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 .
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.
Claims 1-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, the limitation of “A terminal fitting, comprising:
a connecting portion to be connected to a front end part of a flexible printed wiring plate; and
a fixing portion located rearward of the connecting portion in a rear end part, the fixing portion being fixed to the flexible printed wiring plate” is ambiguous.
The claim is ambiguous as to whether the “flexible printed wiring plate” (“FPWP” hereinafter) is 1) is part of the claimed invention, in particular being part of the claimed terminal fitting, or 2) whether the FPWP is not part of the claimed invention, the “terminal fitting,” and the claimed terminal fitting is to be connected to a FPWP which is not part of the claimed terminal fitting.
It is ambiguous whether the limitation of the fixing portion “being fixed to the flexible printed wiring plate” is a requirement that the terminal fitting be used in a particular manner. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC 112. Ex parte Lyell, 17 USPQ.2d 1548 (Bd. Patt. App. & Inter. 1990).
The purpose of 35 U.S.C. 112 is to require patentee to provide others with notice of boundaries of protection provided by patent. A manufacturer or seller, at time of making or selling a device like that set forth in the claims (in the case, a terminal fitting) would have no indication of whether it might later be sued for contributory infringement if the device was used in accordance with claimed process of use (i.e., the terminal fitting is being fixed to a FPWP). Therefore the claims are not sufficiently precise that possibility of infringement may be determined with reasonable degree of certainty. Ex parte Lyell, 17 USPQ.2d 1548 (Bd. Patt. App. & Inter. 1990); MPEP section 2173.05(P).
For purposes of analysis, the claims are interpreted as requiring a terminal fitting that is to be connected to a FPWP, i.e., the terminal fitting is capable of being used with a FPWP as described. Correction is required.
The same ambiguity applies to claim 2: the limitation of “a long portion in contact with the electrically conductive path and a short portion in contact with another surface of the base member, and the short portion bites into the other surface of the base member” is ambiguous. The terminal of claim 1 is to be connected to a FPWP, yet claim 2 is written to require the terminal be positively connected to a FPWP. Again, it is ambiguous whether or not the FPWP is part of the claimed terminal fitting. It is ambiguous whether the claim includes a requirement that the invention (the terminal fitting) requires the terminal to be used in a particular manner. Correction is required.
The same rejection applies to claim 3: the limitation that “the flexible printed wiring plate is connected . . . “ is ambiguous for the same reasons as set out above. Again, it is ambiguous whether or not the FPWP is part of the claimed terminal fitting. It is ambiguous whether the claim includes a requirement that the invention (the terminal fitting) requires the terminal to be used in a particular manner. The same rejection applies to claim 5: the limitation of the base plate in contact with one surface of the flexible printed wiring plate; and a crimping portion extending from the base plate portion, the crimping portion surrounding the flexible printed wiring plate, the base plate portion has a double plate structure is ambiguous for the same reasons as set out above. It is ambiguous whether the claim includes a requirement that the invention (the terminal fitting) requires the terminal to be used in a particular manner.
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 anticipatory rejections under 35 U.S.C. 102 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al. US 9614296 (“Endo”). Regarding claim 1, Endo discloses a terminal fitting, comprising:
a connecting portion (labeled CP in annotated figure 9 below) to be connected (i.e., capable of being connected) to a front end part of a flexible printed wiring plate (“FPWP”, in particular a FPWP having the shape and size of conductor plate 50)
a fixing portion (labeled FP below) located rearward of the connecting portion in a rear end part,
the fixing portion is capable of being fixed to the flexible printed wiring plate.
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1004
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Per claim 2, the terminal fitting is capable of being connected to a FPWP (that is not part of the claimed invention), wherein
the flexible printed wiring plate is configured such that an electrically conductive path extends on one surface of a base member made of resin,
the fixing portion includes a long portion (labeled LP below) capable of being in contact with the electrically conductive path and a short portion (labeled SP below, a crimp wing 24) capable of being in contact with another surface of the base member, and
the short portion capable of being used such that it bites into the other surface of the base member.
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462
658
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Per claim 5, the fixing portion is made of a metal plate material and includes:
a base plate (labeled LP above) portion capable of being in contact with one surface of the flexible printed wiring plate; and a crimping portion (labeled SP above) extending from the base plate portion, the crimping portion capable of surrounding the flexible printed wiring plate, the base plate portion has a double plate structure (in particular the base plate has a first plate portion labeled PL1 and a second plate portion labeled PL2 below).
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874
816
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Allowable Subject Matter
Claims 3 and 4 might be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, depending on how the rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS GUSHI whose telephone number is (571)272-2005. The examiner can normally be reached on Monday-Thursday, 8:30 - 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koehler can be reached on 571-272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROSS N GUSHI/Primary Examiner, Art Unit 2834