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 .
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 (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 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.
Claim(s) 1-3, 6, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Heffelbower (US 2013/0341817).
Regarding claim 1, Heffelbower discloses a method for producing a decorative element for a motor vehicle having a functional opening, the method comprising:
providing a decorative cut-out, the decorative cut-out including a through hole (substrate 15 with line or hole 16);
providing a functional layer (skin 13);
producing a composite including the decorative cut-out and the functional layer by fixing the decorative cut-out to the functional layer using an attachment side of the decorative cut-out (shown in Fig. 4); and
filling the through hole of the decorative cut-out with a filling material to form the functional opening (foam material 35 is injected through line 16 between substrate 15 and skin 13).
Regarding claim 2, Heffelbower shows a gap between substrate 15 and skin 13 – see Figs. 2-5).
Regarding claim 3, Heffelbower discloses injecting 35 foam material through line or hole 16 through substrate 15 to fill the gap between substrate 15 and skin 13. It is the examiner’s position that the hole 16 inherently must be cut into substrate 15.
Regarding claim 6, Heffelbower functionally glues substrate 15 and skin 13 together by injecting foam material 35 therebetween.
Regarding claim 15, Heffelbower discloses wall 26 which functions as a spacing device.
Regarding claim 17, Heffelbower discloses making an automotive trim panel (i.e. decorative element).
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.
Claim(s) 4-5 and 7-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Heffelbower (US 2013/0341817) as described above in view of Diehl et al (US Patent 11,787,161).
Diehl discloses an automotive trim panel with decorative layers (decorative layers 6 and 10) and light-transmissive layers (cover layer 2). It would have been obvious to one having ordinary skill in the art to employ light-transmissive layers, as taught by Diehl, in the method of Heffelbower in order to provide the predictable result of imparting desirable visual and protective features to the trim component. In addition, it is the examiner’s position that the specific materials (functional layers, electronic assembly as well as the through holes and holding element) are well known and conventional in the art and would have been obvious to employ in the method of Heffelbower based on the desirable physical properties of the trim panels being manufactured.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 20 of copending Application No. 18/807,516 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of applicant’s claims 1-17 are contained within or made obvious by claims 1-11 and 20 of 18/807,516.
In particular, 18/807,516 recites:
A method for producing a decorative element with a functional body for a motor vehicle, the method comprising:
providing the functional body and a decorative cut, the functional body including a visible side and a back side, the decorative cut including a visible side, an adhesive side, and an insertion opening corresponding to the functional body;
providing a filling tool including a sealing unit that corresponds to the insertion opening of the decorative cut;
inserting the decorative cut into the filling tool and inserting the functional body into the insertion opening so that an assembly formed from the decorative cut and the functional body is supported via the sealing unit;
forming a non-destructively detachable and fluidically tight fixation between the sealing unit and the assembly on the visible side of the decorative cut and the visible side of the functional body; and
filling the insertion opening of the decorative cut with a filling material.
18/807,516 also recites a decorative element for a motor vehicle, the decorative element produced via the method described above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D SELLS whose telephone number is (571)272-1237. The examiner can normally be reached M-Th 8:30-5.
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, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES D. SELLS
Primary Examiner
Art Unit 1745
/JAMES D SELLS/Primary Examiner, Art Unit 1745