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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-12 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 claim 1, it is unclear what dimension the limitation regarding the groove is intended to refer to, is it the depth or width of the groove.
The dependent claims 2-12 are rejected for similar reasons.
Regarding claims 3-4, it is unclear what the portion is of in the limitation. Is it a feature in the groove? Or is it meant to be some change in cross-section of the groove?
As claim 3 is unclear claim 4 is also unclear.
The dependent claims of 3 and 4 are rejected for similar reasons.
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.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (JP 62-143350 U) [IDS dated 04/23/2025], herein Okamoto.
The citations herein refer to the translation provided by applicant which are appended to the original document for JP 62-143350 U.
Regarding claim 1, Okamoto teaches a trim material comprising a base material (1) including a groove and a surface skin (2) attached to the surface of the base material by vacuum drawing [Means of Solving the Problem]. Holes are provided at the bottom of the groove at predetermined intervals that allow surface skin to cover the base material even into the groove [Example, Fig. 1-2].
Okamoto does not teach the width of the groove of 2.0 mm to 6.0 mm.
Okamoto discloses the claimed invention except for the width of the groove being 2.0 mm to 6.0 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have made to the width within the claimed range, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 2, Okamoto does not teach sewing patterns formed on both sides of the outer layer groove.
However, the court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art, see MPEP 2144.04 (I).
Regarding claim 3, Okamoto does not teach that the groove has wide portions and narrow portions alternately formed in the groove of the base material.
Okamoto discloses the claimed invention except for the cross-section of the groove as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have to form the groove with wide portions and narrow portions alternately formed in the groove, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 4, Okamoto does not teach that a portion with a gap and a portion without a gap are alternately formed in the outer layer disposed in the groove of the base material.
Okamoto discloses the claimed invention except for the cross-section of the groove as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have to form the groove with a portion with a gap and a portion without a gap are alternately formed in the outer layer disposed in the groove of the base material, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claims 5 and 7-9, Okamoto does not teach the pitch of the vacuum holes if 3 mm to 5 mm.
However, the pitch of the holes affects the drawing ability of the skin onto the surface of the groove and is dependent on the shape and size of the groove.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to adjust the pitch of the holes for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Claims 6 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (JP 62-143350 U) [IDS dated 04/23/2025], herein Okamoto, as applied to claims 1-4 above, and further in view of Mase et al. (JP 2021-0340457) [IDs dated: 04/23/2025], herein Mase.
The citations herein refer to the translations provided by applicant which are appended to the original documents for JP 62-143350 U and JP 2021-0340457.
Regarding claims 6 and 10-12, Okamoto does not teach the outer layer comprises a laminate of a soft plastic resin and a foamed resin.
Mase teaches a vacuum molded trim component for a vehicle [0014, 0016]. The component comprises a base material with a groove and a cover layer comprising a surface skin of PVC and a foam cushion layer of polyurethane, that are vacuum molded to the base material [0002, 0016, 0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the out layer comprising the skin layer and foam cushion layer of Mase as the skin layer of Okamoto. One would have been motivated to do so in order to provide cushioning to the for the component and protection for the transfer of the holes from the base layer into the skin layer.
Okomoto and Mase do not teach the thickness of the outer layer is 2 to 4 mm.
Modified Okomoto discloses the claimed invention except for the thickness of the outer layer. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the thickness between 2 to 4 mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include Saito (US 20060197321), Ash (US 5487800 A), Foster et al. (US 20080258496 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
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