DETAILED ACTION
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.
Claim 27 is 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.
The claim recites “where said marker latching profiles are configured to bend such that they are obliquely oriented with walls of the marker latching receptacles when engaged therewith” which is indefinite since the “walls” of the marker latching receptacles are undefined. Because the nature or orientation of the walls of the marker latching receptacles are undefined, the “obliquely orientated” condition of the marker latching profile is also undefined.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8, 10, 13, 26, and 27, are rejected under 35 U.S.C. 103 as being unpatentable over Speith et al. (US 2017/0282431) in view Mouser Electronics (NPL, 2021).
In respect to claim 1-3, Speith et al. disclose a marker strip comprising: a strip-shaped labeling strip 2 formed of a plastic material including a labelling side B (0035) and an opposite side including a plurality of latching profiles 5a/5b (Fig. 1b) which are configured to latch to marking latching receptacles on serially arranged electronic devices (Abstract). Speith et al. disclose “the distance separating the holes from one another also corresponds to the grid dimension or the width of the devices arranged next to each other” and that “the width of the slot 9 [separating the latching profiles] corresponds preferably to the width X1 of the elongate holes”, which readily infers that the latching profiles are the width of the width of the individual serially arranged electronic devices (Fig. 1a).
Speith et al. does not disclose any particular dimensions of the marker strip, however, Mouser Electronics discloses similar serially arranged electronic devices, including devices with a pitch of 1.80 mm. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide a pitch of 1.80 mm (resulting in a slightly smaller latching profile width) to fit each electronic device as intended by Speith (wherein the width of the latching profile matches the width of individual serially arranged electronic devices). It is noted that the pitch equals the width of the latching profile plus the hole width which is X1 (equal to the spacing between individual serially arranged electronic devices), thus depending on the spacing, the width of the latching profiles to accommodate a pitch of 1.80 mm will be slightly smaller (~1.50 mm). Any small deviation from 1.5 mm is not an obvious distinction since where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In respect to claims 4-6, Speith et al. disclose that each latching profile includes two latching webs 5a/5b, which are parallel spaced in relation to one another in a plane oriented perpendicular to the main direction, with each of the latching webs further offset to the left and right from an adjacent latching profile (Fig. 5).
In respect to claim 7, the claim is additionally unclear for the reasons stated above, however, Speith et al. disclose that the latching web(s) are attached to a plate-like base region 3 taper in a direction away therefrom (Fig. 1b).
In respect to claim 8, Speith et al. disclose that the plate-like base regions of adjacent marker latching profiles are separated by a slot 8 (Fig. 1a).
In respect to claim 10, Speith et al. disclose a web of marking strips wherein it is configured to be cut to various lengths and explicitly discloses cutting them to desired lengths (0005).
In respect to claim 13, Speith et al. disclose that the marker strip is provided as at least one plastic material (see above). Although optional, Spieth et al. further disclose a two-plastic composition with the second plastic softer than the first (0006; Fig. 1b).
In respect to claim 26, Speith et al. disclose the structure as claimed. The structure is functionally capable of latching to a single, larger marking latching receptacle.
In respect to claim 27, the claim is unclear for the reasons stated above, however, the latching profiles are configured to bend “snap-fit” on to marker latching receptacles (electronic devices) (0010) and depending on the undefined “walls” of the receptacle, may be obliquely oriented therewith (Fig. 1b).
Response to Arguments
Applicant's arguments filed 08/14/26 have been fully considered but they are not persuasive.
The applicant argues that Speith et al. is different from the prior art since “the size of the marker latching profiles [as claimed] makes them universal marker latching profiles, as opposed to the receptacle specific marker latching profiles of Speith” which is not persuasive.
In response to applicant's argument that the intent to use a particular dimension (less than 2mm) differentiates from the prior art, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The argument that “there would be no reason or motivation from Speith and Mouser to lead to a marker profile with a grid dimension of 2mm [such that the marker latching profiles are adapted for latching with receptacles of differing widths]” is not persuasive since Speith et al. explicitly discloses that the width of the latching profiles correspond to the width of the electronic devices. And as noted above, the intention is irrelevant, so long as the structure is capable of performing the stated intended use. In the instant case, the applicant has not provided any argument as to why the latching profiles taught by Speith and Mouser are not capable of performing the intended action.
The original 35 USC 112 rejection has been obviated by amendment. Newly submitted claim 27 is newly rejected under 35 USC 112.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
