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 .
Status of the Claims
Claims 1-19 are currently pending. Claims 1-19 are currently amended. The claim and drawing objections are withdrawn. The 35 U.S.C. 112(b) rejections of claims 2-16, 6, 14, and 18 are withdrawn. Claims 1-19 are rejected under new grounds as necessitated by Applicant’s amendments. A response to Applicant’s remarks filed 19 March 2026 can be found at the end of this Office Action. This Office Action is Final.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-6, 8-11, 13-14, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (JP 2014093132 A) in view of Dobrinski (US 6303861 B1), Kulig (US 7670153 B2) and Robicheau (US 20190058265 A1).
In regards to claim 1, Kawashima teaches a mounting assembly comprising:
a mounting body (11) (Fig. 1) having a first slot (see annotated Fig. 4a below) and a second slot (see annotated Fig. 4a below);
a conductor (22)
a see machine translation, para. [0031]) around
While Kawashima teaches a structure (1, 3) (Fig. 1) being in the second slot (as seen in Fig. 3). Kawashima does not explicitly teach that structure being a rail.
Dobrinski teaches a rail (101) being in the second slot (as seen in Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a rail being in the second slot with a reasonable expectation of success for the purpose of powering a rail, since it has been held to be within the general skill of a worker in the art to substitute functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) and Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980). See MPEP § 2144.06(II).
Kawashima does not teach a terminal pad, and a conductor being connected to the terminal bad so that an electrical connection is formed.
Kulig teaches a terminal pad (22, 24) (Fig. 1), and a conductor (12) being connected to the terminal pad (as seen in Fig. 1) so that an electrical connection is formed (col. 2, lines 26-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mounting assembly of Kawashima to include a terminal pad as taught by Kulig with a reasonable expectation of success for the purpose of decreasing the cost of assembly (see Kulig, col. 3, lines 30-35).
Kawashima does not teach the conductor having a size up to 1000 KCMIL.
Robicheau teaches a conductor having a size up to 1000 KCMIL (para. [0038], lines 17-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conductor of Kawashima to include being sized up to 1000 KCMIL as taught by Robicheau with a reasonable expectation of success for the purpose of enabling the system to operate with a variety of conductor sizes (see Robicheau, para. [0002]).
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In regards to claim 2, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 1, wherein the mounting body (11) (Kawashima, Fig. 1) forms an S-shape (Kawashima, as seen in Fig. 4a).
In regards to claim 3, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 2, wherein the mounting body forms a top member connected to a first side member on a first side and the top member having a free end opposite the first side member (Kawashima, see annotated Fig. 4a above), wherein the first side member is connected to a middle member on a side opposite the top member and the middle member is connected to a second side member on a side opposite the first side member (Kawashima, see annotated Fig. 4a above), wherein the second side member is connected to a bottom member on a side that is opposite the middle member (Kawashima, see annotated Fig. 4a above), and wherein the bottom member has a free end on a side opposite the second side member (Kawashima, see annotated Fig. 4a above).
In regards to claim 4, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the first slot is formed in the top member, the first side member, the middle member and the second side member (Kawashima, see annotated Fig. 4a above).
In regards to claim 5, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the second slot is formed in the first side member, the middle member, the second side member and the bottom member (Kawashima, see annotated Fig. 4a above).
In regards to claim 6, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the top member (Kawashima, see annotated Fig. 4a above) has a capture feature (12) (Kawashima, Fig. 4a) that extends from the free end (Kawashima, as seen in Fig. 4a)
While Kawashima does not teach a capture feature extending from the free end of the top member into the first slot, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a capture feature extending from the free end of the top member into the first slot similar to the capture feature extending from the free end of the bottom member into the second slot with a reasonable expectation of success for the purpose of increasing the security of the terminal pad inserted into the first slot (see Kawashima, para. [0026], lines 1-2), since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C). Furthermore, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP § 2144.04(VI)(B).
In regards to claim 8, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the middle member (Kawashima, see annotated Fig. 4a above) has a thickness that
While Kawashima does not explicitly teach the thickness of the middle member increasing from the first side member to the second side member, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include increasing the thickness of the middle member from the first side member to the second side member to increase the resilience of the mounting body, since such a modification of the dimensions involves only routine skill in the art. A change in dimensions that does not significantly affect performance is generally recognized as being within the level of ordinary skill in the art. In Gardner v.TEC Syst., 469 U.S. 830, 220 USPQ 777 (Fed. Cir. 1984). See MPEP § 2144.04(IV)(A).
In regards to claim 9, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 6, wherein the top member (Kawashima, see annotated Fig. 4a above) forms a space between the capture feature (12) (Kawashima, Fig. 4a) and the second side member (Kawashima, see annotated Fig. 4a above) that
While Kawashima does not explicitly teach the space formed between the capture feature as discussed in claim 6, and the top member is smaller than the terminal pad, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the space between the top member and the capture feature is smaller than the terminal pad with a reasonable expectation of success for the purpose of ensuring the terminal pad cannot escape the first slot, since such a modification of the dimensions involves only routine skill in the art. A change in dimensions that does not significantly affect performance is generally recognized as being within the level of ordinary skill in the art. In Gardner v.TEC Syst., 469 U.S. 830, 220 USPQ 777 (Fed. Cir. 1984). See MPEP § 2144.04(IV)(A).
In regards to claim 10, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the top member (Kawashima, see annotated Fig. 4a above) is flat (as seen in Fig. 4a) on a surface opposite the first slot (Kawashima, see annotated Fig. 4a above).
In regards to claim 11, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the top member (Kawashima, see annotated Fig. 4a above)
While Kawashima does not explicitly teach the top member being curved on a surface opposite the first slot, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a curved surface with a reasonable expectation of success for the purpose of increasing the ergonomics of the mounting body, since it has been held the modifying the configuration or shape of a device involves only routine skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP § 2144.04(IV)(B).
In regards to claim 13, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the top member (Kawashima, see annotated Fig. 4a above)
Kawashima does not teach at least one opening that receives a pin.
Kulig teaches a top member 26 (Fig. 1) with at least one opening that receives a pin (32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the top member of Kawashima to include an opening that receives a pin as taught by Kulig with a reasonable expectation of success for the purpose of increasing the secureness of the mounting body (see Kulig, col. 3, lines 1-4).
In regards to claim 14, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 1, wherein the mounting body (11) (Kawashima, Fig. 4a) has an E-shape.
Kawashima does not teach the mounting member having an E-shape.
Dobrinski teaches the mounting member (100) having an E-shape (as seen in Fig. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the mounting member of Kawashima having an E-shape as taught by Dobrinski with a reasonable expectation of success for the purpose of increasing the ease of assembly, since it has been held the modifying the configuration or shape of a device involves only routine skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP § 2144.04(IV)(B).
In regards to claim 17, note that the operation of the prior structure of apparatus claim 1, taught by the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above, inherently requires the method steps as claimed.
In regards to claim 18, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the method of claim 17, further comprising
Kawashima does not teach contacting the mounting body with a first and second die prior to the deforming of the mounting body.
Dobrinski teaches contacting the mounting body (100) (Fig. 4a) with a first die (col. 2, lines 20-28) and contacting the mounting (100) with a second die (col. 2, lines 20-28) prior to the deforming (col. 1, lines 60-66) of the mounting body (100).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the mounting body of Kawashima contacting a first and second die as taught by Dobrinski with a reasonable expectation of success for the purpose of increasing the attachment of the mounting body to the terminal pad and rail (see Dobrinski, col. 2, lines 27-28).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (JP 2014093132 A) in view of Dobrinski (US 6303861 B1), Kulig (US 7670153 B2), Robicheau (US 20190058265 A1), and Mallanik (US 3053930 A).
In regards to claim 7, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein
Kawashima does not teach wherein the top member has a release port formed in the first slot, and wherein the top member has a thickness that is reduced at the release port.
Mallanik teaches a release port (217a, 217b) formed in the first slot (213), and wherein the thickness is reduced (as seen in Fig. 2, the thickness of portion 209 is clearly reduced by the release port) at the release port (217a, 217b).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the top member of Kawashima to include release ports as taught by Mallanik with a reasonable expectation of success for the purpose of increasing the flexibility of the mounting body (see Mallanik, col. 2, lines 43-46).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (JP 2014093132 A) in view of Dobrinski (US 6303861 B1), Kulig (US 7670153 B2), Robicheau (US 20190058265 A1), and Mello (US 6186799 B1).
In regards to claim 12, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 3, wherein the mounting body (11) (Kawashima, Fig. 4a)
Kawashima does not teach teeth formed inside the second slot on the middle member and the bottom member.
Mello teaches teeth (140) (Fig. 9a) formed inside the second slot (28) (Fig. 12) on the middle member (24) and the bottom member (22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the middle and bottom members of Kawashima to include teeth as taught by Mello with a reasonable expectation of success for the purpose of increasing the grip the mounting body has on the rail (see Mello, col. 1, lines 26-29).
Claim(s) 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima (JP 2014093132 A) in view of Dobrinski (US 6303861 B1), Kulig (US 7670153 B2), Robicheau (US 20190058265 A1), and Schrader (US 5103068 A).
In regards to claim 15, the combination of Kawashima as modified by Dobrinski, Kulig, and Robicheau above teaches the mounting assembly of claim 1,
Kawashima does not teach wherein the mounting body has a first side member and a second side member on opposite sides of a middle member with a first top member extending from the first side member and a second top member extending from the second side member forming the first slot.
Schrader teaches wherein the mounting body has a first side member and a second side member on opposite sides of a middle member with a first top member extending from the first side member and a second top member extending from the second side member forming the first slot (10) (see annotated Fig. 1 below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mounting body of Kawashima to include a first and second side member on opposite sides of a middle member with first and second top members forming a first slot as taught by Schrader with a reasonable expectation of success for the purpose of increasing the ease of assembly since it has been held to be within the general skill of a worker in the art to substitute functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) and Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980). See MPEP § 2144.06(II).
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In regards to claim 16, the combination of Kawashima as modified by Dobrinski, Kulig, Robicheau, and Schrader above teaches the mounting assembly of claim 15, wherein the first top member and the second top member are curved (Schrader, as seen in annotated Fig. 1 above).
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Dobrinski (US 6303861 B1) in view of Kulig (US 7670153 B2) and Robicheau (US 20190058265 A1).
In regards to claim 19, Dobrinski teaches a die set comprising:
a first die for connecting to a crimping tool (col. 2, lines 20-28), the first die configured to contact a first side of a mounting body (100) (Fig. 4a); and
a second die for connecting to the crimping tool (col. 2, lines 20-28), the second die configured to contact a second side of a mounting body (100) (Fig. 4a) so that the first die and the second die apply forces in opposite directions to compress (col. 2, lines 20-28) and deform (col. 1, lines 60-66) the mounting body (100) (Fig. 4a) around a
Dobrinski does not teach a terminal pad, and a conductor being connected to the terminal bad so that an electrical connection is formed.
Kulig teaches a terminal pad (22, 24) (Fig. 1), and a conductor (12) being connected to the terminal pad (as seen in Fig. 1) so that an electrical connection is formed (col. 2, lines 26-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mounting assembly of Dobrinski to include a terminal pad as taught by Kulig with a reasonable expectation of success for the purpose of decreasing the cost of assembly (see Kulig, col. 3, lines 30-35).
Dobrinski does not teach the conductor having a size up to 1000 KCMIL.
Robicheau teaches a conductor having a size up to 1000 KCMIL (para. [0038], lines 17-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conductor of Dobrinski to include being sized up to 1000 KCMIL as taught by Robicheau with a reasonable expectation of success for the purpose of enabling the system to operate with a variety of conductor sizes (see Robicheau, para. [0002]).
Response to Arguments
Applicant’s remarks filed 19 March 2026 with respect to the prior art relied upon in the Office Action dated 19 December 2025 failing to teach a conductor having a size of up to 1000 KCMIL (or up to about 1 1/4 inch) diameter. Applicant argues that this feature is critical and that current irreversible conductor to rail/flange/bar designs are not able to scale in a way that could accommodate a conductor of up to 1000 KCMIL.
Examiner responds in agreement that the prior art previously relied upon did not teach a conductor having a size of up to 1000 KCMIL However, the Examiner refers to the above rejections of this Final Office Action. Robicheau is utilized to teach a conductor having a size up to 1000 KCMIL.
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 JAMES WILLIAM JONES whose telephone number is (571)270-7063. The examiner can normally be reached M-F: 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel Morano can be reached at (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WILLIAM JONES/ Examiner, Art Unit 3615
/S. Joseph Morano/ Supervisory Patent Examiner, Art Unit 3615
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