Detailed Office Action
The communication dated 2/16/2026 has been entered and fully considered. Claim 4 is cancelled. New claim 21 is added. Claims 1-3 and 5-19 are withdrawn from examination. Claims 1-3 and 5-21 remain pending
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 .
Election/Restrictions
Applicant's election with traverse of Invention III (claims 20-21) in the reply filed on 2/16/2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden to the Examiner by examining all the claims. This is not found persuasive because in the restriction requirement of 12/29/2025, the Examiner detailed that the search burden is due to different classifications/keywords associated with the three different identified inventions. The Applicant has not provided a specific rebuttal as to the Examiner’s error. The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STIETENROTH (DE-102012002650-A1; of record; English translation is provided by the Examiner), hereinafter STIETENROTH. Note that the italicized text below are the instant claims.
Regarding claims 20-21, STIETENROTH discloses A decorative element for a motor vehicle, the decorative element produced via the method according to Claim 1, and the decorative element includes the functional body (claim 20), further comprising a decorative cut, the functional body including a body 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, with the functional body at least partially inserted into the insertion opening and the functional body is at least partially translucent (claim 21) {[FIG. 1] note this figure illustrates the decorative element, 1 is the decorative cut (top is the visible side and bottom is the adhesive side) that has insertion openings 2, 4/11 is the functional body (top is the visible side and bottom is the back side), note that 18 becomes part of 4 and thus the functional body 4 is inserted into the insertion opening 2, [0001], [0002] note the use of decorative element in a variety of applications and thus in a motor vehicle, note the limitation of “motor vehicle” is intended use (see MPEP 2111.02 II), [0011] note that the decorative panel is the decorative cut, carrier plate is the functional body, [0028] note the adhesive layer side of the decorative panel of decorative cut, [0031]-[0032] note that the functional body can be partly or fully translucent}.
Regarding claim 20 limitation of “produced via the method according to Claim 1”, the Examiner notes that claim 20 is a product by process claim. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “even though 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.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
