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 .
Drawings
The drawings are objected to because: Figures 7-9 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 and 3-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The term “significantly greater” in claim 1 is a relative term which renders the claim indefinite. The term “significantly greater” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is unclear as to how much greater the length and width would need to be in comparison to the thickness to be considered “significantly greater” as required by the claims, e.g., 10 times greater, 20 times greater, 50 times greater, 100 times greater, etc.
The dependent claims (other than dependent claim 2) do not remedy the above and hence are indefinite for the same reasons.
Claim 9 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 recites, “adapted for use in a light for a motor vehicle” on lines 1-2, however, it is unclear from the claim and the specification as to how the component “is adapted for use in a light for a motor vehicle” or as to what is meant to be encompassed by the “is adapted for use” limitation. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 14 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 14, the phrase "in particularly" on line 2 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Note: Dependent claim 19, which depends upon claim 14, remedies the above and hence is not rejected under 35 U.S.C. 112(b).
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, it is noted that in general, when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Lastly, it is noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even 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 art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
Considering the above, the Examiner notes that the “for use in a motor vehicle” in the preamble of claim 1 appears to be merely directed to the intended end use of the at least partially transparent optical component, and thus the above preamble recitation has not been provided any patentable weight; while the “produced in an injection molded foam process” of claim 1 has been considered a process limitation in the product claims, and thus only the structure implied by said process has been considered with respect to the product claims. Lastly, it is noted that any component having “optical” properties, e.g., optical transmittance, absorbance, reflectance, etc., of any degree is broadly considered an “optical component” given the ordinary and customary meaning of the term.
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.
(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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ludwig (USPN 10,532,540). Ludwig discloses a vehicle roof glass element for use in panoramic roofs or in vehicle tilting and/or sliding roofs (Abstract, Fig. 1, Col. 4, lines 57-60), and a method of forming the vehicle roof glass element by injection molding or foaming, wherein the vehicle roof glass element (10) comprising an exterior glass pane (12) and a transparent insulating layer (18) foamed on the inside onto the glass pane and at least covering the entire surface of a see-through area of the glass pane (thus the roof glass element and/or the insulating layer being at least partially transparent), with a length and width (as defined in instant claim 1) of the vehicle roof glass element (10) and/or the transparent insulating layer (18) being “significantly greater” than the thickness as shown in Figs. 1-2 (Entire document, particularly Abstract; Col. 2, lines 7-15; Col. 4, line 57-Col. 5, line 31). Ludwig discloses that the transparent insulating layer (18) preferably has a constant thickness and particularly in the range of 0.5 to 1.5 mm (Col. 5, line 54-56), falling within the claimed thickness range of between 0.4 mm and 4.0 mm. Hence, the transparent insulating layer (18) and/or vehicle roof glass element (10) of Ludwig anticipates instant claim 1.
Claims 1-4, 9-14, and 17-18 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Kawamura (WO2022/220148A1, also printed as US2024/0190104A1, please refer to the US document for the below cited sections). Kawamura discloses an injection foam molded body (Abstract), such as in the form of a plate as in the examples (Examples), composed of a propylene resin composition (Abstract) and usually having a thickness of the molded body in the range of 2.5 to 10.0 mm (Paragraph 0069, overlapping the claimed thickness range of between 0.4 mm and 4.0 mm as recited in instant claim 1), produced by an injection molding foam process (as in instant claims 1 and 10); with working examples formed in a mold having a cavity size of 400 mm in length, 200 mm in width, and 1.8 mm in filling resin thickness such that the length and width (as defined in claim 1) “are significantly greater than the thickness” as in instant claim 1 and fall within the length/width ranges recited in instant claim 2 even after foaming, with at least one example (Examples, Paragraph 0135). Kawamura discloses that the temperature as well as the expansion and compression conditions (as in instant claim 13) for producing the injection foam molded body can be adjusted to control the layer structure and cell structure of the injection foam molded body wherein according to one embodiment, the injection foam molded body comprises five layers of, from a surface side, a solid skin layer (A1)/a foam layer (B1)/a foam layer (C)/a foam layer (B2)/a solid skin layer (A2) (back surface), in a cross-section in a plate thickness direction of the injection molded body as shown in Figs. 1-2; and wherein the (outer) solid skin layers (A1) and (A2) are layers that do not contain a foam structure (as in instant claim 3); the foam layers (B1) and (B2) have a foam cell structure comprising closed cells with an average size of cells in a planar direction of 50 µm or larger and 200 µm or smaller (overlapping the range recited in instant claim 5); while the foam layer (C) comprises at least partially interconnected cells as shown in Fig. 1 (Entire document, particularly Paragraphs 0014-0024 and 0047-0063; with foam layers (B1), (C1), and/or (B2) reading upon the claimed “core layer between the two outer layers along the third axis (Z), which contains a foam structure with numerous foam cells” as recited in instant claim 4). Kawamura specifically discloses working examples, Examples 4 and 5, have a thickness after foaming of 4.5 mm, a thickness after compression of 2.5 mm, and a plate thickness of injection foam molded by of 4.1 mm, each with solid skin layers of 478 µm for Example 4 and 490 µm for Example 5 (Examples, Table 1, thus a thickness of the total compressed five-layered injection foam molded component or of the three-layered foamed portion of the total plate “between 0.4 mm and 4.0 mm” as in instant claim 1, as well as data points at 4.1 mm for the total injection foam molded plate that as noted above may range from 2.5 to 10.0 mm). Kawamura discloses that the propylene resin composition for forming the injection foam molded body comprises a propylene polymer (E) as a main component, such as a random propylene copolymer or preferably a propylene-ethylene block copolymer (E1), and may contain an ethylene-α-olefin copolymer (F) in addition to the propylene polymer (E), with a content of the block copolymer (E1) being in the range of 60 to 90 parts by mass and the content of the ethylene-α-olefin copolymer (F) being in the range of 10 to 40 parts by mass, and optional fillers (G) in a content of 30 parts by mass or less with respect to 100 parts by mass of the total of (E) and (F) as discussed in Paragraphs 0072-0099. Kawamura discloses that the injection foam molded body is produced by injection filling a mold with a molten propylene resin composition containing a foaming agent, wherein the mold cavity is set at a temperature range of [crystallization temperature (Tc)-50°C] to [(Tc)-90°C] of the propylene resin composition (i.e., well below its Tc such that the polymer molecules “at least partially” remain in a disordered, amorphous state), expanding a cavity thickness of the mold to allow the propylene resin composition to be foamed, cooling (thus the temperature during the injection molded foam process “fluctuates” as in instant claim 14), and then compressing a molded body while a foamed layer is solidified (Paragraph 0102; Examples); and although Kawamura does not specifically recite that the resulting injection foam molded body is an “at least partially transparent optical component” as instantly claimed, given the polymers and injection molding temperature(s) as disclosed by Kawamura, particularly as utilized in the working examples (e.g., an injection temperature of 205°C and a mold surface temperature of 50°C), and that the claimed invention does not require any particular minimum transmissivity percentage and/or any particular wavelength for said “at least partially transparent” limitation nor does the preamble language of “optical” component provide add any additional structural and/or material limitations to the claimed injection molded foam component, the Examiner takes the position that Kawamura discloses the claimed invention with sufficient specificity to anticipate instant claims 1-4, 10, and 13-14.
With respect to instant claim 9, Kawamura discloses that the molded bodies are advantageous for automobile interior parts, and given that the claimed “is adapted for use in a light for a motor vehicle” constitutes intended end use of the component and does not provide any additional structural or material limitations to the claimed component, particularly given the lack of clarity thereof as discussed above, the Examiner takes the position that Kawamura anticipates instant claim 9.
With respect to instant claims 11-12 and 17-18, Kawamura discloses that a foaming agent is added to the propylene resin composition that is to be subjected to the injection foam molding process (Paragraph 0102), and given that Kawamura specifically discloses examples wherein an inorganic foaming agent in a CO2 foaming agent master batch, namely EE515 manufactured by Eiwa Chemical Ind. Co., Ltd. (a chemical foaming agent with a master batch containing a gas as in instant claim 12) as well as a N2 foaming agent master batch (e.g., providing physical foaming with a foaming agent as in instant claim 11, and particularly a foaming gas as in instant claims 17-18) are both added to the composition, thereby reading upon both physical and chemical foaming as in instant claims 11-12 and 17-18 (Examples). The Examiner takes the position that Kawamura discloses the claimed invention with sufficient specificity to anticipate instant claims 11-12 and 17-18.
Claims 1-6, 8-9, and 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US2008/0274346A1). Miller discloses a cellular (foamed) thermoplastic article and a foaming method for decreasing the density of a thermoplastic material by forming a cellular structure without substantially reducing the light transmissivity of the thermoplastic material (Abstract; Fig. 24; Paragraphs 0004-0005), wherein in one embodiment, the cellular thermoplastic material has nano-sized cells and a light transmissivity of at least 20% (Claim 4); while in another embodiment, the cellular thermoplastic material has micro-sized cells with an average cell size of greater than 1 µm to 100 µm (Paragraph 0039; as in instant claim 5), with both the nanocellular and microcellular foams being at “least partially transparent” as evidenced by Fig. 24, and the cell size dramatically affecting the amount of light scattering through the material such that optical transparency of foams can be adjusted by controlling the size of the cells wherein when the cells are sufficiently small, the thermoplastic foam may be essentially 100% transparent (Entire document, particularly as noted above and Paragraphs 0192-0195). Miller discloses that the foam thermoplastic material may be provided in a flat shape or in the form of thick cellular sheets wherein the sheets (i.e., comprising a length and width as defined in claim 1, wherein the length and width “are significantly greater than the thickness” as instantly claimed) can be have a thickness of greater than 3 mm (Paragraphs 0028, 0120, 0131, and 0138), and given that Miller discloses working examples wherein all test samples had a thickness of 1.5 mm falling within the claimed range of between 0.4 mm and 4.0 mm, with several samples having a length and width within the claimed between 1 cm and 100 cm ranges of instant claim 2, Miller anticipates instant claims 1-2.
With respect to instant claims 3-6 and 16, Miller discloses that desorption of gas from the surface during the process of making the cellular material provides integral solid skins wherein the thickness of the solid skin at the surface can be increased by allowing for greater desorption times (Paragraph 0115), and that an advantage of using a constrained foaming process as described in Paragraph 0120, is the ease in creating an integral skin of desired thickness by using desorption time as a process variable (Paragraph 0120). Miller also discloses that another method of forming a multi-layered panel is by adhering facesheets 1012 and 1014 to the upper and lower surfaces as shown in Fig. 10, and given that in each case, the resulting sheet has a foamed core comprising nano-sized foam cells (as in instant claim 16) or micro-sized foam cells (as in instant claims 5-6) as noted above positioned between two outer layers that do not contain a foam structure as in instant claims 3-4 (Entire document, particularly Figs. 10-15, Paragraphs 0030-0031, 0134-0138), the Examiner takes the position that Miller discloses the claimed invention with sufficient specificity to anticipate instant claims 3-6 and 16.
With respect to instant claims 8 and 9, given that Miller clearly discloses that the cellular thermoplastic article can be designed such that the article or sheets may be essentially 100% transparent as noted above and have potential applications in the automobile applications (Paragraph 0138), and that the instantly claimed “lens” and “for use in a light for a motor vehicle” do not provide any additional material or structural limitations to differentiate the claimed “optical component” of instant claims 8 and 9, respectively, from the essentially transparent article disclosed by Miller, the Examiner takes the position that Miller anticipates instant claims 8 and 9.
Claim Rejections - 35 USC § 103
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.
Alternatively, claims 1-4, 9-14, and 17-18 as well as 5-8, 15-16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura (WO2022/220148A1, also printed as US2024/0190104A1, please again refer to the US document for the below cited sections) as applied above to claims 1-4, 9-14, and 17-18, and in further view of Miller (US2008/0274346A1). The teachings of Kawamura are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-4, 9-14, and 17-18 for the reasons discussed in detail above, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-4, 9-14, and 17-18, would have been obvious over the teachings of Kawamura given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the injection foam molded body taught by Kawamura to be “at least partially transparent” as some arbitrary wavelength. Additionally, given the teachings of Miller as discussed in detail above (and incorporated herein by reference) wherein the foam structure, particularly the size of the foam cells and the void fraction or relative density (which is dependent upon a density of the foam cells) of a thermoplastic material, such as polyolefin, polyethylene, or polypropylene (Paragraphs 0068, 0071, and 0152; e.g., as in Kawamura) can be tailored or controlled by adjusting the foaming conditions, e.g., temperature, pressure, etc., in order to provide a foamed or cellular thermoplastic polymer article having desired light transmissivity or optical properties for a particular end use, with even microcellular thermoplastic materials, e.g., having micro-sized cells with an average cell size of greater than 1.0 µm to 100 µm as in Kawamura and reading upon the size range of instant claim 5, providing some degree of light transmissivity (Entire document, particularly Abstract; Figs. 16 and 24; Paragraphs 0005-0006, 0109, 0140-0146, 0192-0195, Examples), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Miller with the teachings of Kawamura utilizing routine experimentation to determine the optimum foaming conditions to provide an injection foam molded body having the desired cellular structure, particularly foam cell size(s) and density, and thus desired optical properties (e.g., as in instant claims 5-8 and 16) such as “at least partially transparent” properties for a particular end use of the injection foam molded body taught by Kawamura in view of Miller. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-4, 9-14, and 17-18 as well as instant claims 5-8 and 16 would have been obvious over the teachings of Kawamura in view of Miller given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claim 15, although Kawamura teaches application of a counterpressure in the injection foam molding process to control the expansion and/or compression of the molded body, e.g., as shown in Fig. 2, particularly utilizing a core-back method, Kawamura does not specifically teach utilizing a gas counterpressure as instantly claimed. However, given that the use of a gas counterpressure in a core-back method is well known in the art (e.g., as evidenced by Shima, JPH08318542A, machine translation also attached, particularly Paragraph 0004, which is specifically referenced by Kawamura in the Background Art section with respect the core-back method), the claimed invention as recited in instant claim 15 would have been obvious over the teachings of Kawamura in view of Miller.
With respect to instant claim 19, although Kawamura does not specifically teach that the temperature of the injection molded foam mold fluctuates cyclically during the injection molded foam process, given that it is well established in the art that cyclically fluctuating the temperature during injection molding is a conventional process in the art known to reduce surface defects such as weld lines, sink marks or warpage (as evidenced by Macedo, Influence of dynamic temperature control on the injection molding process of plastic components, Entire document, the Examiner takes the position that absent any clear showing of unexpected results, instant claim 19 would have been obvious over the teachings of Kawamura in view of Miller.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hartmann (EP3098629A1, machine translation also attached) teaches a composite arrangement for covering a flat light for motor vehicles, particularly signal lights or headlights, wherein the composite arrangement comprises at least one layer comprising structures (e.g., 101) made of a first transparent polymeric material, and comprising a second transparent material that at least partially fills spaces between the structures formed of the first transparent polymeric material, wherein the second transparent material may be a polymeric material, and in some embodiments of the invention, the first and/or second transparent material is foamed to achieve improved damping, scattering or weight savings. Kojima (WO2007/111353A1, machine translation also attached) teaches a light diffuser and a method for manufacturing a light diffuser by subjecting an injection molded article to a foaming process through the application of radiation energy and thermal energy, to provide a light diffusing foamed sheet having a predetermined cell density distribution pattern to control the optical properties of the light diffuser. Clarke (WO2023/143926A1) teaches an injection foam molding process to produce molded polymer articles comprising a core layer of expanded cellular foam disposed between, and integral with, first and second solid skins, wherein the foaming process may utilize both physical and chemical foaming agents and can be controlled to provide a particular cellular microstructure that imparts preferred properties for a particular end use of the molded article.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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