DETAILED ACTION
The response filed on January 08, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Rejection of claim 1, the limitation “the hanking material including an unshrunk diameter and a shrunk diameter….. wherein a first ratio of the unshrunk diameter to the spacing is greater than 1.8 and a second ratio of the unshrunk diameter to one of the first and second distances is greater than 15” are failing to comply with the written description requirement.
Wire harness having tube on the wire in two unshrunk and shrunk states at the same time (for example , a tube on wire shown in figure 5 has unshrunk and shrunk states same time). However, specification is unclear about what is final as a product as it is. Therefore, it contains new matter. Also, ‘claim 1 mentions that “an unshrunk diameter in a shrunk state” which does not described in the specification.
Therefore, claim 1 contains new matter.
Rejections of claims 3, 7-9, 13-15, claims 3, 7-9, 13-15 are unclear because it is not clear in specification and claims that it is part of unshrunk and shrunk state.
Rejections of claims 2-15, claims 3, 7-9, 13 are dependent on claim 1, therefore, rejected by the same reason applied to claim 1 above.
Rejections of claims 20, claim 20 is also rejected by the same reason apply to rejection of claim 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Rejection of claim 1, the limitation “the hanking material including an unshrunk diameter and a shrunk diameter….. wherein a first ratio of the unshrunk diameter to the spacing is greater than 1.8 and a second ratio of the unshrunk diameter to one of the first and second distances is greater than 15” are failing to comply with the enablement requirement
It appears in claim 1 that wire harness is a product as it is not what it does; herein claim 1 mentions that wire harness in which protector (herein hanking material) already placed on the wire (see figure 5 of invention) so it is only one condition either shrunk state or unshrunk state, it can not be both states together (see figure 5 of invention should one state as shown). If protector (herein hanking material) shown in figure 5 as shrunk state then, there is no possibility of having back in unshrunk state, and If protector (herein hanking material) shown figure 5 in as unshrunk state, it will crush or damage the wires after shrunk state. However, claims fails to disclose what the product of wire harness is and what is condition of hanking material, not what it does. It appears that claim claiming both states as final product of wire harness which is impossible further carry enablement issue.
However, see figure 3A of specification wherein hanking material has an unshrunk diameter during unshrunk state, while see figure 3B of specification wherein hanking material has a shrunk diameter during shrunk state. They can not be together as single final product of wire harness as shown in figure 5. In figure 5, wherein it appears that shrunk hanking material covered on wires but specification failed to discloses what is final product. Not that MPEP clearly states, a product is what it, not what it does or any functionality such as shrunk and unshrunk state. Note that material properties depends on material, therefore, it also lacks also underlying structure necessary for having properties.
Also, claim also fails to disclose how wherein a first ratio of the unshrunk diameter to the spacing is greater than 1.8 and a second ratio of the unshrunk diameter to one of the first and second distances is greater than 15 carry over shrunk diameter of shrunk states of wire harness, does it going to have same spacing and gaping, same diameter and so on.
In short, it appears that claim has shrunk diameter and unshrunk diameter together as final product which is incorrect, the claim should be properly clarified based on only final product; note that product is what it is not how it’s made, and should clearly clarify different shrunk and unshrunk conditions, and structure based on each condition, and final product.
Another major issue with claim is that claim mentions that “an unshrunk diameter in a shrunk state” which does not enable how an unshrunk diameter in a shrunk state.
Therefore, the claim 1 has enablement issue.
Rejections of claims 3, 7-9, 13-15, claims 3, 7-9, 13-15 are unclear because it is not clear in specification and claims that it is part of unshrunk and shrunk state.
Rejections of claims 2-15, claims 3, 7-9, 13 are dependent on claim 1, therefore, rejected by the same reason applied to claim 1 above.
Rejections of claims 20, claim 20 is also rejected by the same reason apply to rejection of claim 1.
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 1-15 and 20 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, the limitation “the hanking material including an unshrunk diameter and a shrunk diameter….. wherein a first ratio of the unshrunk diameter to the spacing is greater than 1.8 and a second ratio of the unshrunk diameter to one of the first and second distances is greater than 15” contains indefinite for failing to particularly point out and distinctly claim the subject matter.
It appears in claim 1 that wire harness is a product as it is not what it does; herein claim 1 mentions that wire harness in which protector (herein hanking material) already placed on the wire (see figure 5 of invention) so it is only one condition. If protector (herein hanking material) shown in figure 5 as shrunk state then, there is no possibility of having back in unshrunk state, and If protector (herein hanking material) shown figure 5 in as unshrunk state, it will crush or damage the wires after shrunk state. However, claims fail to disclose clearly motions final product as wire harness wherein the protector (herein hanking material) is in what state. It appears that claim claiming both states as wire harness which is impossible, therefore, claims are indefinite and unclear.
Note that when claiming protector (hanking material) alone (such as claim 16, currently withdrawn), still there is error, it requires to mention that protector (hanking material) in unshrunk state and should mentions that hanking material configure to in shrunk state. Claims further lacks structural gap by not mentioning material which used for heat shrunk in order to have material properties which makes unshrunk state and shrunk state.
However, see figure 3A of specification wherein hanking material has an unshrunk diameter during unshrunk state, while see figure 3B of specification wherein hanking material has a shrunk diameter during shrunk state. They can not be together as single final product of wire harness. In figure 5, wherein it appears that shrunk hanking material covered on wires but specification failed to discloses what is final product. Not that MPEP clearly states, a product is what it, not what it does or any functionality such as shrunk and unshrunk state. Note that material properties depends on material, therefore, it lacks also underlying structure necessary for having properties.
Also, claim also fails to disclose how wherein a first ratio of the unshrunk diameter to the spacing is greater than 1.8 and a second ratio of the unshrunk diameter to one of the first and second distances is greater than 15 carry over shrunk diameter of shrunk states of wire harness, does it going to have same spacing and gaping, same diameter and so on.
In short, it appears that claim has shrunk diameter and unshrunk diameter together as final product which is incorrect, the claim should be properly clarified based on only final product; note that product is what it is not how it’s made, and should clearly clarify different shrunk and unshrunk conditions, and structure based on each condition, and final product.
Another major issue with claim is that claim mentions that “an unshrunk diameter in a shrunk state” which does not enable how an unshrunk diameter in a shrunk state.
Therefore, the claim 1 is unclear and indefinite.
Rejections of claims 3, 7-9, 13-15, claims 3, 7-9, 13 are unclear because it is not clear in specification and claims that it is part of unshrunk and shrunk state.
Rejections of claims 2-15, claims 3, 7-9, 13 are dependent on claim 1, therefore, rejected by the same reason applied to claim 1 above.
Rejections of claims 20, claim 20 is also rejected by the same reason apply to rejection of claim 1.
Therefore, Applicants arguments are not persuasive.
Pertinent Prior Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case, all of which disclose various wire harness heat shrink assemblies.
Response to Arguments
Applicant’s arguments with respect to the claim(s) are not considered but are moot based in new amendment and new rejection under USS 112 above.
Applicants arguments are that hanking material has material properties of being shrunk and unshrunk state. Note that MPEP clearly states that a product is what it, not what it does. Instead the invention as claimed has both state at same time without any clarification in the claim; additionally claims further states an unshrunk diameter in a shrunk state which contains new matter. it was held that claims must be distinguished from prior art in terms of structure rather than function. In Hewlett-Packard Co. v Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), the court held that: “Apparatus claims cover what a device is, not what it does” (emphases in original). Material properties or functionality of heat Shink (hanking) tube depend on material of the tube; but applicant failed to mention in the claim what material tube is made and what diameter of tube and wire. Also, note that when wire harness manufactured (herein invention is about wire harness not heat shrink tube alone) and send to user to use as it is, heat shrink tube has only one condition either shrunk or unshrunk state, and it can not be both states; however claim fails to mention that heat shrink tube in what condition when placed on wire as final product. Note that claim 1 is claiming wire harness not heat shrink tube. There is clear difference in final product of both which send to user. Also, specification is not able to clearly mention what is product of wire harness as it is, instead, specification just keep repeating shrunk and unshrunk states, never clarify what is final product of wire harness in disclosure of figure 5. Therefore. Specification and claims fail to disclose the subject matter which is not able to understand by ordinary skill in the art as well as expert in the field. See further MPEP for what is consider as product, method, and what is considered as material properties, functionality, process.
Furthermore, it is not clarified in dependent claims and in specification and claims that it is part of unshrunk and shrunk state in claims 3, 7-8,..etc.
Therefore, applicants arguments are not persuasive.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PARESH PAGHADAL whose telephone number is (571)272-5251. The examiner can normally be reached 7:00AM-4:00PM, Monday - Thursday.
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, Timothy Thompson can be reached on (571)272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PARESH PAGHADAL/Primary Examiner, Art Unit 2847