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 .
This Office Action is in response to the claims filed on 07/29/2026.
Claims 1, 3-24, and 26-28 are currently pending and have been examined below. Claims 2 and 25 are cancelled.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-24, and 26-28 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11912110. Although the claims at issue are not identical, they are not patentably distinct from each other because the US Patent includes all features presented in claims 1-28.
The US Patent, as non-limiting examples, discloses:
(i) A vehicular slider window assembly with a fixed window panel and movable window panel;
(ii) a perimeter seal that attaches to a fixed window panel and seals the periphery of a movable window panel;
(iii) the perimeter seal comprises elongated sealing portions that comprise an elongated upper sealing portion, an elongated lower sealing portion, a first elongated side sealing portion and a second elongated side sealing portion, and wherein adjacent ends of the elongated sealing portions are joined to form respective corner regions of the perimeter seal;
(iv) wherein at least one corner region of the perimeter seal comprises a gap between adjacent end regions of the attachment elements of the respective elongated sealing portions that are joined at the at least one corner region;
(v) wherein a sealant is disposed within the gap of the at least one corner region.
Therefore, with the reasons presented above, the present claims are not patentably distinct from the US Patent.
Claim Interpretation
In line 31 of claim 1, “at least one corner region” was brought to applicant’s attention because claim 1 introduces a plurality of corner regions. Examiner notes that this was interpreted as the same ‘at least one corner region of the plurality of corner regions’ on line 24 of claim 1, therefore the scope of the claim is clear.
In lines 33-34 of claim 24, “wherein at least one base portion of the elongated upper sealing portion and the first elongated side sealing portion” is brought to applicant’s attention as it seems to be introducing new base portion for the elongated upper sealing portion and the first elongated side sealing portion that is different than the recited base portion on line 19. Examiner notes that the base portion on lines 33-34 was interpreted as the same base portion on line 19 and that the scope of the claim is clear.
Allowable Subject Matter
Claims 1, 3-24, and 26-28 could be found allowable if the Double Patenting rejection is overcome via terminal disclaimer.
The following is an examiner’s statement of reasons for allowance: the prior art Tooker et al. (US 9475364) (hereinafter “Tooker”) in view of Minami et al. (US 4568119) (hereinafter “Minami”) appears to teach most of the limitations of the indicated claims above.
However, claim 18 recites “a passageway formed through the base portion of the at least one selected from the group consisting of the first elongated horizontal sealing portion and the first elongated side sealing portion, and wherein the passageway extends between an exterior side of the perimeter seal and the gap”. Note that ‘formed through’ was interpreted such that the passageway is defined to pass through the base portion of the respective elongated sealing portion similar to figures 4-6 of applicant’s invention. The amended independent claims 1 and 24 respectively incorporates the previously indicated allowable dependent claims 2 and 25 and recites similar scope as claim 18, therefore similar reasons for allowance were applied to both independent claims.
The base portions of the perimeter seal of Tooker does not have a passageway that extends between an exterior side of the perimeter seal and the gap nor it is reasonable to combine the current perimeter seal of Tooker with a passageway since the created passageway would significantly decrease the sealing effect of the perimeter seal and would allow passage through the attachment portions which could lead to the detachment of the perimeter seal.
Additionally, forming a passageway through the base portion would require drilling or punching a hole passing through the base portion which damages the base portion, decreases its structural integrity, and can negatively affect the sealing effect of the perimeter seal.
Lastly, there is no rational reasoning or benefit to create a passageway through the base portions of the perimeter seal just to seal it with a sealant as required by applicant’s claims.
Further modifications such that any of the prior art mentioned above meets the claim limitations would require hindsight and/or a piece-meal rejection such that examiner finds them unreasonable to apply.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s amendments directed to the claim objections and 112(b) rejections have been considered and the objections/rejections were withdrawn.
As noted above, the independent claims 1 and 24 now includes the allowable subject matter of the cancelled claims 2 and 25, respectively. Therefore, claims 1 and 24 overcomes the 103 rejection.
Applicant's arguments filed on 17/29/2026 directed to the Double Patenting rejection have been fully considered but they are not persuasive.
Examiner notes that “A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).” (MPEP 804 (II)(B)).
Applicant argues: “Applicant submits that the claims of U.S. Patent No. 11,912,110 do not include a movable window panel that is movable to a closed position where the movable window panel fully covers the opening, such as claimed herein and collectively and in combination with the other claimed elements”, however Examiner notes that the patent recites “wherein the movable window panel is movable between a closed position, where the movable window panel covers the opening” which intrinsically means ‘fully’ covering. This broader scope of the patent reads into the narrower scope of the application, therefore this was found unpersuasive.
Applicant argues: “Moreover, Applicant submits that the claims of U.S. Patent No. 11,912,110 do not include at least one base portion spaced from the surface of the fixed window panel by the gap”, however the patent recites:
“wherein the respective base portions of the elongated sealing portions have attachment elements disposed therealong, and wherein, with the attachment elements attached to the surface of the at least one fixed window panel the attachment elements attach a first side of the respective perimeter seal at the surface of the at least one fixed window panel;
wherein the respective base portions of the elongated sealing portions are joined at respective corner regions, and wherein adjacent end regions of the attachment elements are spaced from one another at the respective corner regions such that there is a gap between the adjacent end regions of the respective attachment elements at the respective corner regions”
The recitation above reads on the structure of the application which what applicant believes the patent does not include.
Applicant argues: “wherein sealant is disposed within the gap such that the sealant is disposed (i) between the adjacent end regions of the attachment elements and (ii) between the surface of the at least one fixed window panel and the at least one base portion, such as claimed herein and collectively and in combination with the other claimed elements. Specifically, while claim 1 of U.S. Patent No. 11,912,110 recites a gap that is merely "configured to receive a sealant," it does not require the actual structural presence and specific structural disposition of the sealant within the assembly as presently claimed”, Examiner draws attention to:
“wherein the respective base portions of the elongated sealing portions have attachment elements disposed therealong, and wherein, with the attachment elements attached to the surface of the at least one fixed window panel, the attachment elements attach a first side of the respective perimeter seal at the surface of the at least one fixed window panel;
wherein adjacent end regions of the attachment elements are spaced from one another at the respective corner regions such that there is a gap between the adjacent end regions of the respective attachment elements at the respective corner regions;
wherein, with the attachment elements attached to the surface of the at least one fixed window panel, each of the respective gaps is configured to receive a sealant that is dispensed into the gaps via the respective openings and passageways to fill the gaps and to seal the corner regions of the perimeter seal to the at least one fixed window panel”.
The combination of these limitations above recites the disposition of the gaps relative to the attachment elements, the one fixed window panel, and the base portion. Furthermore, the last ‘wherein’ clause above discloses that an element is dispensed into those gaps, which the patent recites as sealant. This reads onto the limitations of the application that the applicant argues the patent does not have.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK B PONCIANO whose telephone number is (571)272-9910. The examiner can normally be reached M-F 6:30-4:00.
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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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/PATRICK B. PONCIANO/Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634
