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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (US Patent 7,422,088).
Re claim 1, Ito discloses an insulating element for insulating a structural element in a motor vehicle, the insulating element comprising a carrier (20, figure 1) having at least one fixing element (30, figure 1) for fixing of the carrier to the structural element and at least one receiving element (35, figure 1) and at least one elongated expansion element (40, figure 1) with expandable material, where the expansion element is being mounted on to the receiving element of the carrier.
Re claim 2, the expansion element can be produced by an extrusion method (see column 9, lines 1 and 2).
Re claim 3, the expansion element is formed solely from expandable material (see column 4, lines 65-67).
Re claim 4, the expansion element (40) comprises an insert (46) in the form of a foil or ribbon (it is ribbon shaped), wherein said insert has been covered on both sides by expandable material (there is expandable material on both left and right sides of 46 in figure 1).
Re claim 5, the expansion element has one or two or more than two holes (41).
Re claim 6, the hole has an elongated outline (as shown in figure 1).
Re claim 8, the carrier has one (30, figure1) or two fixing elements.
Re claim 9, the fixing element take the form of a clip (30 is a clip) or of a pushpin.
Re claim 10, the carrier has one or two or more than two receiving elements (35, figure 1).
Re claim 11, the carrier has been produced by an injection molding method (the carrier is capable of being produced by injection molding and thus meets this product by process limitation).
Re claim 12, the at least one receiving element has a barbed hook at one free end (35 includes barbed ends in figure 1).
Re claim 13, just one expansion element is being mounted on each receiving element (as shown in figure 1, there is only one expansion element).
Re claim 14, between two and eight expansion elements are mounted on each receiving element (for this claim only, consider the embodiment of figure 10 where there are two expansion elements, 40a and 40b mounted either directly or indirectly on each receiving element).
Re claim 15, Ito discloses a system in a motor vehicle, the said system comprising a structural element (1, figure 2) having a cavity (7), and the insulating element being disposed in the cavity of the structural element (as shown by figure 2).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ito (US Patent 7,422,088).
Ito discloses all the limitations of the claim, as applied above, except for the expandable material having an expansion rate between 1000% and 4000%.
Merlette et al. teaches using an expandable material having an expansion rate of at least 1000% (see page 5, line 26).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify an insulating element, such as that disclosed by Ito, to have the expandable material having an expansion rate between 1000% and 4000%, as taught by Merlette et al., with a reasonable expectation of success, in order to ensure the cavity in which the device is being used is completely sealed upon actuation of the expandable material (see Merlette et al, page 5, lines 26-28).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references all disclose vehicle insulating elements.
U.S. 7,335,413 teaches a carrier element including an expansion element mounted on a receiving element of the carrier element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason S Morrow whose telephone number is (571)272-6663. The examiner can normally be reached Monday through Friday, 7:30 a.m.-5:00 p.m..
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, Vivek Koppikar can be reached at (571) 272-5109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON S MORROW/Primary Examiner, Art Unit 3612
June 12, 2026
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