DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 23 have been considered but are not persuasive because it is not clear that there is sufficient support for the newly added limitations. Figure 4 clearly shows the thickness of the spring base 7 is smaller than the width of the receptacle 10. This is even true when including the unclaimed height HE as discussed in paragraph 17. In order to fit into the receptacle 10, the spring base has to be thinner than the width of the receptacle. For this reason, this newly added limitation cannot be considered.
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 23-24 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.
In re claim 23, the newly added limitation of “a width of the mounting receptacle is smaller than a thickness of the spring base” is not enabled because the spring base is positioned inside the receptacle and thus has to be smaller. This is supported by the figures where the spring base thickness is clearly less than the width of the receptacle (see figure 4 for best view), which is the opposite of what is claimed.
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.
In re claim 23, it is not clear how a width of the mounting receptacle can be smaller than the thickness of the spring base because the spring base fits inside the receptacle and thus has to be smaller than the receptacle. For this reason, this limitation will not be given weight.
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(s) 23-24 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Yoshino et al. (US 6262958).
In re claim 23, Yoshino, in figures 2-5, discloses a switching device, comprising: a yoke (3); a positioning wall; a mounting receptacle (space where the embossment is positioned) defined between the yoke and the positioning wall (10); and a spring assembly including a spring base and a spring arm protruding from the spring base, the spring base having an embossment (6b) positioning the spring assembly in the mounting receptacle and a base securing element (6a) locking the spring assembly in the mounting receptacle, the base securing element extends from the spring base and has a folded back hook section extending back toward the spring base (as best seen in figure 4).
In re claim 24, the limitations in this claim are not given weight because they are product by process limitations. In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e switching device, does not depend on its method of production, i.e. compressing and press fittingly positioning the embossment as claimed. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Allowable Subject Matter
Claims 1, 3, 7-22, and 25 are allowed.
Conclusion
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/Alexander Talpalatski/Primary Examiner, Art Unit 2837