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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 21-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mendibourne (GB 2 421 478).
Regarding Claim 1, Mendibourne discloses a carrier having a first portion having a first plurality of projections (see Fig. 5; ribs are projections that face inboard), a second portion have a second plurality of projections which oppose in an opposite direction as the first plurality of projections (see Fig. 6; ribs are the second projections that face outboard), an activatable material 20 affixed to the carrier, wherein the activatable material is configured to secure the carrier in a cavity of the vehicle; and wherein in event of an impact the first plurality of projections and the second plurality of projections are configured to deform in a same direction of an impact load (entirety of the carrier deflects in a direction away from the load being applied).
Regarding Claims 21-23, the activatable material 20 is affixed around both portions.
Regarding Claim 24, the activatable material 20 is located on adjacent surfaces of the carrier (Figs. 6 and 7).
Regarding Claim 25, the carrier includes openings between the projections (see Fig. 6).
Regarding Claims 26 and 27, openings may pass through the carrier (see round opening, Figs. 10 and 11) between projections.
Regarding Claims 28 and 29, the projections of the first and second portions form cell-like structures (see Figs. 5 and 6).
Regarding Claim 30, the first and second portions are divided by a horizontal base wall between the two (Fig. 6).
Regarding Claims 31 and 32, the carrier is a molded one-piece polymeric structure (page 16).
Regarding Claims 33 and 34, the activatable material is a heat activated expandable foam (page 14, lines 19-20).
Regarding Claim 35, the projections of both sections are ribs (Figs. 6 and 7).
Regarding Claims 36 and 37, the deformation of the carrier may be plastic deformation when crushed, which may lead to bucking.
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, 21-29 and 31-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-13 of U.S. Patent No. 12,286,158. Although the claims at issue are not identical, they are not patentably distinct from each other because;
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 1 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 21 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 22 of the present application.
Claim 12 of the ‘158 patent fully anticipated each limitation of claim 23 of the present application.
Claim 13 of the ‘158 patent fully anticipated each limitation of claim 24 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 25 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 26 of the present application.
Claim 11 of the ‘158 patent fully anticipated each limitation of claim 27 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 28 of the present application.
Claim 1 of the ‘158 patent fully anticipated each limitation of claim 29 of the present application.
Claim 2 of the ‘158 patent fully anticipated each limitation of claim 31 of the present application.
Claim 3 of the ‘158 patent fully anticipated each limitation of claim 32 of the present application.
Claim 4 of the ‘158 patent fully anticipated each limitation of claim 33 of the present application.
Claim 5 of the ‘158 patent fully anticipated each limitation of claim 34 of the present application.
Claim 6 of the ‘158 patent fully anticipated each limitation of claim 35 of the present application.
Claim 7 of the ‘158 patent fully anticipated each limitation of claim 36 of the present application.
Claim 8 of the ‘158 patent fully anticipated each limitation of claim 37 of the present application.
Allowable Subject Matter
Claims 38 and 39 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: applicant having a first portion of the carrier for placement inward of a first cavity proximate to an outer panel, and the second portion for placement into a second cavity positioned inward in the vehicle, is novel.
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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