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 .
DETAILED ACTION
Examiner’s Comments
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element T should be construed as inherently also reciting “and relevant disclosure thereto”.
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 1-5 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 pre-AIA the applicant regards as the invention.
Claim 1, line 14 recites “a bottom wall” which lacks antecedent basis in the claims as “a bottom wall” is previously recited at line 3. This second instance of “a bottom wall” should perhaps refer back to the first instance.
Claim 4, line 2 recites “each of recesses” which is awkward and unclear as to what the applicant intends to recite. Perhaps the phrase “either of” should be recited instead such that the shield engagement portion is “either of” recesses (having opening) OR holes. Reciting “either of” and then two separate features makes more sense with regard to the claim language in this instance.
Claim 5, line 2 recites “each of recesses” which is awkward and unclear as to what the applicant is intending to recite with the phrase. Perhaps “each of recesses” should be removed entirely such that the claim only recites the shield engagement portion “is formed continuously in a longitudinal direction…” Clarification is requested and the claim will be examined on the merits as best understood.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 117 (cited by applicant on the IDS of 2/7/25).
For claim 1, JP 117 discloses a glass run (130; FIG.7 of the current application) attached to a door frame (100) of a door of a vehicle, the glass run comprising:
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a bottom wall (not numbered; part of 130);
a vehicle inner side wall (140) and a vehicle outer side wall (not numbered) that extend from the bottom wall;
a vehicle inner sealing lip (FIG.7) connected to the vehicle inner side wall; and
a vehicle outer sealing lip (FIG.7) connected to the vehicle outer side wall,
the glass run guiding lifting and lowering of a door glass,
wherein a vehicle inner cover lip (150) is formed at a distal end of the vehicle inner side wall toward a vehicle inner side and toward the bottom wall, and
the vehicle inner cover lip (150) is formed with a shield engagement portion (top and inner surface of 150) that is engaged with a light shield (110).
For claim 5, the shield engagement portion (as part of 150) is formed continuously in a longitudinal direction of a vehicle inner side surface of the vehicle inner cover lip.
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 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.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over JP 117 as applied above in view of Merla et al. (5575485) or Dranchak (5355628) and Lederle et al. (2005/0264032) or WO 2007/055434.
For claims 2-3, JP 117 provides an engagement member (120) of the light shield (110) used to engage the shield engagement portion of the lip (150), but fails to provide instead magnets for the light shield and lip connection as recited.
Specifically JP 117 fails to provide a magnet (ferromagnetic material) used for the engagement between the shield engagement portion and the light shield, with the shield engagement portion includes the magnet or a ferromagnetic material attracted to the magnet; and
wherein the shield engagement portion includes the ferromagnetic material, and
the ferromagnetic material is formed on a vehicle inner side surface of the vehicle inner cover lip or is formed by being embedded inside the vehicle inner cover lip.
Both Merla et al. (5575485) and Dranchak (5355628) teach this feature.
Merla et al. (below, left) teach providing a ferromagnetic material (insert 11) encased/embedded within a seal (gasket; FIG.1). The insert (bar 11) is a continuous flexible magnetic bar.
Likewise, Dranchak (below, right) teaches providing a magnet (20) within a pocket (24) of a seal (at 22) where the magnet is embedded therein.
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Additionally, the well known prior art of Lederle et al. (2005/0264032) includes a light shield (18) with magnet (20) or alternatively WO 434 teaches a light shield (56) with magnet (61) as seen in FIG. 6.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided, in place of the engagement member and lip connection of JP 117, a magnetic connection between the glass run and shield wherein Merla et al. or Dranchak teach embedding a magnet or ferromagnetic material within a seal lip and Lederle et al. or alternatively WO 434 teaches connecting the shield magnetically. Doing so amounts to an obvious alternative connection.
The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR, 550 US at 82 USPQ2d at 1385 (Supreme Court 2007) (KSR) supports this rationale of a simple substitution.
Courts have recognized that it would have been obvious to substitute one known element for another that performs the same function, where the results of the substitution would have been predictable. See, e.g., Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Circ. 2008) (concluding that the claims were obvious, noting that “[t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch").
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JP 117 as applied above in view of Dranchak (5355628).
For claim 4, JP 117 fails to disclose the shield engagement portion is either of recesses having openings or holes disposed in a longitudinal direction of a vehicle inner side surface of the vehicle inner cover lip.
Dranchak teaches a seal having a recess with an opening (54) disposed along a longitudinal direction of a vehicle seal as seen in FIG.4.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided, in place of the engagement member and lip connection of JP 117, a recess with an opening as taught by Dranchak as an obvious alternative connection.
The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR, 550 US at 82 USPQ2d at 1385 (Supreme Court 2007) (KSR) supports this rationale of a simple substitution.
Courts have recognized that it would have been obvious to substitute one known element for another that performs the same function, where the results of the substitution would have been predictable. See, e.g., Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Circ. 2008) (concluding that the claims were obvious, noting that “[t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch").
JP 117, as modified, now only lacks the recess with opening being provided at intervals in the longitudinal direction instead of continuously therealong.
Providing a shield connection at intervals is known in the art as seen with Hess et al.
Specifically, Hess et al. (3670798) teach a shield (FIG.15) with spaced connections (84) at intervals along the longitudinal direction.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and with a reasonable expectation of success to have provided the continuous recess with opening of JP 117, as modified, to be intermittent at intervals as taught by Hess et al. in order to allow for a secure connection and reduced manufacturing cost and complexity.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HILARY L GUTMAN whose telephone number is 571.272.6662. 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, VIVEK KOPPIKAR can be reached on 571.272.5109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the 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. Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HILARY L GUTMAN/Primary Examiner, Art Unit 3612B
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