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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/24/2026 has been entered.
Response to Arguments
Applicant’s arguments have been fully considered and are persuasive to the extent that the prior art combinations relied upon in the previous Office action do not disclose or suggest the newly added limitation requiring the cover member to include a plurality of inclined surfaces having different inclinations and requiring the coating surface to be disposed on the inclined surface closest to the subject side among the plurality. Accordingly, the previous rejection of claim 1 withdrawn. However, claim 1 is newly rejected for the reasons set forth below.
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, 14 and 17 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.
Claims 1, 14 and 17 has been amended to recite “wherein the cover member includes a plurality of inclined surfaces having different inclinations, and a coating surface for preventing flare is disposed on an inclined surface closest to the subject side among the plurality of inclined surfaces.” The application as originally filed describes cover member 5 as including contact portion 5a and fixing portion 5b and describes coating surface 5c as being provided on an outer surface of cover member 5 for preventing flare. See, Fig. 3 and para 0053. Original claim 10 similarly recited a coating surface for preventing flare on an outer surface of the contact portion. However, the original disclosure does not describe the cover member as including a plurality of distinct inclined surfaces having different inclinations. The original disclosure also does not identify one of such inclined surfaces as being closest to the subject side or describe coating surface 5c as being selectively disposed on that particular inclined surface. Although Fig. 3 depicts coating surface 5c on an inclined region of cover member 5, Figure 3 does not clearly identify multiple distinct inclined surfaces of the cover member, does not identify their respective inclinations as different, and does not establish the claimed positional selection among such surfaces. Moreover, the specification states that the drawings may not be to scale and that relative sizes and proportions may be exaggerated. Accordingly, the application as originally filed does not reasonably convey to one of ordinary skill in the art that the inventors possessed the presently claimed combination of a plurality of differently inclined cover-member surfaces and selective placement of the coating surface on the inclined surface closest to the subject side.
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, 14 and 17 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.
The phrase “a plurality of inclined surfaces having different inclinations” does not identify the reference axis or plane relative to which the inclinations are determined and does not clarify whether “different inclinations” refers to different angular magnitudes, different directions, or differently oriented portions of a single continuous surface. Similarly, the phrase “an inclined surface closest to the subject side among the plurality of inclined surfaces” also fails to provide an objective basis for determining which inclined surface is closest to the subject side. For example, the claim does not specify whether the comparison is based on a nearest point, an edge, a center, or the axial position of the entire surface. Because the specification does not define these relationships or otherwise provide objective boundaries one of ordinary skill in the art would not be reasonably appraised of the scope of the claim. Dependent claims do not further define the reference for determining the respective inclinations or the manner in which the inclined surface closest to the subject side is identified. Accordingly, claims 2-9, 11-13, 15-16, and 18-19 are indefinite for the same reason.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the cover member including a plurality of inclined surfaces having different inclinations, and an inclined surface closest to the subject side among the plurality of inclined surface on which the coating surface for preventing flare is disposed” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
EXAMINER’S NOTE
No art rejection of claims 1, 14 and 17 under 35 U.S.C. 102 and/or 103 is made at this time. As explained in the rejection under 35 U.S.C. 112(b), the phrases “a plurality of inclined surfaces having different inclinations” and “an inclined surface closest to the subject side among the plurality of inclined surfaces” do not provide sufficiently definite boundaries for determining the respective inclined surfaces, their inclination relationships, or which surface is closest to the subject side. Due to the substantial uncertainty regarding the proper interpretation of these limitations, application of the prior art would require speculation concerning the scope of claims 1, 14 and 17. See MPEP 2173.06 and In re Steele, 305 F.2d, 859, 134 USPQ 292 (CCPA 1962) “a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”. Examination of claims 1, 14 and 17 under 35 U.S.C 102 and 103 will be considered upon clarification or amendment of the claim language. As mentioned above, the prior rejections of claim 1 under 35 U.S.C. 103 are withdrawn because they do not address the limitations added by the amendment filed with the RCE. This withdrawn is not an indication that claims 1, 14 and 17 are otherwise allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EPHREM ZERU MEBRAHTU whose telephone number is (571)272-8386. The examiner can normally be reached 10 am -6 pm (M-F).
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/EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872
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