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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: There is no mention in the specification that the “spring is directly connected to at least one of the plurality of connected slats” as recited in claim 20.
Claim Objections
Claims 31-39 are objected to because of the following informalities:
In claim 31, the third to last line, it is thought that –the—should be added before “spring”.
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.
Claims 22, 28-30 and 34 are 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 claim 22, line 2, “motor drive reel” lacks clear antecedent basis.
In claim 28, “engagement pad” lacks clear antecedent basis. It is thought that the claim should depend from claim 26 and has been treated as such below.
In claim 34, “connected metallic slats” lacks clear antecedent basis. It is thought that “metallic” should be deleted to correct this.
Claim Interpretation
Since the language on the last line of claim 20, that the “spring is directly connected to at least one of the plurality of connected slats” is not used in the specification, the claim is being interpreted in light of the specification and drawings in terms of how the slats are disclosed to be connected to the spring to determine the meaning of “directly connected”. Namely, paragraph [0038], lines 7-9, states that “in some embodiments, the cab end 102 of the tonneau cover 100 can be attached, such as riveted, screwed, bolted, to an outer surface of the spring reel 302” with no mention of the stats themselves. However, as can be seen in Figures 4A, 4B and 4C, (with Fig 4B. reproduced below and annotated) there appears to be a connecting element (shaded in annotated Fig. 4B below) in the form of a bracket, or the like, which connects the forward most slat 106 to the spring reel 302. Therefore, the phrase from claim 20 that the “spring is directly connected to at least one of the plurality of connected slats” is being broadly interpreted so that such “direct connection” may include a connecting element between the spring reel and the slat.
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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 20-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 5, 2, 10, 7, 11, 3, 12, 13 and 14, respectively (as indicated in the table below) of U.S. Patent No. 12,172,505 in view of Romano US 4,611,848.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 20-30 are a broader recitation of the subject matter of claims 1, 1, 5, 2, 10, 7, 11, 3, 12, 13 and 14, respectively, of U.S. Patent No. 12,172,505. The mentioned claims of U.S. Patent No. 12,172,505 are more specific. Thus the invention of the more specific claims of U.S. Patent No. 12,172,505 is in effect a “species” of the invention of claims 20-30 of the instant application. Since it has been held that the generic invention is anticipated by the species, claims 20-30 are not patentably distinct from the respective mentioned claim 1, 1, 5, 2, 10, 7, 11, 3, 12, 13 and 14, respectively, of U.S. Patent No. 12,172,505. See In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993.)
Instant Invention
US Patent 12,172,505 (18/219,537)
Claim 20: A retractable tonneau cover for a cargo bed of a vehicle, comprising: a pair of side rails; a plurality of connected slats extending between the pair of side rails; a motor operable to extend and retract the plurality of connected slats; a spring connected to an end of the plurality of connected slats and configured to exert a force onto the plurality of connected slats; and a housing configured to contain the motor, the spring, and at least a portion of the plurality of connected slats in a retracted position; and wherein spring is directly connected to at least one of the plurality of connected slats.
Claim 21: The retractable tonneau cover of claim 20, wherein the end of the plurality of connected slats to which the spring is connected is a cab end.
Claim 1: A retractable tonneau cover comprising: a pair of side rails; a plurality of connected slats extending between the pair of side rails; a motor operable to extend and retract the plurality of connected slats; a spring connected to an end of the plurality of connected slats and configured to exert an extending force onto the plurality of connected slats; and a housing configured to contain the motor, the spring, and at least a portion of the plurality of connected slats in a retracted position; wherein the end of the plurality of connected slats to which the spring is connected is a cab end.
Claim 22: The retractable tonneau cover of claim 20, further comprising an emergency release, the emergency release configured to disengage the motor from the motor drive reel.
Claim 5: The retractable tonneau cover of Claim 4, further comprising an emergency release, the emergency release configured to disengage the motor from the motor drive reel.
Claim 23: The retractable tonneau cover of claim 20, wherein the spring is a torsion spring.
Claim 2: The retractable tonneau cover of Claim 1, wherein the spring is a torsion spring.
Claim 24: The retractable tonneau cover of claim 20, wherein the retractable tonneau cover is a hard tonneau cover, each of the plurality of connected slats is an aluminum slat, and each of the plurality of connected slats is covered by vinyl.
Claim 10: The retractable tonneau cover of Claim 1, wherein the retractable tonneau cover is a hard tonneau cover; wherein each of the plurality of connected slats is an aluminum slat; and wherein each of the plurality of connected slats is covered by vinyl.
Claim 25: The retractable tonneau cover of claim 20, wherein the motor is a tubular motor.
Claim 7: The retractable tonneau cover of Claim 6, wherein the motor is a tubular motor.
Claim 26: The retractable tonneau cover of claim 20, further comprising an engagement pad attached to at least one of the pair of side rails, wherein the engagement pad is configured to provide a downward force onto an upward facing surface of the plurality of connected slats.
Claim 11: The retractable tonneau cover of Claim 1, further comprising an engagement pad attached to at least one of the pair of side rails, the engagement pad configured to provide a downward force onto an upward facing surface of the plurality of connected slats.
Claim 27: The retractable tonneau cover of claim 20, wherein at least two of the plurality of connected slats wrap around the spring during retraction.
Claim 3: The retractable tonneau cover of Claim 2, wherein the plurality of connected slats wrap around the spring during retraction.
Claim 28: The retractable tonneau cover of claim 20, wherein the engagement pad is plastic.
Claim 12: The retractable tonneau cover of Claim 11, wherein the engagement pad is plastic.
Claim 29: The retractable tonneau cover of claim 28, wherein the engagement pad has a width of less than 1/2 of the width of one of the pair of side rails.
Claim 13: The retractable tonneau cover of Claim 12, wherein the engagement pad has a width of less than 1/2 of a width of one of the pair of side rails.
Claim 30: The retractable tonneau cover of Claim 28, wherein the engagement pad has a width of less than 1/4 of the width of one of the pair of side rails.
Claim 14: The retractable tonneau cover of Claim 13, wherein the width of the engagement pad is less than 1/4 of the width of one of the pair of side rails.
However, claim 1 of U.S. Patent No. 12,172,505 does not explicitly recite that the spring is directly connected to at least one of the plurality of slats.
Notwithstanding, Romano discloses a retractable tonneau cover (S, Fig. 1) for a cargo bed of a vehicle (95; Fig. 1), comprising: a pair of side rails (16, 17; Fig. 2); a plurality of connected slats (21, 78; Fig. 11) extending between the pair of side rails (as shown in Fig. 1); a spring (torsion spring 67 which acts on spring wheel 62 as shown in Fig. 10) connected to an end (slat 78; Fig. 11) of the plurality of connected slats and configured to exert a force onto the plurality of connected (col. 5, lines 40-47); and a housing (33; Fig. 7) configured to contain the spring, and at least a portion of the plurality of connected slats in a retracted position; and wherein the spring wheel is directly connected (by way of connecting element or bracket 76 Fig. 11) to at least one of the plurality of connected slats, namely the forward most slat (78; Fig. 11).
Therefore, 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 to connect the spring of claim 1 of U.S. Patent No. 12,172,505, directly to a cab end of the plurality of slats as taught by Romano with a reasonable expectation of success because a direct connection eliminates the need for additional elements, such as straps, to connect the spring to the slat near the cab end of the plurality of slats.
Claims 31-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 8, 9 and 10 (which correspond to claims 31-39 as indicated in the table below) of U.S. Patent No. 12,172,505 in view of Burgess US 4,784,427.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 31-39 are a broader recitation of the subject matter of claims 1, 2, 4, 6, 8, 9 and 10 of U.S. Patent No. 12,172,505. The mentioned claims of U.S. Patent No. 12,172,505 are more specific. Thus the invention of the more specific claims of U.S. Patent No. 12,172,505 is in effect a “species” of the invention of claims 31-39 of the instant application. Since it has been held that the generic invention is anticipated by the species, claims 31-39 are not patentably distinct from the respective mentioned claims of U.S. Patent No. 12,172,505. See In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993.)
Instant invention 18/950,405
US Patent 12,172,505 (18/219,537)
Claim 31: A retractable tonneau cover for a cargo bed of a vehicle, comprising: comprising: a pair of side rails; a plurality of connected slats extending between the pair of side rails; a motor operatively coupled to the plurality of connected slats to move the plurality of connected slats relative to the pair of side rails between an extended position and a retracted position; a spring connected to an end of the plurality of connected slats and configured to exert a biasing force onto the plurality of connected slats; a housing configured to contain the motor, the spring, and at least a portion of the plurality of connected slats in the retracted position; and wherein spring is configured to exert the biasing force in a direction away from the housing and toward a tailgate of the vehicle to bias the plurality of connected slats toward the extended position.
Claim 32: The retractable tonneau cover of claim 31, wherein the plurality of connected slats covers the cargo bed in the extended position, and the plurality of connected slats are at least partially withdrawn from the cargo bed in the retracted position, thereby allowing access to the cargo bed of the vehicle.
Claim 33: The retractable tonneau cover of claim 31, wherein the end of the plurality of connected slats to which the spring is connected is a cab end.
Claim 1: A retractable tonneau cover comprising: a pair of side rails; a plurality of connected slats extending between the pair of side rails; a motor operable to extend and retract the plurality of connected slats; a spring connected to an end of the plurality of connected slats and configured to exert an extending force onto the plurality of connected slats; and a housing configured to contain the motor, the spring, and at least a portion of the plurality of connected slats in a retracted position; wherein the end of the plurality of connected slats to which the spring is connected is a cab end.
Claim 34: The retractable tonneau cover of claim 31, wherein the plurality of connected metallic slats are aluminum; and each of the plurality of connected slats is covered by vinyl.
Claim 10: The retractable tonneau cover of Claim 1, wherein the retractable tonneau cover is a hard tonneau cover; wherein each of the plurality of connected slats is an aluminum slat; and wherein each of the plurality of connected slats is covered by vinyl.
Claim 35: The retractable tonneau cover of Claim 31, further comprising a spring reel containing the spring, wherein the spring reel is connected to an end of the plurality of slats.
Claim 4: The retractable tonneau cover of Claim 3, further comprising a spring reel containing the spring, the spring reel being connected to an the end of the plurality of connected slats.
Claim 36: The retractable tonneau cover of Claim 31, further comprising a motor drive reel extending a width of the housing and rotated by rotation of the motor, thereby translating the retractable tonneau cover.
Claim 6: The retractable tonneau cover of Claim 4, further comprising a motor drive reel extending a width of the housing and rotated by rotation of the motor, thereby translating the retractable tonneau cover.
Claim 37: The retractable tonneau cover of Claim 36, wherein the motor is located within the motor drive reel.
Claim 8: The retractable tonneau cover of 6, wherein the motor is located within the motor drive reel.
Claim 38: The retractable tonneau cover of Claim 37, further comprising: a circular drive cog mated to and configured to be rotated by the motor drive reel and configured to mate with the plurality of connected slats in order to move the plurality of connected slats along the pair of side rails between the extended position and the retracted position; and wherein the housing is further configured to contain the circular drive cog.
Claim 9: The retractable tonneau cover of Claim 8, further comprising: a circular drive cog mated to and configured to be rotated by the motor drive reel and configured to mate with the plurality of connected slats in order to retract and/or extend the plurality of connected slats along the pair of side rails between an extended position and/or a retracted position; and wherein the housing is further configured to contain the circular drive cog.
Claim 39: The retractable tonneau cover of Claim 31, wherein the spring is a torsion spring.
Claim 2: The retractable tonneau cover of Claim 1, wherein the spring is a torsion spring.
However, claims 31 and 32 of US Patent 12,172,505 do not explicitly recite that the biasing force in a direction away from the housing is toward a tailgate of the vehicle to bias the plurality of connected slats toward the extended position or wherein the plurality of connected slats covers the cargo bed in the extended position, and the plurality of connected slats are at least partially withdrawn from the cargo bed in the retracted position, thereby allowing access to the cargo bed of the vehicle.
Notwithstanding, Burgess discloses a retractable tonneau cover comprising a plurality of slats (41; Fig. 2) which are “maintained in tension (in the direction of the length of the cover (30; Fig. 2) and away from the roll”, as disclosed on lines 3-5 of the abstract. The direction away from the roll (45; Fig. 3) is also away from the housing (31; Fig. 2) in which the roll is positioned, that is toward the tailgate (26; Fig. 2). In addition, Figure 2 also shows that the plurality of connected slats are partially withdrawn from the cargo bed (rolled into the housing (31; Fig. 2), thereby allowing access to the cargo bed (22; Fig. 2) of the vehicle.
Therefore, 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 to utilize the teachings of Burgess in the invention recited in claims 1 of 12,172,505 to include a tailgate and a cargo bed with a reasonable expectation of success in order to enclose the cargo bed all the way to the tailgate and also in order to selectively access cargo within the cargo bed.
Claims 20, 21, 22, 23, 25, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 3, 4, 9, 11 and 12, respectively (as indicated in the table below) of U.S. Patent No. 10,457,124 in view of Romano US 4,611,848.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 20, 22, 23, 25, 26 and 27 are a broader recitation of the subject matter of claims 1, 3, 4, 9, 11 and 12, respectively, of U.S. Patent No. 10,457,124. The mentioned claims of U.S. Patent No. 10,457,124 are more specific. Thus the invention of the more specific claims of U.S. Patent No. 10,457,124 is in effect a “species” of the invention of claims 20, 22, 23, 25, 26 and 27 of the instant application. Since it has been held that the generic invention is anticipated by the species, claims 20, 22, 23, 25, 26 and 27 are not patentably distinct from the respective mentioned claim 1, 3, 4, 9, 11 and 12, respectively, of U.S. Patent No. 10,457,124. See In re Goodman, 29 USPQ2d 2010 (Fed Cir. 1993.)
Instant invention 18/950,405
US Patent 10,457,124 (15/796,123)
Claim 20: A retractable tonneau cover for a cargo bed of a vehicle, comprising: a pair of side rails; a plurality of connected slats extending between the pair of side rails; a motor operable to extend and retract the plurality of connected slats; a spring connected to an end of the plurality of connected slats and configured to exert a force onto the plurality of connected slats; and a housing configured to contain the motor, the spring, and at least a portion of the plurality of connected slats in a retracted position; and wherein spring is directly connected to at least one of the plurality of connected slats.
Claim 21: The retractable tonneau cover of claim 20, wherein the end of the plurality of connected slats to which the spring is connected is a cab end.
Claim 1: A retractable tonneau cover comprising: a pair of side rails; a plurality of connected slats extending between the side rails; a circular drive cog configured to mate with the plurality of connected slats in order to retract and/or extend the plurality of connected slats along the pair of side rails between an extended position and a retracted position, the circular drive cog configured to mate with a motor drive reel on an inner surface, and the circular drive cog having a diameter of approximately 2 inches or less; a motor within the motor drive reel and configured to rotate the circular drive cog; a spring reel comprising a spring, the spring reel connected to an end of the plurality of connected slats and configured to provide tension onto the plurality of connected slats in a direction opposite to a direction of movement of the plurality of connected slats to the extended position; and a housing configured to contain the circular drive cog, the motor, the spring reel, and at least a portion of the plurality of connected slats in the retracted position.
Claim 22: The retractable tonneau cover of claim 20, further comprising an emergency release, the emergency release configured to disengage the motor from the motor drive reel.
Claim 3: The retractable tonneau cover of Claim 1, further comprising an emergency stop, the emergency stop configured to disengage the motor from the motor drive reel.
Claim 23: The retractable tonneau cover of claim 20, wherein the spring is a torsion spring.
Claim 4: The retractable tonneau cover of Claim 1, wherein the spring is a torsion spring.
Claim 25: The retractable tonneau cover of claim 20, wherein the motor is a tubular motor.
Claim 9: The retractable tonneau cover of Claim 1, wherein the motor is a tubular motor.
Claim 26: The retractable tonneau cover of claim 20, further comprising an engagement pad attached to at least one of the pair of side rails, wherein the engagement pad is configured to provide a downward force onto an upward facing surface of the plurality of connected slats.
Claim 11: The retractable tonneau cover of Claim 1, further comprising an engagement pad attached to at least one of the pair of side rails, the engagement pad configured to provide a downward force onto an upward facing surface of the plurality of connected slats.
Claim 27: The retractable tonneau cover of claim 20, wherein at least two of the plurality of connected slats wrap around the spring during retraction.
Claim 12: The retractable tonneau cover of Claim 1, wherein the plurality of connected slats wrap around the spring reel during retraction.
However, claim 1 of U.S. Patent No. 10,457,124 does not explicitly recite that the spring is directly connected to at least one of the plurality of slats.
Notwithstanding, Romano discloses a retractable tonneau cover (S, Fig. 1) for a cargo bed of a vehicle (95; Fig. 1), comprising: a pair of side rails (16, 17; Fig. 2); a plurality of connected slats (21, 78; Fig. 11) extending between the pair of side rails (as shown in Fig. 1); a spring (torsion spring 67 which acts on spring wheel 62 as shown in Fig. 10) connected to an end (slat 78; Fig. 11) of the plurality of connected slats and configured to exert a force onto the plurality of connected (col. 5, lines 40-47); and a housing (33; Fig. 7) configured to contain the spring, and at least a portion of the plurality of connected slats in a retracted position; and wherein the spring wheel is directly connected (by way of connecting element or bracket 76 Fig. 11) to at least one of the plurality of connected slats, namely the forward most slat (78; Fig. 11).
Therefore, 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 to connect the spring of claim 1 of U.S. Patent No. 10,457,124, directly to a cab end of the plurality of slats as taught by Romano with a reasonable expectation of success because a direct connection eliminates the need for additional elements, such as straps, to connect the spring to the slat near the cab end of the plurality of slats.
Regarding claim 21, claim 1 of U.S. Patent No. 10,457,124, as modified by Romano, discloses:
The retractable tonneau cover of claim 20, as explained above, wherein the end of the plurality of connected slats to which the spring is connected is a cab end, namely the forward most slat (78; Fig. 11).
Claim 24 is are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,457,124 in view of Romano US 4,611,848, as applied above to claim 20 and further in view of Bernardo US 6,113,176
However, 1 of U.S. Patent No. 10,457,124, as modified by Romano, does not disclose that each of the plurality of connected slats is an aluminum slat, and each of the plurality of connected slats is covered by vinyl.
Notwithstanding, Bernardo discloses a tonneau cover (14; Fig. 2) including a plurality of aluminum slats (16; Fig. 2) covered by vinyl (see col. 3, lines 10-15).
Therefore, 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 to construct the plurality of slats of claim 1 of U.S. Patent No. 10,457,124, as modified by Romano, as aluminum slats covered by vinyl as taught by Bernardo with a reasonable expectation of success because the choice of aluminum is a light weight rigid material suitable for such application and a vinyl covering provides a pleasant aesthetic appearance of a flat cover.
Claims 28, 29 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,457,124 in view of Romano US 4,611,848, as applied above to claim 26 and further in view of AU 3241597.
Regarding claim 28, claim 1 of U.S. Patent No. 10,457,124 as modified by Romano, discloses:
The retractable tonneau cover of claim [26], as explained above, except for wherein the engagement pad (rubber weather seal 30; Fig. 4; col. 5, lines 28-30 of Romano) is plastic.
However, AU 3241597 disclose a curtain for use with a curtain sided trailer suspended from an overhead rail (111; Fig. 1; the abstract) and an extruded rubber or plastic seal 30; Fig. 1; page 5,lines 1-2) extending from rail portion (31; Fig, 1) to engage curtain (10; Fig. 1) to prevent ingress of water (page 5, lines 16-18), i.e., a weather seal. Therefore, AU 3241597 teaches that a seal extending from a rail along and engaging a cover element of a trailer can be made from
either rubber or plastic.
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A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The AU 3241597 reference is considered to be relevant art in that the AU 3241597 reference is in the same field of endeavor, namely that which pertains to seal constructions associated with a rail relative to which cover elements slide in the automotive environment, as claim 1 of U.S. Patent No. 10,457,124.
Therefore, 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 to construct the seal “engagement pad” of claim 1 of U.S. Patent No. 10,457,124 as modified by Romano, from a plastic material rather than rubber as taught by AU 3241597 with a reasonable expectation of success in that seals made from either rubber or plastic are functionally equivalent in this instance.
Regarding claim 29, claim 1 of U.S. Patent No. 10,457,124 as modified by Romano and AU 3241597, disclose:
The retractable tonneau cover of claim 28, as explained above, except for wherein the engagement pad (30; Fig. 4 of Roman) has a specific width of less than 1/2 of the width of one (rail 17; Fig. 4 of Romano) of the pair of side rails being explicitly disclosed.
Regarding claim 30, claim 1 of U.S. Patent No. 10,457,124 as modified by Romano and AU 3241597, disclose:
The retractable tonneau cover of claim 28, as explained above, except for wherein the engagement pad (30; Fig. 4 of Roman) has a specific width of less than 1/4 of the width of one (rail 17; Fig. 4 of Romano) of the pair of side rails being explicitly disclosed.
However, with further reference to Claims 29 and 30, Romano does disclose that the width of the engagement pad (30; Fig. 4) to be significantly less than the width of the rail (17; Fig. 4), as illustrated in annotated Fig. 4 below.
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However, section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Therefore, 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 to construct the engagement pad of claim 1 of U.S. Patent No. 10,457,124 as modified by Romano and AU 3241597, to have a width of 1/2 or 1/4 of the width of one of the pair of rails with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 20, 21, 23, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Romano US 4,611,848 in view of Rohr et al. 9,834,076.
Regarding claim 20, Romano discloses:
A retractable tonneau cover (S, Fig. 1) for a cargo bed of a vehicle (95; Fig. 1), comprising: a pair of side rails (16, 17; Fig. 2); a plurality of connected slats (21, 78; Fig. 11) extending between the pair of side rails (as shown in Fig. 1); a spring (torsion spring 67 which acts on spring wheel 62 as shown in Fig. 10) connected to an end (slat 78; Fig. 11) of the plurality of connected slats and configured to exert a force onto the plurality of connected (col. 5, lines 40-47); and a housing (33; Fig. 7) configured to contain the spring, and at least a portion of the plurality of connected slats in a retracted position; and wherein the spring wheel is directly connected (by way of connecting element or bracket 76 Fig. 11) to at least one of the plurality of connected slats, namely the forward most slat (78; Fig. 11).
However, Romano does not disclose the use of a motor operable to extend and retract the plurality of connected slats, where the motor is contained within the housing.
However, Rohr et al. disclose a retractable tonneau cover assembly including a plurality of slats (76; Figs. 2 and 4) which can be wound (col. 10, lines 36-37) around spindle (74; Fig. 4) by way of torsion spring (75; Fig. 4) which may also include a motor (col. 10, lines 38-40) operable to extend and retract the plurality of connected slats, where the motor is naturally contained within housing (66; Fig. 4) since the housing is positioned between the truck bed sidewalls and below the upper edge of the sidewalls.
Therefore, 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 to provide the retractable tonneau cover assembly of Romano to include a motor operable to extend and retract the plurality of connected slats, where the motor is contained within the housing as taught by Rohr et al. with a reasonable expectation of success in order to assist an operator in extending and retracting the cover.
Regarding claim 21, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, wherein the end of the plurality of connected slats (78; Fig. 11 of Romano) to which the spring wheel is connected is a cab end, that is the last slat at the end of the cover closest to the cab when the cover is extended (abstract lines 22-26).
Regarding claim 23, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, wherein the spring is a torsion spring (col. 10, line 36 of Romano).
Regarding claim 26, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, further comprising an engagement pad (rubber seal 30; Fig. 4; col. 5, lines 28-30 of Romano) attached to at least one (17; Fig. 4 of Romano) of the pair of side rails, wherein the engagement pad is configured to provide a downward force (as the slats move along the rails) onto an upward facing surface (Fig. 4 of Romano) of the plurality of connected slats (2l; Figs. 3 and 4 of Romano).
Regarding claim 27, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, wherein at least two of the plurality of connected slats (21, 78; Fig. 11 of Romano) wrap around the spring wheel during retraction (abstract lines 22-26).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Romano US 4,611,848 in view of Rohr et al. 9,834,076 as applied above to claim 20 and further in view of Bremer et al. US 8,931,823.
Regarding claim 22, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, except for further comprising an emergency release, the emergency release configured to disengage the motor from the drove reel.
Notwithstanding, Bremer et al. disclose an emergency release (66; Fig. 8) to disengage a motor (22; Fig. 8) from a drive reel of a vehicle roll up cover (16; Fig. 2). See col. 3, lines 28-30.
Therefore, 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 to provide the retractable tonneau cover of Romano, as modified by of Rohr et al., with an emergency release as taught by Bremer et al. with a reasonable expectation of success to permit movement of the cover in case of a lack of power going to the motor. Motivation provided by Brewer in col. 3, lines 29-35.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Romano US 4,611,848 in view of Rohr et al. 9,834,076 as applied above to claim 20 and further in view of Bernardo US 6,113,176.
Regarding claim 24, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, wherein the retractable tonneau cover is a hard tonneau cover in that it maintains is shape without bowing.
However, Romano, as modified by of Rohr et al., do not disclose that each of the plurality of connected slats is an aluminum slat, and each of the plurality of connected slats is covered by vinyl.
Notwithstanding, Bernardo discloses a tonneau cover (14; Fig. 2) including a plurality of aluminum slats (16; Fig. 2) covered by vinyl (see col. 3, lines 10-15).
Therefore, 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 to construct the plurality of slats of Romano, as modified by of Rohr et al., as aluminum slats covered by vinyl as taught by Bernardo with a reasonable expectation of success because the choice of aluminum is a light weight rigid material suitable for such application and a vinyl covering provides a pleasant aesthetic appearance of a flat cover.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Romano US 4,611,848 in view of Rohr et al. 9,834,076 as applied above to claim 20 and further in view of Stewart et al. US 2016/0236554.
Regarding claim 25, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, except for wherein the motor is a tubular motor.
However, Stewart et al. disclose a roll up tonneau cover (6; Fig. 1) with a tubular motor (40; Fig. 17; last three lines of the abstract) in the winding shaft (Fig. 17; last three lines of the abstract).
Therefore, 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 to construct the motor of Romano, as modified by of Rohr et al., to be a tubular motor positioned within the winding shaft as taught by Stewart et al. with a reasonable expectation of success in order to save space within the cover housing.
Claims 28, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Romano US 4,611,848 in view of Rohr et al. 9,834,076 as applied above to claim 20 and further in view of AU 3241597.
Regarding claim 28, Romano, as modified by of Rohr et al., disclose:
The retractable tonneau cover of claim 20, as explained above, except for wherein the engagement pad (rubber weather seal 30; Fig. 4; col. 5, lines 28-30 of Romano) is plastic.
However, AU 3241597 disclose a curtain for use with a curtain sided trailer suspended from an overhead rail (111; Fig. 1; the abstract) and an extruded rubber or plastic seal 30; Fig. 1; page 5, lines 1-2) extending from rail portion (31; Fig, 1) to engage curtain (10; Fig. 1) to prevent ingress of water (page 5, lines 16-18), i.e., a weather seal. Therefore, AU 3241597 teaches that a seal extending from a rail along and engaging a cover element of a trailer can be made from
either rubber or plastic.
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A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The AU 3241597 reference is considered to be relevant art in that the AU 3241597 reference is in the same field of endeavor, namely that which pertains to seal constructions associated with a rail relative to which cover elements slide in the automotive environment, as the Romano reference.
Therefore, 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 to construct the seal “engagement pad” of in view of Rohr et al., from a plastic material rather than rubber as taught by AU 3241597 with a reasonable expectation of success in that seals made from either rubber or plastic are functionally equivalent in this instance.
Regarding claim 29, Romano, as modified by Rohr et al. and AU 3241597, disclose:
The retractable tonneau cover of claim 28, as explained above, except for wherein the engagement pad (30; Fig. 4 of Roman) has a specific width of less than 1/2 of the width of one (rail 17; Fig. 4 of Romano) of the pair of side rails being explicitly disclosed.
Regarding claim 30, Romano, as modified by Rohr et al. and AU 3241597, disclose:
The retractable tonneau cover of claim 28, as explained above, except for wherein the engagement pad (30; Fig. 4 of Romano) has a specific width of less than 1/4 of the width of one (rail 17; Fig. 4 of Romano) of the pair of side rails being explicitly disclosed.
However, with further reference to Claims 29 and 30, Romano, as modified by Rohr et al. and AU 3241597, does disclose that the width of the engagement pad (30; Fig. 4) to be significantly less than the width of the rail (17; Fig. 4), as illustrated in annotated Fig. 4 below.
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However, section 2144.04 IV. A. of the MPEP sets forth the Federal Circuit case of In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), which held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Therefore, 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 to construct the engagement pad of Romano, as modified by Rohr et al. and AU 3241597, to have a width of 1/2 or 1/4 of the width of one of the pair of rails with a reasonable expectation of success since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Conclusion
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/Joseph D. Pape/ Primary Examiner, Art Unit 3612