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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 March 2026 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11 and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitations, “a continuous laser seam weld extending along at least a portion of a periphery of a joint between the closure outer panel and the closure inner panel, and a structural adhesive layer occupying a portion of a lap area between the closure outer panel and the closure inner panel.” Are not found in the originally filed specification.
Applicant has support for “joining the closure outer panel with a closure inner panel using laser welding and/or adhesion” but there is no disclosure of a “continuous laser seam” nor “structural adhesive” nor placing the adhesive in “a portion of a lap area” as required by both claims 11 and 28.
Claims 21-24, 26 and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
See MPEP § 2164.01(a). The factors taken into consideration when determining whether any necessary experimentation required by the specification is “reasonable” or is “undue” are called the “Wands” factors and are described below.
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In this analysis, Applicant’s own analysis of the Aoki reference is considered. Applicant concludes that Aoki is incapable of performing a method to arrive at the specific material properties claimed. However, Aoki’s description of the precision leveler provides for a plurality of rollers. This matches Applicant’s description of his own precision leveler: a plurality of rollers. Thus, as the teaching of “a plurality of rollers” is incapable of forming material having the claimed material properties without undue experimentation, the claims are not enabled. Applicant has not provided any amount of direction as to how to arrive at the claimed material properties. Rather, Applicant admits that precision levelers have many degrees of freedom: “number of rollers, roller diameter, roller gap settings, backup roller configurations, applied hydraulic force, and control systems” which all cooperate to contribute to flatness.
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 11-20 and 28 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 “continuous laser seam weld extending along at least a portion of a periphery of a joint” in claims 11 and 28 is a relative term which renders the claim indefinite. The term “continuous” would otherwise generally require a complete, unbroken weld from one end of a joint to another, but the term is further modified “a portion of a periphery of a joint” which implies that the weld is incomplete from one end of a joint to another. It is unclear how a weld seam can be both complete and incomplete at the same time. This discontinuity 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. For the purpose of examination, Examiner will consider the limitation to be satisfied by any weld that extends unbroken along a portion of a joint.
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.
Claims 1-3, 6, 8, 10, 21-24, 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff et al. (US 9855980 B2) in view of Aoki et al. (WO 2004065055 A1).
As to claim 1, Kazakoff teaches a process of manufacturing a vehicle panel (as shown for example in Fig 19, the door 348 includes vehicle panels 350, 352, 354 which are manufactured), the process comprising: processing the sheet to form a processed sheet (sheets of metal are cut by laser, see Col 11 lines 24-38); and bending the processed sheet to form the vehicle panel (Col 17 lines 41-44: “The rear wall body 108, and more generally the bent sheet-metal portions and bodies described herein, may be bent (or formed) using a programmable bending brake.” Door 348 includes panel 350 which is illustrated to have a flanges 360, 364, which would be recognized by an artisan as formed by bending), wherein the first material has a strength attribute higher than a strength attribute of steel or aluminum (Examiner interprets “stainless steel” to be distinct in this context from “steel.” Kazakoff teaches the sheets are stainless steel (See Col 11 lines 24-38), which is stronger than steel or aluminum).
Kazakoff does not teach the step of processing a metal coil to form a sheet, the metal coil comprising a first material, and wherein processing the metal coil to form the sheet comprises processing the metal coil using a leveler comprising a plurality of rollers to meet a sheet flatness value for an automotive panel.
Rather, Kazakoff describes a process in which sheets of metal are laser cut (Col 23 lines 29-30: “Also, sheet metal can be precisely cut (by laser cutting, for example)”), but does not teach the provenance of the sheets.
However, in the field of stainless steel panel manufacturing, it was well known at the time the invention was effectively filed to provide steps prior to laser cutting a sheet. See Aoki which teaches a step of processing a metal coil to form a sheet before laser cutting the sheet (see Fig 1 which shows a coil 10 and a leveler 3 and a laser cutting device 5 in series).
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have performed the steps of processing a metal coil of Aoki prior to the laser cutting and bending of Kazakoff. Such a person would have recognized the teachings are in analogous art since Aoki describes the steps before laser cutting and Kazakoff describes the steps after laser cutting. Moreover, such an artisan would have been motivated to have performed Aoki prior to Kazakoff in order to achieve the benefits of Aoki, which are described at page 10: “Thus, the material transferred in the feed direction can be laser-cut by the leveler device, and the entire system can be made simpler and cheaper.” That is, given that an artisan wishing to practice Kazakoff would need to source material, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have sourced the material from the process of Aoki considering Aoki delivers flat material in a “simple” and “cheap” manner.
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Kazakoff in view of Aoki further teach the metal coil comprising a first material (the coil 10 of Aoki is suggested to be the stainless steel material of Kazakoff), and wherein processing the metal coil to form the sheet comprises processing the metal coil using a leveler comprising a plurality of rollers to meet a sheet flatness value for an automotive panel (Aoki teaches at Page 14 lines 12-14: “Further, the leveler device 3 has upper and lower rollers 15 a and 15 b arranged in a staggered manner. By the upper and lower rollers 15a and 15b, the plate material 11 drawn out from the coil material 10 is stretched flat and straightened.”).
As to claims 2, 3, 6, 8, 10, the claims are unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
As to claim 21, Kazakoff in view of Aoki teaches the process of claim 1, wherein the leveler comprising a plurality of rollers processes the metal coil to achieve a sheet flatness of less than 1 I-Unit (This limitation expresses the intended result of the use of the claimed leveler in this process step. See MPEP § 2111.04: “a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” See also MPEP § 2112.02: “When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).” Since the leveler of Aoki has the same structure (multiple rollers) it is presumed to achieve the same results as Applicant’s claimed leveler.).
As to claim 22, Kazakoff in view of Aoki teaches the process of claim 21, wherein the sheet flatness is less than 0.5 I-Units (Since the leveler of Aoki has the same structure (multiple “rollers”) it is presumed to achieve the same results as Applicant’s claimed leveler.).
As to claim 23, Kazakoff in view of Aoki teaches the process of claim 22, wherein the sheet flatness is 0.14 I-Units (Since the leveler of Aoki has the same structure (multiple “rollers”) it is presumed to achieve the same results as Applicant’s claimed leveler.).
As to claim 24, Kazakoff in view of Aoki teaches the process of claim 1, wherein the sheet formed from the metal coil has a flatness such that blanking accuracy is improved to below±0.3mm (This limitation expresses the intended result of the use of the claimed leveler in this process step. See MPEP § 2111.04: “a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” See also MPEP § 2112.02: “When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).” Since the leveler of Aoki has the same structure (multiple “rollers”) it is presumed to achieve the same results as Applicant’s claimed leveler.).
As to claim 26, the claim is unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff in view of Aoki as applied to claim 1 above, and further in view of Lisichkov (BG 4728 U1).
As to claims 5 and 7, the claims are unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff in view of Aoki as applied to claim 1 above, and further in view of Noonan (“Adhesives for Trailer Assembly”, NPL V).
As to claim 9, the claim is unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff in view of Aoki as applied to claim 1 above, and further in view of Rolled Alloys (“Sheet and Plate Flatness”, NPL W).
As to claim 25, the claim is unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Claims 11-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff et al. (US 9855980 B2) in view of Noonan (“Adhesives for Trailer Assembly”, NPL V).
As to claim 11, Kazakoff teaches a vehicle panel assembly (door 348, as shown in Fig 19 comprising an assembly of layers 350, 352, 354), comprising: a closure outer panel made of stainless steel (panel 350. See Col 20 lines 43+. Kazakoff teaches the panel 350 is made of “sheet-metal,” which is elsewhere described as “stainless steel.” See Col 11 lines 24-38 which discuss the panel 114 is “sheet-metal” which is “stainless steel”); and a closure inner panel joined to the closure outer panel (Kazakoff Fig 19 shows panel 352 which is an inner panel. Fig 20 shows panel 352 is joined to outer panel 350), wherein the closure inner panel is joined to the closure outer panel using a continuous laser seam weld extending along at least a portion of a periphery of a joint between the closure outer panel and the closure inner panel (Kazakoff teaches welding a portion of a periphery of a joint between inner and outer panels at Fig 7 (fillet welds 248 and 250 described at Col 16 lines 14-28). The specific process of laser welding is a product-by-process limitation which attempts to describe a product by the process in which it is made. See MPEP § 2113. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In this case, as Kazakoff teaches welding, the structure of a “continuous laser seam weld” which extends a “portion of a periphery” is met, even if Kazakoff doesn’t specify the weld is a laser weld. See also Examiner’s interpretation of “continuous weld seam” in the rejection under 35 USC 112 above.).
Kazakoff does not teach both a weld and a structural adhesive layer occupying a portion of a lap area between the closure outer panel and the closure inner panel.
H Rather, Kazakoff teaches fasteners. However in the art of vehicle cab manufacture, it was known at the time the invention was effectively filed to swap fasteners for adhesives. See Noonan which teaches the use of adhesives by Henkel engineers to reduce the number of fasteners in the creation of a trailer. Noonan teaches the adhesives would find use in “vehicles such as trailers, truck bodies, buses and construction machinery, ...to assembly frames, panels, booms and cabs made of metal, plastic, and composites.” (Page 1) Thus, Noonan’s teachings are analogous to the claimed invention.
In the section, “Bonding and sealing panel trim” on page 3, Noonan teaches bonding panel trim around the trailer’s frame was bonded using Loctite H4500 and 5570. This reduced fasteners by 90 percent and simultaneously bonded and sealed the components.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have swapped the fasteners of Kazakoff for the adhesive of Noonan between the closure outer panel and the closure inner panel. Such a person would have been motivated to do so in order to achieve the benefits described by Noonan such as the simultaneous bonding and sealing, as well as the reduction in fasteners. See also MPEP § 2143 B which describes the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results. In this case, the simple substitution is of fasteners for adhesives.
As to claims 12-13 and 15-20, the claims are unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kazakoff in view of Noonan as applied to claim 11 above, and further in view of Lisichkov (BG 4728 U1).
As to claim 14, the claim is unamended and the text of the rejection is unchanged. To see the text of the rejection, please refer to the Final Action mailed 20 February 2026.
Response to Arguments
Applicant's arguments pertaining to the rejections under 35 USC 103 filed 24 March 2026 have been fully considered but they are not persuasive.
On page 9 Applicant argues the combination of Kazakoff and Aoki is not sufficient because there is no articulated reasoning for combination. Examiner Cigna disagrees.
Articulated reasoning was given in the Final Rejection mailed 20 February 2026 in paragraph 28. Examiner detailed the particular step (laser cutting) which joins the methods of Aoki (Aoki ends in laser cutting) and Kazakoff (Kazakoff begins at laser cutting), and provided a motivational statement for why an artisan practicing Kazakoff would have chosen to provide for the steps of Aoki (page 10 of Aoki teaches the system of leveling and laser cutting can be performed “simpler and cheaper”). This reasoning has been expanded in the rejection above, see paragraphs 21-23, above.
On Page 10, Applicant argues the specific flatness values in claims 21-26 are not mere intended results. Examiner disagrees. The limitations are the result of a process. MPEP § 2112.02 states “When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).” In looking to Applicant’s specification, it is the “precision leveler” which carries out the method which forms the material to have the claimed properties. The structure of the “precision leveler” is found at [0039] which defines a precision leveler as “an equipment with a plurality of rolling units1 to level defective coils.” As the structure of Aoki’s leveler has a plurality of rollers, it can be assumed the Aoki device will inherently perform the process resulting in the claimed structure. Applicants arguments of page 11 regarding the structural differences between the precision leveler as claimed and the leveler of Aoki are not commensurate in scope with the claim nor Applicant’s originally filed Specification.
Examiner requests Applicant to claim the particulars of the precision leveling method because it appears that Applicant’s invention turns on the ability to form panels having those particular material properties. In order to gain a limited monopoly on the process of forming panels having those material properties, the process of doing so must be shared with the public. Applicant consistently argues that Aoki is unable to form panels having the required material properties, but has provided no evidence that Aoki’s precision leveler would be incapable of forming such panels. Since Applicant believes that the description provided by Aoki (basically: a series of rollers) is not a clear, concise, and exact teaching of how to form panels having the material properties in dispute, then Applicant’s own disclosure lacks enablement under 35 USC 112 (a).
On page 12, Applicant argues against the rejection of claim 7, indicating that Examiner has conflated edge deburring with material removal deployed “for the bending.” In the rejection of claim 7, examiner noted, “Edges of the sheet are deployed in the bending process and thus the material removed from the edges during the rounding process after a bending process meets the claim.”
On Page 13, Applicant argues that the cited yard stick (36 inches) does not meet the claimed “at least 1000 mm” under the Titanium Metals Corp. v. Banner analysis of close ranges. Examiner disagrees. Both “1000mm” and “1 yard” are generally round numbers relied upon in the art of measuring which are sufficiently similar in this context. Applicant argues that 1000mm has particular meaning in the originally filed specification, but relies on values of 1070mm and 1880mm to prove it, not 1000mm.
On Page 14, Applicant argues against the rejection of claim 11’s “continuous” weld under Kazakoff’s “fillet weld” at a “discrete location.” Applicant argues Examiner’s analysis renders the term “continuous” superfluous. To the contrary, Applicant’s claim modifies “continuous” by requiring the weld is along “a portion” of a periphery of a joint. This combination of terms not definite as it is unclear how a weld can be both “continuous” and also along only a “portion” of a joint.
On Page 15, Applicant argues against the combination of Noonan with Kazakoff because a) Applicant believes the combination would not result in the claimed configuration, and b) Applicant believes Noonan is not analogous art.
As to b) both Noonan and Kazakoff are directed to vehicles. Noonan may teach an example of trailer which replaces fasteners with structural adhesive, but Noonan specifically addresses other vehicles in which fasteners may be replaced by adhesives on page 1: “specialty vehicles, such as trailers, truck bodies, buses and construction machinery.”
As to a), the adhesive replaces fasteners at the lap of the panels and would indeed form the claimed configuration.
On Page 16, Applicant argues against the rejection of claims 15 and 16 under a product-by-process analysis. Applicant argues Examiner did not show the structure implied by the process steps is present in the prior art. Applicant incorrectly argues the structure implied by the product-by-process of claims 15 or 16 has anything to do with flatness. Claim 15 is directed to a panel processed by a plurality of rollers. Claim 16 is directed to an outer panel having a thickness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 17 July 2026
1 rollers
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