DETAILED ACTION
The present application response filed on August 11, 2025, is being examined.
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 1-7 and 12-15 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.
Rejection of claim 1 and 4, the limitation “a suppression part that is configured to suppress inclination of the protector main body with the pair of fixing parts serving as a base point” is failing to particularly point out and distinctly claim the subject matter.
Note that in figure 8, in order to a suppression part to suppress inclination of the protector main body, it requires that a part of protector main body beyond or away from the first article 10 and abut against side surface of the first article 10 by fixing parts to upper surface of the first article 10, and an intermediate U-shaped bent part that is positioned between the two hollow arm parts and hangs down from the two hollow arm parts beyond the first article. Claim fails to disclose underlying necessary structure without that a suppression part that is not configured to suppress inclination of the protector main body.
Note that a suppression part places on an upper surface of article 10 wherein fixing part fixed would further increase inclination of the protector main body; therefore, correct position and related structure of a suppression part is required in the claim
Therefore, proper clarification is required.
Rejection of claims 2-3, 4-7, and 12-15 are rejected by the same reason applied to rejection of claim 1 or 4 (note that dependent claims has configured to language which requires essential underlying structure as mentioned in the specification in order to carry out intended use or have capacities based on configured to language, and without essential underlying structure. Therefore, no arguments referring to “configure to” language would not consider until essential underlying structure mentioned in specification is not part of the claims.
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-AlA) 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.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 6-7, and 13 are rejected under 35 U.S.C. 103 as being unpateable over JPS63-103078 ((cited reference), hereinafter referred to as JPS63) and further in view of Shibuya et al. (JP2019205222 (cited reference), hereinafter referred to as Shibuya) or Cole et al. (US6567602 hereinafter referred to as Cole)
Rejection of claim 1, JPS63 (figures 5-8) discloses a protector comprising: a hollow protector main body through which an electric wire of a wire harness is passed "Electric wires 14", (a "fixing tool l", a "holding part 15" with “cover 17”, a "attachment body 14", a "locking leg part 3", and an "elastic abutting piece 16" described in page 5, line 15 to page 6, line 17, fig. 5-8, etc. respectively correspond to the, the "protector", the "protector body", "electric wire", “a fixing part” and “a suppression part” ), the protector main body being at least partially disposed in a space between a first article and a second article that face each other a fixing part that is configured to fix the protector main body to the first article (a "holding part 15" with “cover 17”, wherein "locking leg part 3" fixes the protector main body to the first article ); and a suppression part that is configured to suppress inclination of the protector main body with the fixing part serving as a base point (by having claimed structure of "elastic abutting piece 16" on "holding part 15", is intended to use or have capacities to suppress inclination of the protector main body with the fixing part serving as a base point).
JPS63 (figures 5-8) fail to disclose a pair of fixing parts.
Cole (figures 5-8) or Shibuya (figures 1-2 or 6-7) discloses a pair of fixing parts.
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the protector of JPS63 to have a pair of fixing parts as taught by Cole or Shibuya in order to fix the protector to multi-location or positions of the target in order restrict movement of the different parts of protector which prevent damages in case of movement.
Rejection of claim 2, JPS63 (figures 5-8) and (Cole or Shibuya) disclose the protector according to claim 1 wherein the protector main body has a shape that traverses the columnar first article (see figures 5-8 of JPS63).
Rejection of claim 3, JPS63 (figures 5-8) and (Cole or Shibuya) disclose the protector according to claim 1 wherein a plurality of the suppression parts are provided.
Rejection of claim 6, JPS63 (figures 5-8) and (Cole or Shibuya) disclose the protector according to claim 1, wherein the suppression part has a leading end and a base end, the base end of the suppression part is configured to warp with the leading end of the suppression part serving as a fulcrum, and the suppression part suppresses inclination of the protector main body by using a reaction force of the warping of the base end of the suppression part with the leading end of the suppression part serving as a fulcrum (see "elastic abutting piece 16" in figures 5-8).
Rejection of claim 7, JPS63 (figures 5-8) and (Cole or Shibuya) disclose the protector according to claim 1, wherein the suppression part is a spring part that generates a bending reaction force in accordance with inclination of the protector main body and uses the bending reaction force to suppress inclination of the protector main body (see "elastic abutting piece 16" in figures 5-8).
Rejection of claim 13, JPS63 (figures 5-8) and (Cole or Shibuya) disclose the protector according to claim 1, a pair of arm parts each of which is connected to an end of the protector main body, respectively, wherein the pair fixing parts are provided respectively on the pair of arm parts (see JPS63 in view of Cole or Shibuya wherein the pair fixing parts are provided both ends of protectors)
Allowable Subject Matter
Claims 8-10 are allowable; but can not be allowed until rejected claims 14-15 are properly clarified or removed. Claims 4-6 are only allowable, if it would overcome rejection under U.S.C. 112 Above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot because the new ground of rejection under USC 112 and/or USC 103 does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
Communication
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/PARESH PAGHADAL/ Primary Examiner, Art Unit 2847