DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 6-7 in the reply filed on 3/03/2026 is acknowledged.
Claims 6-7 will be examined hereafter.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings filed 3/18/2025 are not proper black and white line drawings. Figures 6-9 appear to be grey-scale photographs and are very difficult to interpret. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning. Examiner further notes that if Figures 6-9 are intended to be color photographs, color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim 6 is rejected under 35 U.S.C. 102a1 as being anticipated by Kuroda et al. (US 5,067,290) (hereinafter Kuroda).
Regarding claim 6, Kuroda discloses a weather strip, which has a seal portion [that is configured to be sandwiched between a periphery of a car body opening part (See Figure 2) and a door body capable of closing the car body opening part and seal a space therebetween]* (Examiner notes that weather strip of Kuroda is entirely capable of being “sandwiched between a periphery of a car body opening part and a door body”, such as sealing between an openable vehicle hatch door body with a stationary window glass), wherein the seal portion includes a base layer (element 2) that forms a shape of the seal portion and a surface layer (element 1) that covers at least a part of an outer surface of the base layer (See Figure 1), the base layer is comprised of a rubber foam body [obtained by causing a rubber material to foam]*, the surface layer is comprised of a resin foam body [obtained by causing a resin material to foam]*, and the surface layer includes open cells, [in which adjacent cells communicate with each other]*(See at least column 3, lines 40-46, “The dam rubber for a car window may be prepared, for example, by adhering and laminating rubber foamed article (such as ethylene-propylene-diene terpolymers, chloroprene, etc.) and/or plastic foamed articles (such as polyurethane, polyethlene, polyvinyl chloride, etc.) of an open-cell structure having the above-mentioned proportions of open-cells, and having different compressive resistances”).
Examiner notes that claim limitations “a rubber foam body obtained by causing a rubber material to foam” and “a resin foam body obtained by causing a resin material to foam” are considered to be product-by-process limitations in the claim, and it has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Additionally, 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, 227 USPQ 964,966 (Fed. Cir. 1985).
Examiner’s note: *The above/below statements in brackets are examples of an intended use statement that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to the structure of a weather strip, the prior art must only be capable of meeting the structural recitation in order to be applicable, and in this case, the examiner maintains that the weather strip disclosed by Kuroda is entirely capable of the intended use statement. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham 2 USPQ2d 1647 (1987).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nozaki et al. (US 2003/0051411) (hereinafter Nozaki) in view of Kuroda et al. (US 5,067,290) (hereinafter Kuroda).
Regarding claim 6, Nozaki discloses a weather strip, which has a seal portion [that is configured to be sandwiched between a periphery of a car body opening part (element 1) and a door body (element 3) [capable of closing the car body opening part and seal a space therebetween]*, wherein the seal portion includes a base layer (element 51) that forms a shape of the seal portion and a surface layer (element 52) that covers at least a part of an outer surface of the base layer, the base layer is comprised of a foam body (See at least paragraph [0007], “the inner and outer side-face projections are formed from a solid material or a minutely foamed material”) obtained by causing a material to foam, the surface layer is comprised of a foam body (paragraph [0104], “The seal wall 523 is made of a sponge material”. Examiner notes that “it is well known in the art that a “sponge” elastomeric weatherstrip is also considered to be “foam”, See definition for “foam” below) [obtained by causing a resin material to foam]*.
Although Nozaki does not explicitly recite “the base layer is comprised of a rubber foam body” and “the surface layer is comprised of a resin foam body”, and “the surface layer includes open cells, in which adjacent cells communicate with each other”, Kuroda teaches that it is known in the art to configure a sealing strip for a vehicle, including a seal portion including a base layer (element 2) that forms a shape of the seal portion and a surface layer (element 1) that covers at least a part of an outer surface of the base layer, the base layer is comprised of a rubber foam body, the surface layer is comprised of a resin foam body, and the surface layer includes open cells, in which adjacent cells communicate with each other (See at least column 3, lines 40-46, “The dam rubber for a car window may be prepared, for example, by adhering and laminating rubber foamed article (such as ethylene-propylene-diene terpolymers, chloroprene, etc.) and/or plastic foamed articles (such as polyurethane, polyethlene, polyvinyl chloride, etc.) of an open-cell structure having the above-mentioned proportions of open-cells, and having different compressive resistances”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the weatherstrip of Nozaki such that the base layer is comprised of a rubber foam body, the surface layer is comprised of a resin foam body, and the surface layer includes open cells, as taught by Kuroda, since configuring the weatherstrip of Nozaki in this way would function as intended for the purpose of Nozaki, due to the desirable material characteristics of rubber foamed materials and plastic (i.e. resin) foamed materials, and since open-cell foam is well-known in the art for use in vehicle weather strips, due to the desirable characteristics of open-cell foam (i.e. enhanced compression, sound attenuation, etc.), and since it has been established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected. MPEP 2143
foam
(fōm)
n.
1. A colloidal dispersion of a gas in a liquid or solid medium, such as shaving cream, foam rubber, or a substance used to fight fires. A foam may be produced, especially on the surface of a liquid, by agitation or by a chemical reaction, such as fermentation.
2. Any of various light, porous, semirigid or spongy materials, usually the solidified form of a liquid full of gas bubbles, used as a building material or for thermal insulation or shock absorption, as in packaging.
3.
a. Frothy saliva produced especially as a result of physical exertion or a pathological condition.
b. The frothy sweat of a horse or other equine animal.
4. The sea.
foam
(foum) noun
a mass of small bubbles on the surface of liquids etc.
verb
to produce foam.
foam rubber
a form of rubber with a sponge-like appearance, used for stuffing chairs etc.
Source: https://www.thefreedictionary.com/foamed
Examiner’s note: *The above/below statements in brackets are examples of an intended use statement that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to the structure of a weather strip, the prior art must only be capable of meeting the structural recitation in order to be applicable, and in this case, the examiner maintains that the weather strip disclosed by Nozaki is entirely capable of the intended use statement. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham 2 USPQ2d 1647 (1987).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nozaki et al. (US 2003/0051411) (hereinafter Nozaki) in view of Kuroda et al. (US 5,067,290) (hereinafter Kuroda) and further in view of Schmid et al. (US 2018/0319259) (hereinafter Schmid).
Regarding claim 7, Nozaki does not explicitly disclose wherein the surface layer contains a silicone oil. Schmid, however, teaches that it is known in the art to configure a vehicle weatherstrip which has a seal portion including a surface layer (at least elements 30 and 34) such that the surface layer contains a silicone oil (See at least paragraph [0055], “The result is an anti-friction coating material class that is geometrically stable after crosslinking, more specifically with respect to thermal effects as well. Moreover, additives comprising an oil, such as a paraffin oil or silicone oil, show excellent properties with respect to abrasion resistance”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the vehicle weather strip of Nozaki in view of Kuroda, such that the surface layer contains a silicone oil, as taught by Schmid, since silicon oils are known in the art to provide anti-friction properties, as well as “show excellent properties with respect to abrasion resistance”, as taught by Schmid, which would be found desirable and beneficial for the weather strip of Nozaki. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected. MPEP 2143
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kuroda et al. (US 5,067,290) (hereinafter Kuroda) in view of Schmid et al. (US 2018/0319259) (hereinafter Schmid).
Regarding claim 7, Kuroda does not explicitly disclose wherein the surface layer contains a silicone oil. Schmid, however, teaches that it is known in the art to configure a vehicle weatherstrip which has a seal portion including a surface layer (at least elements 30 and 34) such that the surface layer contains a silicone oil (See at least paragraph [0055], “The result is an anti-friction coating material class that is geometrically stable after crosslinking, more specifically with respect to thermal effects as well. Moreover, additives comprising an oil, such as a paraffin oil or silicone oil, show excellent properties with respect to abrasion resistance”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the vehicle weather strip of Kuroda, such that the surface layer contains a silicone oil, as taught by Schmid, since silicon oils are known in the art to provide anti-friction properties, as well as “show excellent properties with respect to abrasion resistance”, as taught by Schmid, which would be found desirable and beneficial for the weather strip of Kuroda. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected. MPEP 2143
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN B REPHANN whose telephone number is (571)270-7318. The examiner can normally be reached Monday-Friday 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN B REPHANN/Examiner, Art Unit 3634