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 § 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Noda (US 2023/0256917) in view of Becksteiner et al. (US 2015/0307032) (Becksteiner).
In reference to claim 1, Noda teaches a light-emitting emblem installed on a vehicle ([0002]) (corresponding to a vehicle emblem for a vehicle). The emblem comprises a housing (i.e., base portion) and a cover ([0007]-[0012]) (corresponding to a base portion; a cover portion that covers the base portion from an outside of the vehicle). FIG. 2B, provided below, shows an emblem 12 placed on a surface of the cover main body 11 ([0031]). The emblem 12 is formed of resin, such as ABS ([0034]) (corresponding to a decorative portion that includes a base made of a plastic and decorates the cover portion).
The emblem 12 is fixed to the cover main body 11 by a double-sided tape 122 ([0034]; FIG. 2B) (corresponding to an adhesive layer for bonding the decorative portion to the cover portion, wherein the decorative portion includes: a decorative main body bonded to the cover portion via the adhesive layer; the adhesive layer is sandwiched between the decorative main body and the cover portion in the facing direction).
FIG. 1A, provided below, shows the emblem 12 includes fixing portions 121 to fix the emblem to the object to which the emblem 1 is attached ([0034]). The fixing portions 121 extend outward from the decorative main body beyond the cover portion 11 (corresponding to an extension extending outward from the decorative main body beyond the cover portion; the extension includes a through-hole extending through the extension in the facing direction).
FIGS. 1A and 2A shows the housing 14 includes fixing portions 141 to fix the housing to an object to which the emblem 1 is attached ([0030]) (corresponding to one of the base portion and the cover portion includes an attachment portion to which the extension is attached, the attachment portion includes a facing portion facing the extension in the facing direction).
Noda does not explicitly teach a protruding portion that protrudes in the facing direction from the facing portion and is inserted into the through-hole, as presently claimed.
Becksteiner teaches an emblem carrier ([0001]). The emblem carrier includes hooks arranged on a presentation body and openings on a base plate ([0009]) (corresponding to an attachment portion; the attachment portion includes: a facing portion facing the extension in the facing direction; and a protruding portion that protrudes in the facing direction and is inserted into the through-hole). The openings include a limb portion ([0011]). By virtue of the resilient limb portion which is preferably tongue-shaped and which is preferably arranged on the base plate and which partially covers over the opening radially from one side of the periphery of the opening, the free region of the opening can be increased upon introduction of the head portion of the hook, by virtue of a deflection movement of the limb portion into the depthwise extent of the opening, that is to say in the direction of a rear side of the base plate, so that the head portion of the hook is prevented from being sheared off even when using a very hard and brittle material for the base plate. On the other hand, after the head portion of the hook has been introduced, the free region of the opening is sufficiently small, by virtue of the limb portion being at least partially moved back into its starting position again, that the hook is reliably prevented from moving out of the opening ([0008]) (corresponding to the protruding portion includes a retaining portion that is located on a distal side of the through0hole in the facing direction, the retaining portion coming in contact with a peripheral edge of the through-hole to retain the protruding portion in the through-hole). FIG. 3, provided below, shows a gap is formed between presentation body having the hook protruding therefore and the base plate (corresponding to a gap is formed between the extension and the facing portion ).
In light of the motivation of Becksteiner, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the fixing portion of the housing of Noda that aligns with the fixing portion of the emblem include a hook and the through hole of the fixing portion of the emblem include the resilient limb portion, wherein a gap is formed between the fixing portion of the housing having the hook and the fixing portion of the emblem, in order to fix the emblem and the housing portion together and ensure the hook is not sheared off so it is no longer possible to achieve secure clipping engagement between the two portions (Becksteiner, [0002]).
Given that the emblem of Noda in view of Becksteiner is substantially identical to the present claimed vehicle emblem in composition and structure, it is clear the gap of Noda in view of Becksteiner would intrinsically allow movement of the extension for pressing the emblem against the cover portion via the adhesive to bond the emblem to the cover portion and the emblem of Noda in view of Becksteiner would intrinsically be pushed away from the cover portion by elasticity of the adhesive, so that the hook is in contact with the peripheral edge of the retaining limb to retain the hook in the through-hole.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d
PNG
media_image1.png
431
760
media_image1.png
Greyscale
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
PNG
media_image2.png
333
445
media_image2.png
Greyscale
PNG
media_image3.png
469
942
media_image3.png
Greyscale
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (JP 2010-264835) (Yamaguchi) in view of The Benefits of Adhesive Bonding (Taylor) and Yokota et al. (US 2006/0202449) (Yokota).
The examiner has provided a machine translation of JP 2010-264835 with the Office Action mailed 04/23/2026. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claim 1, Yamaguchi teaches a mounting structure for a decorative member that enhances the esthetic appeal of the interior of a vehicle (Abstract; [0002]) (corresponding to a vehicle emblem). The decorative member includes a base material 30 and a main body 21 covering and attached to the base material 30 ([0022]; Fig. 2) (corresponding to a base portion; a cover portion that cover the base portion from an outside of the vehicle). The main body is fitted into a frame portion 31 ([0021]) (corresponding to a decorative portion).
Fig. 2, provided below, shows the frame portion 31 extends over the main body 21 and is an extension of the interior base material 3. The interior base material is made of synthetic resin materials such as polypropylene ([0017]) (corresponding to a decorative portion that includes a base made of a plastic and decorates the cover portion).
Fig. 5, provided below, shows the frame portion 31 is an extension of the base material 3, which extends outwards from the frame portion and beyond the main body 21 (corresponding to the decorative portion includes: a decorative main body; an extension extending outward from the decorative main body beyond the cover portion). The base material 3 includes a through hole extending through the base material 3 in a facing direction (Fig. 5) (corresponding to a direction in which the base portion and the cover portion face each other is referred to as a facing direction, the extension includes a through-hole extending through the extension in the facing digestion). Fig. 5 further shows the base material 30 has a mounting projection 35 ([0024]) (corresponding to one of the base portion and the cover portion includes an attachment portion to which the extension is attached, the attachment portion includes: a facing portion facing the extension in the facing direction; and a protruding portion that protrudes in the facing direction from the facing portion and is inserted in the through-hole). Fig. 5 shows the mounting projection 35 includes a gap between the mounting projection and the through hole (correspond to a gap is formed between the extension and the facing portion, and the gap allows the extension to move along the protruding portion between a proximal end in the facing direction of the protruding portion and the retaining portion).
Yamaguchi does not explicitly teach (1) an adhesive layer bonding the main body 21 to the frame 31 and (2) the mounting projection 35 includes a retaining portion, as presently claimed.
With respect to (1), Taylor teaches adhesive bonding can provide less corrosion and material fatigue, no heat distortion or warping, no weakening, greater flexibility for use with dissimilar materials and improved cosmetic appearance (p.1).
In light of the motivation of Taylor, it would have been obvious to one of ordinary sill in the art before the effective filing date of the presently claimed invention to include an adhesive bond between the main body and the frame of Yamaguchi, in order to provide less corrosion and material fatigue between the main body and frame and improve the cosmetic appearance of the member, and thereby arriving at the presently claimed invention.
With respect to (2), Yokota teaches an improved structure for attaching an emblem to a cover ([0002]). The structure includes an extension having an extended portion that is extended through a hole of the cover such that the extension is not separated from the hole. This improves the work efficiency for attaching the emblem on the cover ([0023]). Yokota further teaches the extension includes projections that is stopped by a rear edge of the wall of the hole. This stops the extension from being separated from the hole ([0099]; [0105]-[0106]) (corresponding to the protruding portion includes a retaining portion that is located on a distal side of the through-hole in the facing direction, the retaining portion coming into contact with a peripheral edge of the through-hole to retain the protruding portion in the through-hole).
In light of the motivation of Yokota, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include projections on the mounting projection of Yamaguchi in view of Taylor, in order to improve the work efficiency for attaching the base material 30 to the frame 31, and thereby arriving at the presently claimed invention.
Given that the mounting structure of Yamaguchi in view of Taylor and Yokota is substantially identical to the presently claimed vehicle emblem in composition and structure, it is clear the gap of Yamaguchi in view of Taylor and Yokota would intrinsically allow movement of the extension of the base material for pressing the frame against the main body via the adhesive to bond the base material and the main body and the base material is intrinsically pushed away from the base material by elasticity of the adhesive so that the projections on the mounting projection is in contact with the peripheral edge of the through-hole to retain the mounting projection in the through-hole.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
PNG
media_image4.png
527
1364
media_image4.png
Greyscale
PNG
media_image5.png
331
1027
media_image5.png
Greyscale
Response to Arguments
In response to amended claim 1, the previous 35 USC 112(b) rejections of record are withdrawn.
In response to amended claim 1, which now requires “a gap is formed between the extension and facing portion, the gap allowing movement of the extension for pressing the decorative main body against the cover portion via the adhesive layer to bond the decorative main body to the cover portion, and the decorative portion is pushed away from the cover portion by elasticity of the adhesive layer, so that the retaining portion is in contact with the peripheral edge of the through-hole to retain the portion in the through-hole”, it is noted that Noda and Migaki (US 2015/0375692), alone or in combination, no longer meet the presently claimed limitations. Therefore, the previous 35 USC 103 rejections over Noda in view of Migaki are withdrawn from record. However, the amendments necessitate a new set of rejection as discussed above.
Applicant primarily argues:
“The Examiner relies on the gap shown around the mounting projection 35 in Fig. 5 of Yamaguchi as corresponding to the claimed gap. However, Yamaguchi does not teach that the gap is formed between an extension and a facing portion so as to allow movement of the extension when a decorative main body is pressed against a cover portion via an adhesive layer to bond the decorative main body to the cover portion. Yamaguchi also does not teach that the decorative portion is pushed away from the cover portion by the elasticity of the adhesive layer so that a retaining portion comes into contact with a peripheral edge of a through-hole to retain a protruding portion in the through-hole.
The Examiner acknowledges that Yamaguchi fails to teach, ‘(1) an adhesive layer bonding the main body 21 to the frame 31 and (2) the mounting projection 35 includes a retaining portion, as presently claimed.’ (See page 8 of the Office Action.) The Examiner relies on Taylor and Yokota to cure the deficiencies of Yamaguchi.
Taylor merely describes the general benefits of adhesive bonding and does not teach using the elasticity of an adhesive layer to bring a retaining portion into contact with a peripheral edge of a through-hole.
Yokota discloses mechanical retention of an extension ST having an extended portion 17 by an edge of hole 3 but does not teach using the elasticity of an adhesive layer to bring the extended portion 17 into contact with the peripheral edge of the hole 3. Instead, projected portions 18 abut against a front side of a cover 1, while the extended portions 17 abut against a rear side of the cover 1 to prevent an emblem 4 from moving upward or downward. (See FIGS. 25(a) and 25(b) and paragraph 0106 of Yokota.)
Thus, even when Yamaguchi, Taylor, and Yokota are combined, the combination would not teach or suggest all the features of amended independent claim 1. Therefore, amended independent claim 1 is not obvious over the combination of Yamaguchi, Taylor, and Yokota.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
While Yamaguchi in view of Taylor and Yokota does not explicitly teach the functional language of claim 1 (i.e., the gap allowing movement of the extension for pressing the decorative main body against the cover portion via the adhesive layer to bond the decorative main body to the cover portion and the elasticity of the adhesive layer pushes the decorative portion away from the cover portion so that the retaining portion is in contact with the peripheral edge of the through-hole to retain the protruding portion in the through-hole). As discussed in the rejection above, the mounting structure of Yamaguchi in view of Taylor and Yokota is substantially identical to the presently claimed vehicle emblem in composition and structure. Therefore, absent evidence to the contrary it is the examiner’s position the gap of Yamaguchi in view of Taylor and Yokota would intrinsically allow movement of the extension of the base material for pressing the frame against the main body via the adhesive to bond the base material and the main body and the base material is intrinsically pushed away from the base material by elasticity of the adhesive so that the projections on the mounting projection is in contact with the peripheral edge of the through-hole to retain the mounting projection in the through-hole.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Therefore, Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARY I OMORI/Primary Examiner, Art Unit 1784
Prosecution Insights