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 .
Response to Arguments
Applicant’s arguments with respect to claim 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments with respect to the rejection(s) of claim 13 have been fully considered but they are not persuasive. Applicant argues that Burack does not disclose “providing a carrying structure with reception grooves,” and “Burack does not disclose that the adhesive 46 includes the recited reception grooves… There is no evidence that reception grooves could be formed in such an acrylic adhesive coating” (Remarks, page 5). The examiner disagrees. Burack discloses “the wheel 21 is pressed against the adhesive-coated upper surface of substrate 18… as the manipulator is moved, optical fiber is fed from reel 19 to wheel 21 for adherence to the upper surface of substrate 18” (fig. 2; col. 4, lines 16-25). Thus, it is reasonable to interpret that a groove is formed as the wheel 21 is pressed against the adhesive and optical fiber is placed in the reception groove as shown in fig. 8. Note that the claim recites “providing a carrying structure with reception grooves, and winding an optical waveguide… the optical waveguide is placed successively in the reception grooves,” that is, the claim does not specify that the grooves are pre-formed, cannot be formed in adhesive layer, or are formed in the carrier substrate. Accordingly, given the broadest reasonable interpretation, Burack teaches providing a carrying structure (18 or 45; figs. 2 and 8) with reception grooves (as wheel 21 is pressed against the adhesive-coated upper surface of substrate 18 or 45).
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) 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (CN 108508561 A - hereinafter “Yang”).
Regarding independent device claim 8, Yang discloses a tool for producing a lamp body (English translation, pages 2, 1st-2nd paragraphs), the tool comprising:
a tool head (30, figs. 1-4) with an optical waveguide (50) exit opening (bottom of guide 31 in FIG. 3),
an optical waveguide provision device (11 and 31) for providing an optical waveguide at the optical waveguide exit opening (see figs. 3-4), and
a positioning element (lifting assembly; English translation, page 6, last paragraph through page 7, 2nd paragraph) which has an optical waveguide guide surface and is displaceable along an axis which extends at a distance from the optical waveguide exit opening (rail 41 and hole 63; English translation, page 7, 3rd paragraph), wherein the positioning element is configured as a hydraulic or pneumatic cylinder (English translation, page 6, last paragraph).
The examiner notes that limitation "for producing a lamp body" is an intended use of the tool claimed in instant claim 8. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing 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” if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II. Although Yang does not explicitly disclose a “lamp body,” Yang does teach that the tool is used for vehicle lamp assembly (English translation, page 3). The tool disclosed by Yang includes all of the structural limitations of the claim and is capable of performing the intended use as recited in the preamble.
Regarding claim 9, Yang additionally discloses wherein the tool head (30, figs. 1-4) is arranged on a multiaxial industrial robot (automatic; English translation, page 6, last paragraph through page 7, 2nd paragraph).
Regarding claim 10, Yang additionally discloses wherein the positioning element (lifting assembly) is configured to be rotatable about the axis (groove 41 axis; English translation, page 7, 2nd-4th paragraphs).
Regarding claim 11, Yang additionally discloses wherein the positioning element is configured at a free end in a shape of a fork with two guide bars (62), between which the optical waveguide surface is arranged (63; fig. 5).
Regarding claim 12, Yang additionally discloses wherein the optical waveguide exit opening (bottom end of 31 in FIG. 3) is arranged at a free end of a finger-shaped element (provision device 31 appears to be a long, thin, cylindrical structure and meets the broadest reasonable interpretation of “finger-shaped element”; FIGs. 3-4).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burack et al. US 5,259,051 A (hereinafter “Burack”).
Regarding independent method claim 13, Burack discloses a method for producing a lamp body (“routing optical fiber 17 on an adhesive-coated substrate 18; Col. 4, lines 5-6 and 43-45; FIGs. 1-3, 6), the method comprising:
providing a carrying structure (“substrate” 18, 45) with reception grooves (“optical fiber pattern” 40; see FIG. 8, which shows reception grooves in adhesive covering substrate), and
winding an optical waveguide (17, 30, 34, 41-43), around the carrying structure (Col. 2, lines 7-15; Col. 5, lines 5-9), for which purpose the optical waveguide is placed successively in the reception grooves according to a planned optical waveguide profile (Col. 2, lines 24-25: “plurality of optical fiber interconnections crossing the backplane surface in the desired manner” – “desired manner” is understood to mean a planned optical waveguide profile), the placement in the reception grooves comprising:
tensioning the optical waveguide between the reception groove approached last and an optical waveguide exit opening (bottom end of 31 in FIG. 3) of a tool (“apparatus for routing optical fiber 17 on an adhesive coated substrate 18”) (Abstract; Col. 2, line 10),
introducing a positioning element (“wheel” 21, 32; Col. 4, lines 32, 60) into a path of the optical waveguide, and displacing the optical waveguide (wheel 21, 32 exerts tension on the waveguide and causes it to unwind from a reel, which displaces the optical waveguide, and the wheel also presses the optical waveguide into the desired pattern, thereby displacing it in the vertical direction; Col. 2, lines 11-12; Col. 4, line 17) such that an optical waveguide section that is arranged between the positioning element and the optical waveguide exit opening (see FIG. 3) is aligned in a predetermined setting relative to the next reception groove (see FIGs. 3, 6 – to form the desired pattern, the optical waveguide section between the positioning element and the optical waveguide exit opening must be aligned with the next part of the pattern, which constitutes the “next reception groove” under the broadest reasonable interpretation of the claim),
placing the optical waveguide section in the next reception groove by moving the positioning element and the optical waveguide exit opening (Col. 2, lines 16-19: “The continuous optical fiber is routed in a complex pattern by changing the direction of motion of the manipulator” – moving the manipulator 20, 26 will move both the wheel, which is mapped to the claimed positioning element, and the optical fiber guide which provides the optical waveguide exit opening) while maintaining a relative setting with respect to one another (see FIG. 3), and
removing the positioning element from the optical waveguide (see FIGs. 1, 6, 7 – the completed device must not have the positioning element still attached to the optical waveguide, so it is implied that the positioning element is removed; see also Col. 7, line 14: “Routed board is removed from work area”).
Regarding claim 14, Burack additionally discloses wherein the method is carried out in an automated fashion (Col. 6, lines 19-22).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hirayama et al. (US-6655433-B1), Lee (US-20060280416-A1), Engel (US-20150343713-A1), Sasaki (TW-201022747-A), Yang et al. (CN-108508560-A) disclose a tool comprising a tool head, an optical waveguide provision device, and a positioning element.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Uyen-Chau N. Le whose telephone number is (571)272-2397. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kiesha R. Bryant can be reached at (571) 272-3606. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
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