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 .
Election/Restrictions
The Restriction removed due to Response to Election/Restriction filed on 09/29/2026.
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.
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.
Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Wheatley US 5431445 A in view of Heatherington US 6,318,775 B1.
Regarding claim 1, Wheatley US 5,431,445 A discloses a front rail
(rails 12 shown in Figure 1) for a vehicle frame (vehicle frame 10 shown in Figure 1), the front rail (rails 12 shown in Figure 1) comprising: a tubular beam formed along a length to define a cross-sectional shape that extends the length of the tubular beam in column 1, lines 10-25 and column 4, lines 25-30; wherein the tubular beam (column 1, lines 10-25 and column 4, lines 25-30) has a front end configured to couple with a bumper assembly (front bumper beam 14 shown in Figure 1) and a rear end opposite the front end and configured to couple to a mid-frame component (passenger compartment area 16 shown in Figure 1); wherein the cross-sectional shape of the tubular beam (column 1, lines 10-25 and column 4, lines 25-30) is configured to undergo axial loading (column 1, lines 10-20; column 2, lines 1-15 and lines 55-65; shown in Figures 5a-5d; and column 3, lines 30-40) in a frontal vehicle impact between the front and rear ends; and wherein the tubular beam (column 1, lines 10-25 and column 4, lines 25-30) includes at least one of a first crush initiator (first set of corner divots 24 shown in Figure 2) in a first crush area (in column 4, lines 25-45) along the tubular beam (column 1, lines 10-25 and column 4, lines 25-30) and a second crush initiator (second set of corner divots 24' shown in Figure 2) in a second crush area (in column 4, lines 25-45) along the tubular beam (column 1, lines 10-25 and column 4, lines 25-30).
However, Wheatley US 5,431,445 A does not show a tubular beam comprising a high-strength metal sheet.
Heatherington US 6,318,775 B1 teaches an elongated
high-strength metal beam roll-formed from sheet steel.
Regarding claim 1, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the tubular beam of Wheatley US 5,431,445 A comprising a high-strength metal sheet, as taught by Heatherington US 6,318,775 B1, with a reasonable expectation of success in order to provide superior tensile strength, toughness, and wear resistance.
Regarding claim 8, Wheatley US 5,431,445 A, as modified, discloses the front rail (rails 12 shown in Figure 1 of Wheatley US 5,431,445 A) of claim 1, wherein the second crush initiator (second set of corner divots 24' shown in Figure 2 of Wheatley US 5,431,445 A) comprises a groove formed in at least one corner (corners 22 of Figure 2 of Wheatley US 5,431,445 A) of the tubular beam (column 1, lines 10-25 and column 4, lines 25-30 of Wheatley US 5,431,445 A) in the second crush area (in column 4, lines 25-45 of Wheatley US 5,431,445 A).
Allowable Subject Matter
Claims 13-20 are allowed.
Claims 2-7 and 9-12 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, Wheatley US 5,431,445 A discloses the front rail
(rails 12 shown in Figure 1) of claim 1 but does not show wherein the
cross-sectional shape defines an enclosed shape comprising a hollow channel extending longitudinally the length of the tubular beam.
Regarding claim 3, Wheatley US 5,431,445 A discloses the front rail
(rails 12 shown in Figure 1) of claim 1 but does not show wherein the
cross-sectional shape defines an enclosed shape comprising a plurality of separated hollow channels extending longitudinally the length of tubular beam.
Claims 4 and 12 depend on claim 3.
Regarding claim 5, Wheatley US 5,431,445 A discloses the front rail
(rails 12 shown in Figure 1) of claim 1, wherein the cross-sectional shape defines an enclosed shape comprising a first side wall (one side 20 shown in Figure 2), a second side wall (one side 20 shown in Figure 2), a top wall (20 shown in Figure 2), and a bottom wall (shown in Figure 2) but does not show wherein a central wall extends from the first side wall to the second side wall.
Claims 6 and 7 depend on claim 5.
Regarding claim 9, Wheatley US 5,431,445 A discloses the front rail
(rails 12 shown in Figure 1) of claim 1 but does not show wherein the tubular beam is formed by roll-forming the metal sheet, and a first edge and a second edge of the metal sheet are secured at a first joint location and a second joint location.
Claims 10 and 11 depend on claim 9.
Regarding claim 13, Wheatley US 5,431,445 A discloses structural beam (rails 12 shown in Figure 1) for a vehicle (vehicle frame 10 shown in Figure 1), the structural beam (rails 12 shown in Figure 1) configured to extend from a first end at a bumper assembly (front bumper beam 14 shown in Figure 1) to a second end at a mid-frame assembly (passenger compartment 16 shown in Figure 1), and includes at least a first crush initiator (first set of corner divots 24 shown in Figure 2) and a second crush initiator (second set of corner divots 24’ shown in Figure 2) along a portion of the length of the elongated body and which are configured to initiate a bending of the elongated body upon axial loading of the structural beam in column 4, lines 25-45 shown in Figures 5a-5d.
However, Wheatley US 5,431,445 A does not show the structural beam (rails 12 shown in Figure 1) comprising: an elongated body formed from a metal sheet material, the elongated body having a cross-sectional shape that extends a length of the elongated body; wherein the elongated body includes a plurality of hollow channels formed by a central wall of the metal sheet material and which defines the cross-sectional shape.
Heatherington US 6,318,775 B1 teaches an elongated
high-strength metal beam roll-formed from sheet steel.
Regarding claim 13, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the tubular beam of Wheatley US 5431445 A comprising a high-strength metal sheet, as taught by Heatherington US 6,318,775 B1, with a reasonable expectation of success in order to provide superior tensile strength, toughness, and wear resistance.
Regarding claim 13, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the elongate body of Wheatley US 5,431,445 A modified, having a cross-sectional shape that extend the length of the elongated body with a reasonable expectation of success is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed elongated body was significant
In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Regarding claim 13, wherein the elongated body includes a plurality of hollow channels formed by a central wall of the metal sheet material and which defines the cross-sectional shape is not taught nor is fairly suggested by the prior art of record.
Claims 14-18 depend on claim 13.
Regarding claim 19, Wheatley US 5,431,445 A discloses a front rail (rails 12 shown in Figure 1) configured to be supported by a vehicle frame (vehicle frame 10 shown in Figure 1), the front rail comprising a first crush initiator (first set of corner divots 24 shown in Figure 2) disposed in the first side wall of the tubular body (side wall 20 shown in Figure 2) at a first crush area (column 4, lines 25-45) and a second crush initiator (second set of corner divots 24’ shown in Figure 2) disposed in the corners (corners 22 shown in Figure 2) of the tubular body at a second crush area (column 4, lines 25-45), wherein the tubular body is configured to undergo axial loading during a frontal vehicle impact.
However, Wheatley US 5,431,445 A does not show a tubular body formed by a roll-formed high-strength metal and defining a cross-sectional shape along a length of the tubular body; a central wall extending from a first side wall to a second side wall of the tubular body defining at least a first longitudinal hollow channel and a second longitudinal hollow channel, the first crush initiator formed in the high-strength metal before roll-forming the tubular body; the second crush initiator formed in the high-strength metal after roll-forming the tubular body.
Heatherington US 6,318,775 B1 teaches an elongated
high-strength metal beam roll-formed from sheet steel.
Regarding claim 19, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the tubular beam of Wheatley US 5431445 A comprising a high-strength metal sheet, as taught by Heatherington US 6,318,775 B1, with a reasonable expectation of success in order to provide superior tensile strength, toughness, and wear resistance.
Regarding claim 19, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the elongate body of Wheatley US 5,431,445 A modified, having a cross-sectional shape that extend the length of the elongated body with a reasonable expectation of success is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed elongated body was significant
In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim").
Regarding claim 19, a central wall extending from a first side wall to a second side wall of the tubular body defining at least a first longitudinal hollow channel and a second longitudinal hollow channel is not taught nor is fairly suggested by the prior art of record.
Claim 20 depends on claim 19.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
US 6554176 B2 discloses an energy absorbing structure (20) compring on or more recesses (21c).
Communication
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Lori Lyjak whose telephone number is
571-272-6658. The Examiner can normally be reached from 8:30 a.m. to
4:30 p.m. EST Monday through Friday.
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/Lori Lyjak/Primary Examiner, Art Unit 3612B
