DETAILED ACTION
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 Objections
Claims 16, 23 and 33 are objected to because of the following informalities:
In claim 16, line 2, it appears that Applicant intended “frame” to be the word --frame--.
In claims 22 and 33, line 3 of each, “the C-pillar portion” has no antecedent basis in the claims. This objection could be overcome by replacing “the C-pillar portion” with --a C-pillar portion.--
In claim 35, line 2, “the B-pillar portion” has no antecedent basis in the claims. This objection could be overcome by replacing “the B-pillar portion” with --a B-pillar portion.--
Appropriate correction is required.
Applicant is advised that should claim 22 be found allowable, claim 32 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Note, it appears that Applicant intended claim 32 to depend from claim 26. Thus, it will be interpreted that way for the purposes of applying prior art below.
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 23 and 33 is 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 claims 23 and 33, line 2 of each, “a B-pillar portion” is a double recitation of that which has already been recited in claim 32.
In claims 23 and 33, the recitation of the C-pillar portion suggests that the B-pillar is not the rear pillar as recited in claims 22 and 32. For the purposes of applying prior art below, claims 23 and 33 will be interpreted as if they depended from claims 16 and 26 respectively. Correction and/or clarification is required.
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.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,643,145. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the patent recites all the steps and structure recited in claim 16 of the instant application, as outlined in the below table:
Instant Application
US Pat. No. 11,643,145
16. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
1. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
deforming the composite blank to form the unitary body side structural frame;
deforming the composite blank to form the unitary body side structural frame;
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
wherein the unitary body side structural frame includes: a lower beam portion . . . ; an upper beam portion;
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a front pillar portion connecting the lower beam portion to the upper beam portion; and
a rear pillar portion connecting the lower beam portion to the upper beam portion,
a rear pillar portion connecting the lower beam portion to the upper beam portion, and
wherein the lower beam portion comprises a rocker portion;
a lower beam portion comprising a rocker portion;
the front pillar portion comprises a hinge pillar portion;
(claim 3) the front pillar portion comprises a hinge pillar portion
the upper beam portion comprises an A-pillar portion;
(claim 3) wherein the upper beam portion comprises an A-pillar portion;
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion and the A-pillar portion.
(claim 5) wherein one of the overlapping regions substantially corresponds to a transition between the A-pillar portion and the hinge pillar portion.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,643,145. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the patent recites all the steps and structure recited in claim 16 of the instant application, as outlined in the below table:
Instant Application
US Pat. No. 12,103,592
16. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
1. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
deforming the composite blank to form the unitary body side structural frame;
deforming the composite blank to form the unitary body side structural frame;
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
wherein the unitary body side structural frame includes: a lower beam portion . . .; an upper beam portion;
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a front pillar portion connecting the lower beam portion to the upper beam portion; and
a rear pillar portion connecting the lower beam portion to the upper beam portion,
a rear pillar portion connecting the lower beam portion to the upper beam portion, and
wherein the lower beam portion comprises a rocker portion;
a lower beam portion comprising a rocker portion;
the front pillar portion comprises a hinge pillar portion;
(claim 4) the front pillar portion comprises a hinge pillar portion;
the upper beam portion comprises an A-pillar portion;
(claim 4) the upper beam portion comprises an A-pillar portion;
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion and the A-pillar portion.
(claim 6) wherein one of the overlapping regions substantially corresponds to a transition between the A-pillar portion and the hinge pillar portion.
Claim 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 51 of copending Application No. 18/819,050 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the reference application recites all the structure of claim 16 in the instant application as outlined in the below table:
Instant Application
Application 18/819,050
16. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
16. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
deforming the composite blank to form the unitary body side structural frame;
deforming the composite blank to form the unitary body side structural frame;
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a rear pillar portion connecting the lower beam portion to the upper beam portion,
a rear pillar portion connecting the lower beam portion to the upper beam portion,
wherein the lower beam portion comprises a rocker portion;
wherein the lower beam portion comprises a rocker portion;
the front pillar portion comprises a hinge pillar portion;
the front pillar portion comprises a hinge pillar portion;
the upper beam portion comprises an A-pillar portion;
the upper beam portion comprises an A-pillar portion,
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion and the A-pillar portion.
(claim 21) wherein one of the overlapping regions substantially corresponds to a transition between the A-pillar portion and the hinge pillar portion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 26 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of copending Application No. 18/819,050 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 22 of the reference application recites all the structure of claim 26 in the instant application as outlined in the below table:
Instant Application
Application 18/819,050
26. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
16. A method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
joining the blanks to each other to form a composite blank, wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks;
deforming the composite blank to form the unitary body side structural frame;
deforming the composite blank to form the unitary body side structural frame;
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
wherein the unitary body side structural frame includes a lower beam portion and an upper beam portion,
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a front pillar portion connecting the lower beam portion to the upper beam portion, and
a rear pillar portion connecting the lower beam portion to the upper beam portion,
a rear pillar portion connecting the lower beam portion to the upper beam portion,
wherein the lower beam portion comprises a rocker portion,
wherein the lower beam portion comprises a rocker portion;
the front pillar portion comprises a hinge pillar portion, and
the front pillar portion comprises a hinge pillar portion;
the upper beam portion comprises an A-pillar portion, and
the upper beam portion comprises an A-pillar portion, and
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion and the rocker portion.
(claim 22) wherein one of the overlapping regions substantially corresponds to a transition between the rocker and the hinge pillar portion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 16-17, 19, 21, 23-27, 29, and 33-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kerby (US 3,159,419).
With respect to claim 16, Kerby discloses a method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks 10/11a/11b/14/13;
joining the blanks to each other to form a composite blank (Kerby, col. 2, lines 21-25), wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks (“The elements are joined by welds, preferably mash welds, at the weld lines A, B, C, D, E, F and G,” Kerby, col. 2, lines 21-22 and col. 2, lines 35-36; Fig. 10);
deforming the composite blank to form the unitary body side structural frame (“die-forming the composite welded frame into a body-frame shape by a single die-forming operation,” Kerby, col. 1, lines 63-65);
wherein the unitary body side structural frame includes a lower beam portion 10 and an upper beam portion 14, a front pillar portion 11 connecting the lower beam portion 10 to the upper beam portion 14 (as shown in Fig. 1 of Kerby), and a rear pillar portion 13 connecting the lower beam portion 10 to the upper beam portion 14, wherein
the lower beam portion 10 comprises a rocker portion (“sill or rail portion,” Kerby, col. 2, line 14);
the front pillar portion 11 comprises a hinge pillar portion 11a;
the upper beam portion comprises an A-pillar portion 11b/14, and
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion and the A-Pillar portion 11b/14 (as shown by line B in Figure 1 of Kerby).
With respect to claim 17, Kerby discloses that joining the blanks 10/11a/11b/14/13 to each other comprises welding the blanks to each other in the one or more overlapping regions (Kerby, col. 2, lines 21-22 and col. 2, lines 35-36).
With respect to claim 19, Kerby discloses that the overlapping region corresponding to the transition between the hinge pillar portion 11a and the A-pillar portion 11b/14 is arranged within the hinge pillar portion 11a (note: the overlapping region is by definition formed from a part of the hinge pillar portion and a part of the A-pillar portion and thus is at least partly arranged within the hinge pillar portion).
With respect to claim 21, Kerby discloses that the plurality of blanks 10/11a/11b/14/13 comprises blanks made of different material and/or blanks of different thicknesses (“different thicknesses,” Kerby, col. 2, lines 26-34).
With respect to claim 23 (interpreted as if depending from claim 16, see above 112(b) rejection), Kerby discloses that the unitary body side structural frame further comprises a B-pillar portion 12 arranged between the hinge pillar 11a portion and the C-pillar portion 13 and extending from the rocker portion 10 to the A-pillar portion 11b/14 as shown in Fig. 1 of Kerby.
With respect to claim 24, Kerby discloses that one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion 11a and the rocker portion 10 (as shown by line C in Fig. 1 of Kerby).
With respect to claim 25, Kerby discloses that the overlapping region corresponding to the transition between the hinge pillar portion 11a and the A-pillar portion 11b/14 (line B) has a length that substantially corresponds to the width of the hinge pillar portion 11a (“The elements are joined by welds, preferably mash welds, at the weld lines A, B, C, D, E, F and G. All of the weld lines are so located that they will extend across an element,” Kerby, col. 2, lines 21-24).
With respect to claim 26, Kerby discloses a method for manufacturing a unitary body side structural frame of a vehicle comprising:
providing a plurality of blanks 10/11a/11b/14/13;
joining the blanks to each other to form a composite blank (Kerby, col. 2, lines 21-25), wherein joining the blanks includes forming one or more overlapping regions formed by partially overlapping two blanks (“The elements are joined by welds, preferably mash welds, at the weld lines A, B, C, D, E, F and G,” Kerby, col. 2, lines 21-22 and col. 2, lines 35-36; Fig. 10);
deforming the composite blank to form the unitary body side structural frame (“die-forming the composite welded frame into a body-frame shape by a single die-forming operation,” Kerby, col. 1, lines 63-65);
wherein the unitary body side structural frame includes a lower beam portion 10 and an upper beam portion 14, a front pillar portion 11 connecting the lower beam portion 10 to the upper beam portion 14 (as shown in Fig. 1 of Kerby), and a rear pillar portion 13 connecting the lower beam portion 10 to the upper beam portion 14, wherein
the lower beam portion 10 comprises a rocker portion (“sill or rail portion,” Kerby, col. 2, line 14);
the front pillar portion 11 comprises a hinge pillar portion 11a;
the upper beam portion comprises an A-pillar portion 11b/14, and
wherein one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion 11a and the rocker portion 10 (as shown by line C in Figure 1 of Kerby).
With respect to claim 27, Kerby discloses that joining the blanks 10/11a/11b/14/13 to each other comprises welding the blanks to each other in the one or more overlapping regions (Kerby, col. 2, lines 21-22 and col. 2, lines 35-36).
With respect to claim 29, Kerby discloses that the overlapping region corresponding to the transition between the hinge pillar portion 11a and the rocker portion 10 is arranged within the hinge pillar portion 11a (note: the overlapping region is by definition formed from a part of the hinge pillar portion and a part of the rocker portion and thus is at least partly arranged within the hinge pillar portion).
With respect to claim 33 (interpreted as if depending from claim 26, see above 112(b) rejection), Kerby discloses that the unitary body side structural frame further comprises a B-pillar portion 12 arranged between the hinge pillar 11a portion and the C-pillar portion 13 and extending from the rocker portion 10 to the A-pillar portion 11b/14 as shown in Fig. 1 of Kerby.
With respect to claim 35, Kerby discloses that one of the overlapping regions corresponds to a transition between the B-pillar portion 12 and the rocker portion 10 (as shown by line E in Fig. 1 of Kerby).
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.
Claims 18 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kerby (US 3,159,419), as applied to claim 17 or claims 27 above, and further in view of Iyoshi et al. (US 2017/0297628).
With respect to claims 18 and 28, Kerby discloses the claimed method except that Kerby discloses mash welding the blanks instead of spot welding. However, Iyoshi et al. teach a similar method of joining vehicle blanks using spot welding (Iyoshi et al., paragraph [0040]; Fig. 4).
It 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, with a reasonable expectation of success, to replace the mash welding disclosed by Kerby for the teaching of Iyoshi et al. for the advantage of cost savings provided with spot welding.
Claims 20 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kerby (US 3,159,419), as applied to claim 16 or claim 26 above, and further in view of Breidenbach et al. (US 2016/0186280).
With respect to claims 20 and 30, Kerby discloses the claimed method except for the step of deforming comprising hot forming. However, Breidenbach et al. teach attaching vehicle blanks 1 and 2 forming a composite blank and then deforming the composite blank to form a structural frame comprises hot forming the composite blank (Breidenbach et al., paragraph [0033]; Fig. 4).
It 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, with a reasonable expectation of success, to combine the teaching of Breidenbach et al. with the method disclosed by Kerby for the advantage of causing one or more connection points to have a least a partially hardened microstructure (Breidenbach et al., abstract).
With respect to claim 31, Kerby discloses that the plurality of blanks 10/11a/11b/14/13 comprises blanks made of different material and/or blanks of different thicknesses (“different thicknesses,” Kerby, col. 2, lines 26-34).
Claims 22, 32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kerby (US 3,159,419).
With respect to claims 22 and 32, Kerby discloses the claimed method except for the rear pillar portion comprising a B-pillar portion. However, it has been held that making something separable is obvious if there is a motivation for separating that structure. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”). See MPEP § 21044.04, part V.
In this case it making the side structural frame disclosed by Kerby separable between the B and C pillars, resulting in a front frame part and a rear frame part, would be desirable for the purpose of easier handling of the frame parts during manufacture (i.e. lighter weight and smaller size for each part). In such a case, the rear pillar portion of a front frame part would comprise the B-pillar portion.
With respect to claim 34, Kerby discloses that one of the overlapping regions substantially corresponds to a transition between the hinge pillar portion 11a and the A-pillar portion (as shown by line B in Fig. 1 of Kerby).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J COLILLA whose telephone number is (571)272-2157. The examiner can normally be reached M-F 7:30 - 4:00.
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, Amy Weisberg can be reached at 571-270-5500. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Daniel J Colilla/ Primary Examiner, Art Unit 3612
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