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 .
Examiner’s Comments
In accordance with a first alternative embodiment, the second cross member (16) is overmolded onto the first cross member (14).
In accordance with a second alternative embodiment, the second cross member (16) is attached to the first cross member (14), for example, by clipping.
Priority
Document indicating retrieval request was unsuccessful dated 09/02/2025.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the clipping (in claims 6 and 7) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 Objections
Claims 1-11 are objected to because of the following informalities:
Regarding claim 1, “first cross member” (lines 5-7) needs to be changed to –first rigid cross member-- (support in line 3 “first rigid cross member”).
See same deficiencies in claim 2 (line 1), claim 4 (line 2), claim 5 (line 2), claim 6 (line 2), claim 9 (line 2), claim 10 (lines 4-6) and 11 (line 2).
Regarding claim 10, “absorbing device” (line 2) needs to be changed to
--shock absorbing device-- (support in lines 1-2 “shock absorbing device”).
Appropriate correction is required.
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 10 and 11 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.
Regarding 10, “where it includes a shock absorbing device arrange in front of said front transverse beam” (lines 1-2) is unclear. What does “it” positively recite?
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.
Claim(s) 1-5, 7 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tarahomi et al. US 20020121787 A1 (cited on IDS dated 03/31/2025).
Regarding claim 1, Tarahomi et al. US 20020121787 A1 discloses
(in paragraphs [0075]-[0093] shown in Figures 10-21) a shock absorbing device for a motor vehicle (in paragraph [0002]), intended to be placed in front of a front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10) of a vehicle (in paragraph [0067]), wherein it includes: a first rigid cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15), intended to be arranged in contact with said front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10), and a second cross member (molded foam portion 204 in paragraph [0068] shown in Figure 15) with lower rigidity (in paragraph [0069]) than the first cross member
(high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15), comprising a first part (molded foam portion 204 in paragraph [0068] shown in Figure 15) arranged in front of the first cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15), and a second part (plurality of recesses 210 in paragraph [0070] shown in Figure 15) extending above the first cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15) shown in Figures 10, 11, 12 and 15.
Regarding claim 2, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, wherein the first cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15) is made of injected polyethylene (in paragraph [0083]).
Regarding claim 3, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, wherein the second cross member (molded foam portion 204 in paragraph [0068] shown in Figure 15) is made of expanded polypropylene (in paragraph [0069]).
Regarding claim 4, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, wherein the second cross member (molded foam portion 204 in paragraph [0068] shown in Figure 15) is overmolded (in paragraphs [0057]-[0061]) onto the first cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15).
“Even though product-by-process claims are limited by and defined by the process (overmolded), determination of patentability is based on the product (shock absorbing device for a motor vehicle) 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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added but is instead produced in-situ does not change the end product.). Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) (“Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims.”); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as “anticipated by a disclosure of the same product irrespective of the processes by which they are made.”); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 (“a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim”).
Regarding claim 5, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, wherein the second cross member (molded foam portion 204 in paragraph [0068] shown in Figure 15) is attached (in paragraph [0068]) to the first cross member
(high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15).
Regarding claim 7, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, wherein the second cross member (molded foam portion 204 in paragraph [0068] shown in Figure 15) includes an attachment member (“bonding or brackets” in paragraph [0068]) for attaching to a vehicle bumper.
Regarding claim 9, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, including an attachment member for attaching the first cross member (high-density panel 250 in paragraphs [0082]-[0083] shown in Figure 15) to the front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10) of the vehicle (in paragraph [0067]).
Regarding claim 10, Tarahomi et al. US 20020121787 A1, as understood, discloses a motor vehicle (in paragraph [0002]), including a front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10), wherein it includes a shock absorbing device (in paragraph [0002]) arranged in front of said front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10), the absorbing device (in paragraph [0002]) including: a first rigid cross member (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15), arranged in contact with said front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10), and a second cross member
(molded foam 204 in paragraph [0068] shown in Figure 15) with lower rigidity
(in paragraph [0069]) than the first cross member (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15), comprising a first part (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15) arranged in front of the first cross member (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15), and a second part (plurality of recesses 210 in paragraph [0070] shown in Figure 15) extending above the first cross member (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15).
Regarding claim 11, Tarahomi et al. US 20020121787 A1, as understood, discloses the motor vehicle (in paragraph [0002]) according to claim 10, including a grille (grill 226 in paragraph [0079] shown in Figure 14) arranged in front of the front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10), the first and second cross members (high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15 and molded foam 204 in paragraph [0068] shown in Figure 15) being configured so that, when the first part high-density panel 250 in paragraph [0082]-[0083] shown in Figure 15) of the second cross member (molded foam 204 in paragraph [0068] shown in Figure 15) is compressed, the grille (grill 226 in paragraph [0079] shown in Figure 14) remains away from the front transverse beam (elongated beam 202 in paragraph [0067] shown in Figure 10).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarahomi et al. US 20020121787 A1 (cited on IDS dated 03/31/2025) in view of (cited on IDS dated 03/31/2025).
Regarding claim 6, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1, cylindrical cell matrix 214 may be retained within the recesses 210 via a press-fit or interference fit (in paragraph [0076]).
However, Tarahomi et al. US 20020121787 A1 does not show wherein the second cross member is attached to the first cross member by clipping.
Carrillo Fernandez et al. US 20210094494 A1 teaches the first reinforcement member (32) is assembled to the second reinforcement member (34). In particular, the first reinforcement member (32) is fixed to the second reinforcement member (34) by one or more fasteners (F3), such as screws, bolts, clips, etc. (in paragraph [0031] shown in Figures 6-8). Additionally, it will be apparent to those skilled in the vehicle field from this disclosure that the first reinforcement member (32) can be fitted to the second reinforcement member (34) by other fastening means such as snap-fit or interference fit between the first and second reinforcement members (32 and 34).
Regarding claim 6, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the second cross member is attached to the first cross member of Tarahomi et al.
US 20020121787 A1 by clips, as taught by Carrillo Fernandez et al. US 20210094494 A1, with a reasonable expectation of success in order to attach the parts.
Regarding claim 8, Tarahomi et al. US 20020121787 A1 discloses the shock absorbing device (in paragraph [0002]) according to claim 1 but does not show wherein the second cross member includes an attachment member for attaching to a vehicle bumper by clipping.
Carrillo Fernandez et al. US 20210094494 A1 teaches the first reinforcement member (32) is assembled to the second reinforcement member (34). In particular, the first reinforcement member (32) is fixed to the second reinforcement member (34) by one or more fasteners (F3), such as screws, bolts, clips, etc. (in paragraph [0031] shown in Figures 6-8). Additionally, it will be apparent to those skilled in the vehicle field from this disclosure that the first reinforcement member (32) can be fitted to the second reinforcement member (34) by other fastening means such as snap-fit or interference fit between the first and second reinforcement members (32 and 34).
Regarding claim 8, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the second cross member includes an attachment member for attaching to a vehicle bumper of Tarahomi et al. US 20020121787 A1 by clips, as taught by Carrillo Fernandez et al. US 20210094494 A1, with a reasonable expectation of success in order to attach the parts.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Communication
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Lori Lyjak whose telephone number is
571-272-6658. The Examiner can normally be reached from 8:30 a.m. to
4:30 p.m. EST Monday through Friday.
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/Lori Lyjak/Primary Examiner, Art Unit 3612B
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