the product that is created by the process, specifically the structural limitations that would result from the process limitations. Not every process limitation in claim 1 has a corresponding structural limitation that would result from forming the product as claimed. Therefore, a search for the subject matter of claim 18 would not inherently necessitate finding each of the process limitations of claim 1. See Claim Interpretation for more information below.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipates or strongly suggests the claimed subject matter.
The decorative element for a motor vehicle produced by the method according to claim 1 will result in the following limitations being examined:
A decorative element, comprising:
a decorative blank having a visible/first side and an adhesive/second side and an application material layer having an adhesive/first side and a lamination/second side,
wherein the adhesive/second side of the decorative blank is attached to the adhesive/first side of the application material layer by an adhesive layer,
wherein the decorative blank further comprises a functional opening therethrough, and
wherein the functional opening is filled with a cured filler material that is at least partially translucent, at least partially transparent, completely transparent, or light-impermeable.
The method of forming the functional opening, the order of the steps, and the removed waste piece are not considered necessary to the structural limitations of the finished decorative element as set forth in claim 18.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 18 & 20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang et al. (U.S. Pub. No. 2024/0168213 A1) (hereinafter “Zhang”).
Regarding claims 18 and 20, Zhang teaches a trim (decorative element) for a vehicle comprising a trim body (All Figs. [1]) having a lower surface coupled to an upper surface of a flexible light emitter (All Figs. [2]) via an adhesive layer (All Figs. [4]), wherein the trim body comprises a number of light-transmitting holes (functional opening) therethrough (All Figs. [11]), wherein the holes are filled by a light transmitting member (filler material) (All Figs. [3]) comprising a UV curable transparent adhesive [0045], wherein the flexible light emitter may further comprise/be coupled to an electroluminescent assembly or light-emitting diode (LED) panel (electronic assembly) [0049].
Although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipates or strongly suggests the claimed subject matter.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, as applied to claim 18 above, (further) in view of Marcos et al. (U.S. Pub. No. 2023/0063840 A1) (hereinafter “Marcos”).
Zhang only teaches a transparent curable adhesive.
Marcos teaches a decorative trim for a vehicle comprising a plurality of light transmitting holes, wherein the filler is an adhesive that is transparent or translucent, wherein translucent adhesive can improve visual continuity between the perforated areas and non-perforated areas such that they are non-perceptible when switched off and can also provide a diffusing lighting effect that can improve light homogeneity [0085-0089].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a translucent adhesive to a backlit vehicle trim. One of ordinary skill in the art would have been motivated to improve visual continuity between the perforated areas and non-perforated areas such that they are non-perceptible when switched off and can also provide a diffusing lighting effect that can improve light homogeneity [Marcos].
Claims 18-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by Weih (U.S. Pub. No. 2017/0158119 A1) (hereinafter “Weih”) or, in the alternative, under 35 U.S.C. 103 as obvious over Weih, optionally in view of Stietenroth et al. (DE 102012002650 A1) (hereinafter “Stietenroth”) OR Schlemmer (DE 102011082344 A1) (hereinafter “Schlemmer”).
Regarding claims 18-20, Weih teaches a decorative part for a vehicle [0003, 0006] comprising a decorative layer (blank) (All Figs. [12]) having a front visible side (All Figs. [14]) and a rear side (All Figs. [13]) and a carrier (application material) (All Figs. [11]) having a front side (All Figs. unlabeled) and a rear side (All Figs. [22]), the carrier layer may further comprise at least one light source (electronic assembly) (All Figs. [16]) [0025, 0033, 0039], wherein the rear side of the decorative layer is adhered to the front side of the carrier via an adhesive layer (All Figs. [21]), wherein the decorative layer comprises at least one material cutout (All Figs. [15]) formed therethrough, wherein the material cutout is filled with transparent or translucent material, such a lacquer [0013], wherein lacquers are inherently cured.
In the event that lacquers are not inherently cured:
Stietenroth teaches a decorative trim panel that can backlit [0004, 0037], improved over back injection molding which is more expensive and complex [0005-0006, 0008, 0015-0016, 0019], wherein a decorative layer comprises cutouts filled with a light, such as UV/IR, or thermally curable lacquer [0018, 0024-0025], wherein a backside film can be attached using an adhesive layer [0011, 0028, 0079], which can be further adhered to another object or surface with a second adhesive layer [0081].
OR
Schlemmer teaches a backlit decorative layer for a vehicle having a decorative layer with one or more functional openings filled with any number of curable filling materials [0040, 0053], preferably a transparent and curable polymer for stabilizing the perforations [0022].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a curable material, lacquer or otherwise, to fill the cutouts in a decorative (backlit) material. One of ordinary skill in the art would have been motivated to provide a known lacquer for filling openings, improved over injection molding [Stietenroth] OR providing a known filling with the ability to stabilize the functional openings [Schlemmer].
Although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipates or strongly suggests the claimed subject matter.
Claims 18-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by Beer (DE 102019121917 A1) (hereinafter “Beer”) or, in the alternative, under 35 U.S.C. 103 as obvious over Beer, optionally in view of Stietenroth et al. (DE 102012002650 A1) (hereinafter “Stietenroth”) OR Schlemmer (DE 102011082344 A1) (hereinafter “Schlemmer”) OR Wachinger (DE 102014019242 A1) (hereinafter “Wachinger”).
Regarding claims 18-20, Weih teaches a decorative part for a vehicle [0001, 0005, 0031] comprising a decorative layer (blank) (All Figs. [11]) having a front visible side (All Figs. [12]) and a rear side (All Figs. [13]) and a carrier (application material) (All Figs. [16]) having a front side (All Figs. unlabeled) and a rear side (All Figs. [23]), the carrier layer may further comprise at least one light source (electronic assembly) (All Figs. [22]) [0027, 0037, 0055], wherein the rear side of the decorative layer is adhered to the front side of the carrier via an adhesive layer (All Figs. [14]) [0013-0014, 0032], wherein the decorative layer comprises at least one functional opening (All Figs. [17]) formed therethrough, wherein the functional opening(s) is/are filled in a recessed, flush, or protruding manner with the front visible side [0049-0050, 0054-0056] with transparent or translucent or light scattering material, such a lacquer [0049], wherein lacquers are inherently cured.
In the event that lacquers are not inherently cured:
Stietenroth teaches a decorative trim panel that can backlit [0004, 0037], improved over back injection molding which is more expensive and complex [0005-0006, 0008, 0015-0016, 0019], wherein a decorative layer comprises cutouts filled with a light, such as UV/IR, or thermally curable lacquer [0018, 0024-0025], wherein a backside film can be attached using an adhesive layer [0011, 0028, 0079], which can be further adhered to another object or surface with a second adhesive layer [0081].
OR
Schlemmer teaches a backlit decorative layer for a vehicle having a decorative layer with one or more functional openings filled with any number of curable filling materials [0040, 0053], preferably a transparent and curable polymer for stabilizing the perforations [0022].
OR
Wachinger teaches a decorative element for a motor vehicle comprising a decorative layer with at least one functional opening therethrough, wherein the opening is filled with a filler that allows for a convexly shaped protruding curable filler [0009-0012].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a curable material, lacquer or otherwise, to fill the cutouts in a decorative (backlit) material. One of ordinary skill in the art would have been motivated to provide a known lacquer for filling openings, improved over injection molding [Stietenroth] OR providing a known filling with the ability to stabilize the functional openings [Schlemmer] OR providing a filler with the ability to protrude from the openings such that it increases visibility of illumination even at shallow viewing angles [Wachinger].
Although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipates or strongly suggests the claimed subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JEFFREY A VONCH whose telephone number is (571)270-1134. The Examiner can normally be reached M-F 9:30-6:00.
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, Frank J Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY A VONCH/Primary Examiner, Art Unit 1781 May 7th, 2026
Prosecution Insights