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 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 20 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 20 tries to claim dependency back to claim 10, but then only repeats the exact limitations of claim 10. It appears from the claim structure that claim 20 should be dependent upon claim 11 and not claim 10.
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 and 3-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 6 of U.S. Patent No. 12,570,230, in view of Figures 1-3, 5 and 7. Although the claims at issue are not identical, they are not patentably distinct from each other because;
Claims 1 and 10 of the present application is anticipated by Claims 1 and 2 of the ‘230 patent in view of the Figures 1 and 2, which disclose, providing a substrate configured as a sheet of metal for forming the metal bumper (Claim 1); forming the metal bumper from the sheet of metal (Claim 1), the metal bumper having an exterior side and an interior side (Fig. 1); forming an aperture within the sheet of metal (Claim 1), including forming a perimeter of the aperture to receive the sensor therein and forming a tab configured to support the sensor (Claim 2); and inserting the sensor into the aperture from the interior side to an assembled position in which a front end of the sensor is flush with the aperture (Fig. 2) and the sensor is fixed to the metal bumper by the tab (Fig. 2 and Claim 2).
Claim 3 of the present application is anticipated by Claims 1 and 2 in view of Figures 1 and 2 of the ‘230 patent as applied to claim 1 above, and further in view of Figures 3 and 5 of the 230 patent which show the tab being formed from in plane material of the bumper itself.
Claim 4 of the present application is anticipated by Claims 1 and 2 in view of Figures 1 and 2 of the ‘230 patent as applied to claim 1 above, and further in view of Figures 5 and 7 of the 230 patent which show the tab being formed from in plane material of the bumper itself, then extended out 90 degrees.
Claim 5 of the present application is anticipated by Claims 1 and 2 in view of Figures 1 and 2 of the ‘230 patent as applied to claim 1 above as the tab supports the sensor without an intermediate (Claim 2).
Claim 6 of the present application is anticipated by Claims 1 and 2 in view of Figures 1 and 2 of the ‘230 patent as applied to claim 1 above, and further in view of Claim 6 of the ‘230 patent which includes all the limitations of the current claim 6
Claim 7 of the present application is anticipated by Claims 1 and 2 in view of Figures 1 and 2 of the ‘230 patent as applied to claim 1 above; claim 1 discloses the forming of the bumper and the aperture as separate functions.
Claims 8 and 9 of the present application are anticipated by Claims 1 and 2 in view of Figure 2 of the ‘230 patent as applied to claim 1 above, Fig 2 of the ‘230 patent shows the body of the sensor 30 directly engaging the tabs 34 (two tabs per sensor).
Allowable Subject Matter
Claims 11-19 are allowed.
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding dependent claim 2, and independent claims 11, after a thorough search of the prior art, the Examiner finds that the applicant's use of a sheet of metal providing a substrate for forming a metal bumper of a vehicle, wherein the sheet is formed as to create an aperture therethrough with the formation of attachment tabs formed from the metal in the aperture, that allows a sensor to be inserted and supported within the aperture with the use of an intervening retainer, is novel.
The closet prior art is that of Blake (US 7,384,082) which discloses a fascia for a vehicle bumper cover that includes an aperture 202a therethrough and is formed so as to support a sensor 213, and wherein the aperture and tabs supporting the sensor are formed integrally with the fascia. The difference lies in that the fascia is not formed of sheet metal, but is molded out of a thermoplastic to be able to create the complex support shape, as well as being a cover for a bumper and not a metal bumper itself.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON S DANIELS whose telephone number is (571)270-1167. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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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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/JASON S DANIELS/Primary Examiner, Art Unit 3612
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