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 .
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.
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, as on pages 5-7 of Applicant’s arguments against Kuboshima and the coupling element, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would modify Kuboshima’s motorcycle with Karner’s taught coupling element and fastening section in order to prevent stress on the electrical conductors or wires, as disclosed in Karner para. 0105 – this would be reason enough to combine the two inventions.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Karner’s connector arrangement could be incorporated into Kuboshima as a straightforward design choice, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Karner is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as shown in the annotated Figures below, Karner (see annotated Karner fig. 10 below) is directed to a vehicle mirror 310 having a cable harness 328 with an electrically conductive connection via 344a and 331b to a cable on the vehicle 344, including a fastening section 324 which carries the coupling element 344a and 331b as shown below, which is analogous to the instant application (see annotated instant fig. 6 below fig. 10), which is directed to a vehicle mirror 11, 12, 13 having a cable harness 16 with an electrically conductive connection via the coupling element 17 to the cable on the vehicle 18, including a fastening section 14 which carries the coupling element 17.
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Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Fastening section (means for fastening) performing the function of fastening the mirror arm to the motorcycle in claim 10.
Coupling element for supplying (means for coupling and supplying) performing the function of supplying an electrically conductive connection to a cable in claim 10.
Cable guidance element (means for cable guidance) performing the function of carrying the coupling element in claim 12.
Second coupling element (means for coupling) performing the function of coupling the cable to the coupling element in claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 20-21 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 20, claim states the limitation such that the rear view mirror arrangement has no loose cable end during fitting” in the last two lines of the claim. This limitation is unclear because what is meant by “loose cable end” is not specified. What makes a cable end “loose” versus not? What does “loose” mean in the context of this application? Due to this limitation, one of ordinary skill in the art would not be apprised as to the scope of the invention (MPEP §2173.05(b)). For purposes of compact prosecution, so long as a cable end is connected to another element, this limitation will be considered met.
Regarding claim 21, claim states the limitation “and is dimensioned to seal the fastening section” regarding the covering cap in the last two lines of the claim. This limitation is unclear because “is dimensioned” is not objective – though a similar limitation was determined to be as accurate as the subject matter permits, in this case the subject matter, that being the size of the covering cap to seal the fastening section as in line 3 of the claim, does not provide enough context as to the size of the covering cap in relation to the fastening section. Is it relatively the same size as the fastening section, is it larger by a measurable degree, or does it encapsulate the entire fastening section? Due to this limitation, one of ordinary skill in the art would not be apprised as to the scope of the invention. For purposes of compact prosecution, so long as there is a mechanism made of an elastic material which necessarily performs the function of the claim, this limitation will be considered met.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10-13, 16-17, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kuboshima et. al US 20090073704 (hereinafter “Kuboshima”) in view of Karner et. al US 20060061008 (hereinafter “Karner”).
Regarding claim 10, Kuboshima teaches a rear view mirror arrangement for a motorcycle, comprising:
a mirror arm (Kuboshima fig. 2 – 35) which carries a mirror housing (Kuboshima fig. 2 - 34) and/or a mirror element (Kubota fig. 2 – 31 and 32) at an outer end (Kuboshima fig. 2 – 31 and 32 are housed within 34 and supported by 35, see also para. 0031);
a fastening section (Kuboshima fig. 2 – 36) which is arranged at a vehicle-adjacent end of the mirror arm (Kuboshima fig. 32 – 36 which supports 34 also contacts 22 which is the front portion of the motorcycle) in order to fasten the mirror arm (35) to the motorcycle (Kuboshima para. 0032 – 36 attaches 35 to 22); and
a cable harness (Kuboshima fig. 6 - 47) which runs in a cavity of the mirror arm (Kuboshima fig. 6 – 35 includes cavity 46 which houses 47) between the outer end and the vehicle-adjacent end of the mirror arm (Kuboshima fig. 6 – 46 lies between 34 and the vehicle contact portion 36), wherein
the cable harness (47) has a coupling element for supplying an electrically conductive connection to a cable provided on the motorcycle (Kuboshima para. 0047 – 47 is extended through 22 to connect to a main harness within the motorcycle, where the main harness within the motorcycle is a cable provided on the motorcycle).
Kuboshima does not specify a coupling element which supplies an electrically conductive connection, nor that the fastening section carries the coupling element.
In the same field of endeavor, Karner teaches a coupling element (Karner fig. 10 – 331b, 344a), and
the fastening section (Karner fig. 10 - 324) carries the coupling element (Karner fig. 10 – 324 carries 331b and 344a, see also para. 106) for the purpose of preventing stress on the electrical conductors or wires (Karner para. 0105). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a coupling element carried in the fastening section in order to prevent stress on the electrical conductors or wires (Karner para. 0105).
Regarding claim 11, Kuboshima and Karner teach the rear view mirror arrangement according to claim 10, and Karner further teaches wherein
the coupling element (331b, 344a) comprises a male connector or a female connector for supplying an electrically conductive plug-in connection (Karner fig. 10 – 331b is a plug and 344a is a socket, see also para. 0106).
Regarding claim 12, Kuboshima and Karner teach the rear view mirror arrangement according to claim 11, and Karner further teaches wherein
the fastening section (324) comprises a cable guidance element (Karner fig. 10 – 327, 324a) which carries the coupling element (Karner fig. 10 – 327 houses 331b and 324a supports both 331b and 344a, see also para. 0106).
Regarding claim 13, Kuboshima and Karner teach the rear view mirror arrangement according to claim 12, and Karner further teaches wherein
the cable guidance element (327, 324a) is configured with a cable duct that receives a bent portion of the cable harness (Karner fig. 10 – 327 is an open space which accommodates lead 330b and allows it to bend, see also para. 0106), the bent portion relieving strain of the cable harness (Karner para. 0106).
Regarding claim 16, Kuboshima and Karner teach the rear view mirror arrangement according to claim 10, wherein
the fastening section (324) has a covering cap (Karner para. 0108) which covers the fastening section (324) at least partially or completely on an upper side and/or a lateral surface (Karner para. 0108 – the mounting base 324 may be molded to incorporate a wire conduit or cover).
Regarding claim 17, Kuboshima and Karner teach a motorcycle comprising a rear view mirror arrangement according to claim 10 (see rejection to claim 1, Kuboshima teaches a motorcycle).
Regarding claim 19, Kuboshima and Karner teach the rear view mirror arrangement according to claim 10, and Kuboshima further teaches wherein the cable harness (Kuboshima fig. 6 – 47) is configured to supply electric current and electric signals to the electrical and/or electronic components provided in the mirror element (Kuboshima fig. 6 – 31) including at least one of a mirror heater, sensors, and lamps (Kuboshima para. 0047).
Regarding claim 20, Karner and Kuboshima teach the rear view mirror arrangement according to claim 10, wherein the coupling element (Karner 331b, 344a) is configured to be connected to the fastening section by a force fit, and/or a form fit, and/or a material bond such that the rear view mirror arrangement has no loose cable end during fitting (Karner fig. 10 – 344a and 331b fit into 324 such that when 344 is routed through 344a and 331b, there is no loose cable end within 344a and 331b during fitting).
Regarding claim 21, Kuboshima and Karner teach the rear view mirror arrangement according to claim 16, and Karner further teaches wherein the covering cap is manufactured from elastic plastic or an elastic rubber material and is dimensioned to seal the fastening section to protect the fastening section from moisture and dirt (Karner para. 0108 – the cover may be positioned above the mounting base, and may be molded or formed/customized for the particular vehicle model application).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kuboshima and Karner as applied to claim 10 above, in view of Spitzer et. al US 20030142422 (hereinafter “Spitzer”) of record.
Regarding claim 14, Kuboshima and Karner teach the rear view mirror arrangement according to claim 10, and Karner further teaches
the fastening section (324) comprises an adapter element (Karner fig. 10 – 326a), the adapter element (326a) having a first end that provides the connection of the fastening section (324) to the mirror arm (Karner fig. 10 – 324a connects 324 to support arm 322 which supports the mirror housing 318).
Kuboshima and Karner do not teach an adapter element having a second end which is configured for connection to a socket section on the motorcycle.
In a similar field of endeavor, Spitzer teaches an adapter element (Spitzer fig. 7 - 90) having a second end (Spitzer fig. 7 - 92) which is configured for connection to a socket section on the motorcycle (Spitzer fig. 4 – 92 fits into handlebar 22) for the purpose of connecting the upright post portion to the handlebar (Spitzer para. 0071). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an adapter element with a second end configured for connection to a socket section on the motorcycle in order to connect the upright post portion to the handlebar (Spitzer para. 0071).
Regarding claim 15, Kuboshima, Karner, and Spitzer teach the rear view mirror arrangement according to claim 14, and Spitzer further teaches
the adapter element (Spitzer fig. 7 - 90) has a cavity (Spitzer fig. 4 – 108, where there’s a cavity near reference number 92 through which 32 exits 108) which is open relative to the cavity (Spitzer fig. 4 - 110) of the mirror arm (Spitzer fig. 4 - 84), and has an opening in a wall of the adapter element (Spitzer fig. 7 - 114),
the cable harness (Spitzer fig. 4 - 32) extends from the mirror arm (84) through the cavity (108) as far as the opening of the adapter element (114, Spitzer fig. 4 – 32 extends throughout 108 until 114), and through the opening in the wall (114) onto an outer surface of the adapter element (referring to the below annotated Spitzer fig. 4, 32 extends from 114 onto an outer surface of the adapter element, see also para. 0072 – the wire extends through 108 and out 114 at a point above the handlebar).
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Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kuboshima and Karner as applied to claim 17 above, in view of Chu et. al US 20060232389 (hereinafter “Chu”) of record.
Regarding claim 18, Kuboshima and Karner teach the motorcycle as claimed in claim 17.
Kuboshima and Karner do not teach further comprising: the cable on the motorcycle, which cable is connected electrically conductively to the coupling element of the cable harness by way of a second coupling element.
In the same field of endeavor, Chu teaches further comprising:
the cable on the motorcycle (Chu figs. 1-2 - 77), which cable (77) is connected electrically conductively to the coupling element of the cable harness by way of a second coupling element (Chu fig. 2 – 90, see also para. 0041 – 77 connects from a set of video cameras and/or motors of image taking devices to 90 at the front of the vehicle) for the purpose of controlling and operating rear cameras and displaying them at the front of the vehicle (Chu para. 0041). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a cable connected to a second coupling element, which would reasonably work with the driving image monitoring unit of Kuboshima and Karner in order to control and operate rear cameras and display their images (Chu para. 0041).
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 ELIZABETH M HALL whose telephone number is (703)756-5795. The examiner can normally be reached Mon-Fri 9-5:30 pm PST.
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, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M HALL/Examiner, Art Unit 2872
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
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