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 .
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.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8, line 2-3 recites “acrylic resin power”. The word “power” seems to be a misspelling of the word powder as recited in the Abstract. Appropriate correction is required.
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.
Claim 7 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. Claim 7 recites that the pumpable the pumpable thermally foaming filler composition is applied in the form of a rectangular bead, the height HT of the bead is from 1.0 - 3.5 mm and the distance D1 between the first substrate S1 and the second substrate S2 at the place of application of the pumpable thermally foaming filler composition is from 3 – 6 mm. It is unclear how the height HT of the bead can be 3.5mm when the distance between the substrate can be smaller (3.0-3.49999 mm) than the maximum height of the bead.
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (EP 3281970).
As to claim 1, Lin discloses a method of making a vehicle part with a thermally foaming filler (Abstract). Lin discloses that the method comprises of: i) applying a pumpable thermally foaming filler composition on a first substrate Si, and ii) placing the second substrate S2 so that there is a distance between the first substrate Si and the second substrate S2 at the place of application of the pumpable thermally foaming filler composition, and iii) heating the first substrate S1 and the second substrate S2 to a temperature above the activation temperature of the foaming agent to foam the pumpable thermally foaming filler composition, wherein between step ii) and step iii) the applied pumpable thermally foaming filler composition is not in contact with the second substrate S2, and wherein the pumpable thermally foaming filler composition comprises: at least one rubber; a polyvinyl chloride resin and/or acrylic resin powder; a foaming agent (¶24-37, 53-59).
Lin discloses that the substrates may have a gap of 15 mm (¶55) but does not specifically disclose that the distance is 2-10 mm as currently claimed. The recited gap would amount to a mere change in size which is not sufficient to patentably distinguish over the prior art and would have been obvious to one of ordinary skill at the time of filing. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Lin discloses that the foam filler is suitable for forming an insulation material for blocking noise (¶1). Lin discloses that the filler may have an expansion of 300%-1000% (¶46) but fails to specifically teach or disclose that the filler is not in contact with at least one of the substrates prior to the curing step. One of ordinary skill in the art, upon reading Lin, would realize that if there was not a gap/space between the filler and at least one of the substrates the filler would not have room to expand to form the desired insulation layer for absorbing sound and therefore leaving a gap between the uncured filler and at least one of the substrates would have been obvious to one of ordinary skill at the time of filing.
As to claims 2-4, the method of claim 1 is taught as seen above. Lin discloses that it is known to apply the filler in a bead form which has a width of 5 mm (claim 2), a height of 5 mm (claim 3) and a length of 50 mm (claim 4) (¶57).
As to claim 5, the method of claim 1 is taught as seen above. Applying the filler in a square shape would mount to a change in chape which would have been obvious to one of ordinary skill in the art at the time of filing. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One of ordinary skill would recognize that the shape of the bead would need to be adapted to optimally function in the shape of the bonding area given.
As to claim 6, the method of claim 1 is taught as seen above. Lin discloses that the bead has a height of 8 mm (HT) and the spacing between the substrates is 15 mm (DI) (¶55) which would give a DI/HT ratio of 1.875, which falls into the claimed ratio range of 1-6.5.
As to claim 7, the method of claim 1 is taught as seen above. Claim 7 is rejected for the same reasons as claims 1, 5 and 6, since the spacing and size of the bead relate to obvious size changes and the rectangular shape relates to an obvious shape change.
As to claim 8, the method of claim 1 is taught as seen above. Lin discloses that the amount of polyvinylchloride resin and/or acrylic resin powder is 5 to 10 -wt.% based on the total weight of the pumpable thermally foaming filler composition (¶42).
As to claim 9, the method of claim 1 is taught as seen above. Lin discloses that the filler is used to fill closed sections of vehicle body parts, and one of ordinary skill in the art would recognize that the recited beam and panel of a vehicle roof would fall into the recited category of a closed section of a vehicle body part and would have been obvious to make by modifying the disclosed method of Lin.
As to claim 10, the method of claim 1 is taught as seen above. Lin discloses that the filler may comprise of a liquid epoxy (¶53).
As to claim 11, the method of claim 10 is taught as seen above. Lin discloses that the filler may comprise of a curing agent (¶37).
As to claim 12, the method of claim 1 is taught as seen above. Lin discloses that the filler may comprise of dicyandiamide (¶37), which Applicant discloses as a chemical foaming agent.
As to claim 13, Lin discloses an article comprising of two substrates bonded together by a thermally foaming filler (¶55).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Muenz et al. (US 8288447) discloses a foamable composition based on epoxy resins and polyesters.
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/CHRISTOPHER C CAILLOUET/Examiner, Art Unit 1745
/GEORGE R KOCH/Primary Examiner, Art Unit 1745
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