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 § 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 (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 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.
Claims 1-4, 8-14, 16-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP0888952.
Regarding claim 1, EP0888952 discloses: (claim language is bolded)
A vehicle structure comprising a portion (the portion of the vehicle in the vicinity of element 19 in Fig. 8 extends in a longitudinal direction) extending in a longitudinal direction, wherein the portion comprises:
a first member (22; Fig. 9; “side body panel” in col. 4 lines 43-44) extending in the longitudinal direction (along the length of the vehicle), and
a second member (19; Fig. 8; “side roof rail” in col. 4, line 38) extending in the longitudinal direction (along the length of the vehicle),
wherein the first member (22; Fig. 9; “side body panel” in col. 4 lines 43-44) is configured to face an inside (in that the side body panel 22 is vertically oriented as shown in Fig. 9 and has an inside facing surface and an opposite outside facing surface with respect to the interior and exterior of the vehicle) of a vehicle (11; Fig. 8),
wherein the second member (19; Fig. 8; “side roof rail” in col. 4, line 38) is configured to face an outside of the vehicle (in that the side roof rail 19 is vertically oriented as shown in Fig. 9 and has an inside facing surface and an opposite outside facing surface with respect to the interior and exterior of the vehicle),
wherein the first (22; Fig. 9; “side body panel” in col. 4 lines 43-44) and second (19; Fig. 8; “side roof rail” in col. 4, line 38) members are attached to one another such that the inside facing surface of the first member and the outside facing surface of the second member form a closed space (“energy absorber (1; annotated Fig. 9 below) which is a metallic pipe provided with concaves and convexes integrally molded on the front and back surfaces and disposed in a space provided between a body outer panel (22; annotated Fig. 9 below) which forms the external face of an automobile and a body inner panel” (19; annotated Fig. 9 below)“ as disclosed in col. 1, line. 55 - col. 2, line 2),
wherein the portion comprises one or more hydroformed (see the paragraph below regarding this product by process limitations) first tubular reinforcement members (3; Fig. 4A; col. 3, lines 4-6 discloses the energy absorber (1; Figs. 9 and 4(A)) “is mainly used as a reinforcing material for an automotive body”; as well as a similar construction in Fig. 4B where the first tubular reinforcement member is numeral 4 as indicated in annotated Fig. 4B below) located in the closed space (Fig. 9 illustrates that the tubular reinforcement member 1 (disclosed as an energy absorber in col. 3, lines 4-5) is located within the closed space and the element 3 in Fig. 4(A) is an embodiment of an energy absorber as disclosed in col. 3, line 38; the same is true for element 4 in Figure 4B), the hydroformed first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B; embodiments of the energy absorber 1 in Figure 9) having a longitudinal extension extending in the longitudinal direction as can be seen in Figure 9,
wherein the hydroformed first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B; embodiments of the energy absorber 1 in Figure 9) is corrugated and comprises corrugations (see annotated Fig. 4A below; where “corrugated” is defined at merriam-webster.com as “a form or shape having alternating ridges and grooves”), and
wherein the corrugations of the hydroformed first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B; embodiments of the energy absorber 1 in Figure 9) comprise annular ridges (as pointed out in annotated Fig. 4A below) and annular grooves (as pointed out in annotated Fig. 4A below), where the term “annular” is defined at merriam-webster.com as “relating to or forming a ring”,
wherein the cross-section of the hydroformed first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B) forms an elliptical ring, where EP0888952 discloses: “Fig. 4A is a perspective view of the impact energy absorber in which a circular, (i.e. “ring” as is the definition of a circle at merriam-webster.com) pipe is formed into an elliptic shape afterward“ in col. 2, lines 30-34 and “The impact energy absorbers 3 and 4 shown in FIGS. 4A and 4B have a cross section in an elliptic form, see col. 3, lines 38-45.
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Furthermore, the recitation in claim 1 that the first tubular reinforcement members are “hydroformed” is considered to be a product by process limitation in that the term “hydroformed” is directed to the manner in which the first tubular reinforcement members are formed rather than a structural limitation of the elements.
According to section 2113 of the MPEP:
“[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).
In this instance the EP0888952 reference discloses a “first tubular reinforcement member” (3; Fig. 4A; an embodiment of the energy absorber 1 in Figure 9) which is the same as that recited in claim 1. Thus, “the claim (claim 1) 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).
Regarding claim 2, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein the first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B; embodiments of the energy absorber 1 in Figure 9) is formed through hydroforming. The phrase “formed through hydroforming” in claim 2 is also considered to be a product by process limitation, where the EP0888952 reference discloses a “first tubular reinforcement member” (3; Fig. 4A; 4; Fig. 4B; embodiments of the energy absorber 1 in Figure 9) which is the same as that recited in claims 1 and 2. Thus the “the claim (claim 2) 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).
Regarding claim 3, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein each of the annular ridges extends transversely to the longitudinal direction, and wherein each of the annular grooves extends transversely to the longitudinal direction, as illustrated in annotated Figures 4A and 4B above.
Regarding claim 4, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein the annular ridges and the annular grooves form the first hydroformed tubular reinforcement member, as illustrated in annotated Figures 4A and 4B above.
Regarding claim 8, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein the cross-section of each of the annular ridges forms an elliptic ring, and wherein the cross-section of each of the annular grooves forms an elliptic ring, as illustrated in annotated Figures 4A and 4B above and disclosed as “The impact energy absorbers 3 and 4 shown in FIGS. 4A and 4B have a cross section in an elliptic form” see col. 3, lines 38-45).
Regarding claim 9, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein the hydroformed first tubular reinforcement member (3; Fig. 4A and 4; Fig. 4B) has an inner surface and an outer surface, as is common to all tubular structures, and wherein at the outer surface each of the annular ridges (annotated Fig. 4B below) has a recess (as illustrated in annotated Fig. 4B below; EP0888952 discloses in col. 3, lines 41-46 that “The impact energy absorbers 3 and 4 shown in FIGS. 4A and 4B have a cross section in an elliptic form, and convexes 3b and 4B on the bottom face and the upper face form planes. The impact energy absorber 4 shown in FIG. 4A is formed in an elliptic form from the beginning, and the impact energy absorber shown in FIG. 4B is formed in a circular form at the initial stage, and then it is formed into an elliptic form by pressing vertically, and therefore, convexes 4B are crashed”; which form the recess as pointed out in annotated Fig. 4B below) at a first location labelled at the bottom left corner of annotated Fig. 4B below.
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Regarding claim 10, EP0888952 discloses:
The vehicle structure according to claim 9, as explained above, wherein the recesses (see annotated Fig. 4B above) at the first locations are in alignment with one another in the longitudinal direction. This alignment is shown by the dashed arrow pointed out in annotated Fig. 4B above at the recesses of the first location at the left end of the first tubular reinforcement (4; Fig. 4B) in annotated Fig. 4B above.
Regarding claim 11, EP0888952 discloses:
The vehicle structure according to claim 9, as explained above, wherein at the outer surface each of the annular ridges has a recess at a second location, where such second location is pointed out at the top right corner of annotated Fig. 4B above.
Regarding claim 12, EP0888952 discloses:
The vehicle structure according to claim 11, as explained above, wherein the second location is opposite to the first location in that the second location, as pointed out at the top right corner of annotated Fig. 4B above, is at the opposite end of the first tubular reinforcement (4; Fig. 4B) with respect to the first location, as pointed out at the bottom left corner of annotated Fig. 4B above.
Regarding claim 13, EP0888952 discloses:
The vehicle structure according to claim 11, as explained above, wherein the recesses at the second locations are in alignment with one another in the longitudinal direction. This alignment is shown by the dashed arrow pointed out in annotated Fig. 4B above at the recesses of the second location at the right end of the first tubular reinforcement (4; Fig. 4B) in annotated Fig. 4B above.
Regarding claim 14, EP0888952 discloses:
The vehicle structure according to claim 1, as explained above, wherein the annular ridges (annotated Fig. 4A above and annotated Fig. 4B above) and the annular grooves (annotated Fig. 4A above and annotated Fig. 4B above) form a smooth wave (“a wave-form (or in a corrugated form)”; directed to Figures 2B and 2C as disclosed in col. 3, lines 10-11 which are the same formation as those of the oval embodiments of the corrugations shown in Figures 4A and 4B) shape extending along the longitudinal extension of the first hydroformed tubular reinforcement member in the longitudinal direction, as can be seen in annotated Figures 4A and 4B above).
Regarding claim 16, EP0888952 discloses:
A vehicle structure according to claim 1, as explained above, wherein the hydroformed first tubular reinforcement member (3; Fig. 4A and 4; Fig. 4B) comprises or consists of a metal or a metal alloy, as disclosed in the abstract line 5 on the front page of the reference in section (57).
Regarding claim 17, EP0888952 discloses:
A vehicle structure according to claim 1, as explained above, wherein each one of the first (22; Fig. 9) and second members (19; Fig. 9) is formed from a plate, where the phrase “formed from a plate” is considered to be a product by process limitation in that the language is directed to the manner in which the first and second members are formed rather than a structural limitation of the members.
According to section 2113 of the MPEP:
“[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).
In this instance the EP0888952 reference discloses of the first (22; Fig. 9) and second members (19; Fig. 9) which are the same as that recited in claim 1, namely that the first and second members extend in the longitudinal direction and the first member is configured to face an inside of the vehicle while the second member is configured to face an outside of the vehicle. Thus, “the claim (claim 1) 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).
Regarding claim 20, EP0888952 discloses:
A vehicle structure according to claim 1, as explained above, wherein the vehicle structure is a vehicle side structure, and wherein the portion is a side portion. EP 0888952 discloses a vehicle structure with first (22; Fig. 9) and second (19; Fig. 9) side members as well as a first tubular reinforcement member (3; Fig. 4A; col. 3, lines 4-6 discloses that the energy absorber (1; Figs. 9 and 4(A)) “is mainly used as a reinforcing material for an automotive body”; as well as a similar construction of a tubular reinforcement member (4; Fig. 4B), where the first (22; Fig. 9) and second (19; Fig. 9) side members as well as a first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B) are part of a side portion of the vehicle, or vehicle side structure comprising a side portion, as shown in Fig. 9.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over EP0888952 in view of Benkoczy US 5,698,055.
Regarding claim 15, EP0888952 discloses:
The vehicle structure according to claim 1, except wherein the hydroformed first tubular reinforcement member is seamless.
Notwithstanding, Benkoczy teaches the formation of a “reinforced seamless composite tubular” structure; see col. 4, lines 19-20.
A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The Benkoczy reference is considered to be relevant art in that the Benkoczy reference is in the same field of endeavor, namely that which pertains to tubular reinforcement members, as the EP0888952 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 first tubular reinforcement member of EP0888952 to be seamless as taught in Benkozy with a reasonable expectation in order to produce a stronger and more fortified reinforcement member so that rigidity is improved. Motivation provided in col. 2, lines 35-37 of Benkozy.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over EP0888952 in view of Schnug et al. US 9,487,239.
Regarding claim 18, EP0888952 discloses:
A vehicle structure according to claim 1, as explained above, except wherein each one of the first and second members (which form part of roof rail construction as disclosed in col. 4, lines 32 and 41-44) comprises or consists of a metal or a metal alloy.
Notwithstanding, Schnug et al. disclose a vehicle construction with a roof rail portion (124; Fig. 2) which is made from metal as disclosed in col. 3, lines 62-63.
A person of ordinary skill in the art is someone presumed to have known the relevant art at the relevant time. The Schnug et al. reference is considered to be relevant art in that the Schnug et al. reference is in the same field of endeavor, namely that which pertains to vehicle roof rail constructions, as the EP0888952 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 each one of the first and second members to comprises metal in the form of a metal sheet as taught by Schnug et al. with a reasonable expectation of success because such metal sheet can be constructed with a particular thickness and tensile strength that satisfied design requirements of strength, stiffness, weight and cost. Motivation provided by Schnug et al. in col. 3, lines 63-67.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over EP0888952 in view of Honma et al. US 6,789,840.
Regarding claim 19, EP0888952 discloses:
A vehicle structure according to claim 1, as explained above, where the first (22; Fig. 9) and second (19; Fig. 9) members form part of roof rail construction as disclosed in col. 4, lines 32 and 41-44,
However, EP0888952 does not disclose wherein each one of the first and second members is one of: a hat profile and a U-profile.
Notwithstanding, Honma et al. discloses a vehicle side roof rail construction having a first member or side rail outer (12; annotated Fig. 2 above) and a second member or side rail inner (14; Fig. 2 above), where both the first and second members have a hat profile or a U-profile (both terms describe the structure shown in annotated Fig. 2 above) and where the first and second members form a closed space (as pointed out in annotated Fig. 2 below).
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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 Honma et al. reference is considered to be relevant art in that the Honma et al. reference is in the same field of endeavor, namely that which pertains to vehicle side rail/roof rail constructions, as the EP0888952 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 first and second members of EP0888952 to have a hat profile or a U-profile as taught by Honma et al. with a reasonable expectation of success to provide an upper connecting structure of a center pillar for connecting the center pillar with a side rail so that the center pillar has a large rigidity and is capable of efficiently dispersing a load exerted thereon from a lateral side of a vehicle to a side rail. Motivation provided by Honma et al. in col. 2, lines 8-15.
Additional Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takahara et al. US 6,199,941 discloses an impact energy absorbing structure for a vehicle where the cross sectional shape of the energy absorbing pipe (40; Fig. 4) may be elliptic. See col. 18, lines 5-6.
Response to Arguments
Applicant's arguments filed 7/14/26 have been fully considered but they are not persuasive. Applicant’s argument is that, while EP0888952 discloses that the shapes in Figures 4A and 4B are elliptic, the shapes drawn Figures 4A and 4B are not true ellipses. Examiner agrees that EP0888952 discloses that the first tubular reinforcement member (3; Fig. 4A; 4; Fig. 4B) forms an elliptical ring, where EP0888952 discloses: “Fig. 4A is a perspective view of the impact energy absorber in which a circular, (i.e. “ring” as is the definition of a circle at merriam-webster.com) pipe is formed into an elliptic shape afterward“ in col. 2, lines 30-34 and “The impact energy absorbers 3 and 4 shown in FIGS. 4A and 4B have a cross section in an elliptic form, see col. 3, lines 38-45. The argument is not persuasive because the manner in which the ring shaped tubular reinforcement member is drawn in Figures 4A and 4B of EP0888952 does not negate the disclosure of forming the ring shaped reinforcement member in an elliptic shape. See “cross section is ellipse” in col. 2, line 31; “formed into an elliptic shape” in col. 2, lines 33-34; and “an elliptic form” in col. 3, lines 38-46.
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 Joseph D. Pape whose telephone number is (571)272-6664. The examiner can normally be reached Monday to Friday 7 AM-3:30 PM.
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, 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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/Joseph D. Pape/ Primary Examiner, Art Unit 3612
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