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 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 13 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.
The applicants filed new claim 13.
The claim is indefinite because it is not clear whether or not the recited “vehicle” is a part of the claimed system.
The claim is also indefinite because it fails to define structural relationships between the vehicle and the other parts of the system.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicants amended the claim.
The amended claim recites: “The system of claim 1, further comprising a segment disposed within the cavity and at least partially occluding the cavity opening, the segment defining a lens opening and a lens cover supported by the housing.
Thus, the amended claim recites that the segment defines the lens opening and the lens cover.
Such is not supported by the original disclosure.
The original disclosure clearly recites the segment 56, which defines the lens opening, and a lens cover 68, as separate parts. See at least Figure 4.
While the segment 56 is disclosed as supporting the lens cover 68, the subject matter of the amended claim is not supported by the original disclosure.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weindorf et al (US 2019/0310470) in view of any one of Kim et al (US 2015/0307065), CN 207345672 and DE 102011011412.
Weindorf et al teach a system.
The system comprises:
A housing 12;
An imager with a lens (camera) 18;
A baffle (readable at least on the walls of the part 14;
An inlet opening (readable at least on openings 34A, 34B);
A channel (readable at least on channels 22, 24);
A moveable vent cover movable between open and closed position (readable at least on shutter 44C);
See entire document, especially Figures 1-4 and the related description and the description at [0003-22], [0028-48].
Thus, Weindorf et al teach a system as claimed except for the specific recitation that the moveable vent cover configured to move between an open position, wherein the moveable vent cover extends away from the housing on the exterior thereof, and a closed position, wherein the moveable vent cover is generally flush with an adjacent portion of the housing.
However, the movable vent covers as claimed were known in the art as evidenced by Kim et al (at least Figures 6-7 and the related description), CN 207345672 (at least Figures 1-4 and the related description) and DE 102011011412 (at least Figures 2 and 3 and the related description).
It would have been obvious to an ordinary artisan at the time the invention was filed to utilize the vent covers as proposed by Kim et al, CN 207345672 or DE 102011011412 in the system of Weindorf et al in order to use a known device for its known purpose.
As to claim 2:
Weindorf et al teach:
The claimed lens cover, which is readable at least on part 26.
The claimed segment, which is readable at least on part 14.
As to claim 3:
Weindorf et al teach:
The diverter, which is readable at least on an upper part of the housing extending from a horizontal upper wall of the housing.
As to claim 4 and 8:
Weindorf et al teach:
The actuator for moving vent covers, which is readable at least on part 42.
Further, Kim et al and CN 207345672 teach the covers moved by actuators.
As to claims 5-7:
Weindorf et al teach a controller 20 that controls functioning of the system and configured to control actuator 42 to move vent covers 44 upon receiving an input from vehicle systems such as temperature and moisture sensors, an advanced driver assistance system, etc.
As to claim 9:
Weindorf et al teaches:
The filter, which is readable at least on filters 38, 36.
As to claims 10-11:
Since Weindorf et al teach the housing as connected or integrated into the part of the vehicle, such as mirrors, spoilers, roof racks, side steps, etc., the presence of a mounting plate (readable on parts of the referenced mirrors, spoilers, roof racks, side steps, etc.) is obviously present in the Weindorf et al.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,139,107. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims of the patent is inside of the scope of the instant claims and because the claims of the patent recite all the limitations of the instant claims. Please, note that the instant claims were not the subject of the restriction requirements applied during prosecution of the patent application.
Response to Arguments
Applicant's arguments filed 06/02/2026 have been fully considered but they are not persuasive.
The applicants allege that the shutters in Weindorf et al are internal.
This is not persuasive because at least the shatter 44C is disclosed to cover external air intake 34B.
Further, the rejection is made over the combination of the references.
The applicants attack the applied documents individually.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With respect to the double patenting rejection:
The applicants admitted that the pending claims do not correspond to the claims that were restricted in the parent application, but argue that the subject matter of the referenced claims is the same as the subject matter of the claims restricted in the parent application.
This is not persuasive because the instant claims were not the subject of the restriction requirements applied during prosecution of the patent.
The instant claims and the claims that were the subject of the restriction requirements applied during prosecution of the patent application have different scope.
Further, although 1-13 and claims 1-11 of U.S. Patent No. 12,139,107 are not identical, they are not patentably distinct from each other because the scope of the claims of the patent is inside of the scope of the instant claims and because the claims of the patent recite all the limitations of the instant claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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, Michael Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711
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