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(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.
Claims 1-13 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.
Regarding claim 1, a power connector as claimed including that “the plug connector and the panel mount connector are configured such that when the plug connector is fully mated with the panel mount connector i) the minimum lateral force needed to laterally disengage the plug connector from the panel mount connector is X pounds (lbs)” 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.
The disclosure includes is no written description of mating connectors capable of being “laterally disengaged.” “Lateral” defined as noted below, Google definition, citing Oxford definition.
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Therefore “lateral disengagement” means unmating by moving the connector in the side direction or toward the side, as opposed by unmating by moving the connector along the “axial direction” which applicant recites as “axially unmate” in claim 1.
Applicant’s figure 9 is annotated below for explanation purposes. The “lateral” direction is labeled “LAT.” The “axial” direction is labeled “AXIAL.” Clearly, it is impossible to disengage applicant’s connector laterally because the movement of the connector laterally is blocked by the inner walls (labeled IW below) of the panel mount connector.
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Applicant’s disclosure describes a connector which can be rotated to a limited extent during unmating, as the connectors are moved apart axially. This rotational and axial motion during unmating cannot reasonably be described as being “lateral” unmating. To “laterally disengage” cannot reasonably be interpreted to mean a combination of axial movement and limited relative rotational movement.
For purposes of analysis, a connector that is disengaged by rotational movement about a pivot, rather than lateral disengagement, is assumed.
Claims 1-13 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.
Regarding claim 1, a power connector as claimed including that “the plug connector and the panel mount connector are configured such that when the plug connector is fully mated with the panel mount connector i) the minimum lateral force needed to laterally disengage the plug connector from the panel mount connector is X pounds (lbs)” 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.
(A) The breadth of the claims; The claim is not broad in the sense that “lateral” disengagement is specific. What would be understood to be “lateral” disengagement is not so broad as to include “rotational” disengagement.
(B) The nature of the invention; The nature of the invention is well known.
(C) The state of the prior art; The prior art does not disclose the claimed invention. The prior art discloses the claimed invention under the premise that “lateral” disengagement is equivalent to “rotational” disengagement. Note that the pertinent issue is whether “lateral” disengagement is the same as “rotational” disengagement. The examiner’s position is that “lateral” disengagement does not encompass “rotational” disengagement.
(D) The level of one of ordinary skill; One with ordinary skill could not make the claimed invention. One with ordinary skill could make the invention under the premise that “lateral” disengagement is equivalent to “rotational” disengagement. Note that the pertinent issue is whether “lateral” disengagement is the same as “rotational” disengagement. The examiner’s position is that “lateral” disengagement does not encompass “rotational” disengagement.
(E) The level of predictability in the art. The art is highly predictable.
(F) The amount of direction provided by the inventor. The inventor provides direction as to how to make connectors disengaged by relative rotation between the mated connectors about a pivot. The inventor does not provide direction as to how to make connectors disengaged “laterally.”
(G) The existence of working examples; no working example of the claimed invention is given.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Given that the claim requires female and male connectors, it is unlikely that experimentation would result in the claimed invention. Experimentation would result in connectors disengaged by rotational movement, just as disclosed by applicant.
MPEP section 2164.01(a); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
"The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation." Telectronics, 857 F.2d at 785 (citing Hybritech Inc. V. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.Cir.1986)). As the Supreme Court recently explained, "the specification must enable the full scope of the invention as defined by its claims." Amgen Inc. V. Sanofi, 598 U.S. 594, 610 (2023) (emphasis added). That is, "[t]he more one claims, the more one must enable." Id.; see In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) ("[T]he specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation." (emphasis added)); Ex parte Rodriguez, 92 USPQ2d 1395, 1406-11 (BPAI 2009) (precedential) (discussing functional claiming and scope of enablement); MPEP §§ 2164.08 (citing Wright, 999 F.2d 1557), 2181(I)(C) (citing Rodriguez, 92 USPQ2d 1395). Therefore, it is insufficient to enable only some scope of the claimed invention; rather, the entire scope must be enabled. See Genentech, Inc. V. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) ("[T]o be enabling, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.") (internal quotations omitted).
As disclosed, the connectors can be unmated only by a rotational movement caused by a force applied at specific locations on the plug (see discussion below for detailed analysis). The connectors cannot be unmated by a lateral force applied at some locations on the plug. Claim 1 does not limit the location of the disengagement force to a particular location on the plug. Therefore the specification does not enable the full scope of the invention as defined by its claims." Amgen Inc. V. Sanofi, 598 U.S. 594, 610 (2023) (emphasis added).
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 1-13 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.
The limitation of “a plug connector configured to mate with the panel mount connector, wherein the plug connector and the panel mount connector are configured such that when the plug connector is fully mated with the panel mount connector i) the minimum lateral force needed to laterally disengage the plug connector from the panel mount connector is X pounds (lbs) and ii) the minimum axial force needed to axially disengage the plug connector from the panel mount connector is Y pounds (lbs), X<Y” is indefinite.
Firstly as noted above, there is no disclosure of any mating connectors that are capable of being laterally disengaged. What applicant claims as “laterally disengagement” is an axial unmating that permits a limited amount of relative rotation of the connectors during unmating. What connectors would or would not be considered to be “laterally disengaged” under this unreasonable apparent meaning is unknown.
Secondly given the connectors as disclosed (which are not laterally unmateable), the claim’s requirement of comparison of forces is indefinite because the equation is only met when the unmating force is applied at specific locations on the plug connector and inherently cannot be met when the unmating force is applied at other locations. (“[T]he specification must enable the full scope of the invention as defined by its claims." Amgen Inc. V. Sanofi, 598 U.S. 594, 610 (2023) (emphasis added).)
As noted in annotated figures 1 and 9, below, an unmating axial force could be applied anywhere along the plug connector 602 (see e.g. force vectors labeled FA1-FA3). Likewise, unmating lateral forces could be applied anywhere on the plug connector (see e.g. force vectors labeled FL1-FL3). Clearly and inherently, a lateral force at arrow FL3 of any magnitude would not result in the unmating of the connectors. Likewise a lateral force at arrow FL2 of any magnitude, applied at the “pivot point” 901, would not result in the unmating of the connectors. Note that the specification must enable the full scope of the invention as defined by its claims." Amgen Inc. V. Sanofi, 598 U.S. 594, 610 (2023) (emphasis added).
A lateral force of any magnitude at arrow FL1 would be unlikely to unmate the connectors. Even assuming that the connectors did unmate (note the unmating would not be a “lateral unmating”), the required lateral force at FL1 would inherently be more than the axial force required to unmate the connector if the axial distance from the point of application of FL1 to the pivot point is less than the distance from the effective location of the retaining/magnetic force to the pivot point.
In other words, as labeled in annotated figure 9 below, when distance LA2 (the distance from the pivot PIV1 to the point of application of the lateral unmating force) is less than distance LA1 (the distance from the pivot PIV1 to the effective location of the magnetic force), the lateral force to unmate (labeled FLUM) cannot be less than the attractive force of the magnet FM. Also note that the required axial force to unmate (labeled FAUM) applied at the same position is inherently less than the magnetic force FM because a second class lever would be formed with the pivot PIV2.
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Therefore, applicant’s comparative requirement that X<Y is indefinite because as disclosed, the equation is only true when particular locations for the forces on the connector are selected and the equation is untrue when other locations are selected. The scope of the claim is indefinite because whether the equation is met or not depends on an arbitrary and undisclosed selection of locations of force on the connector. The specification must enable the full scope of the invention as defined by its claims." Amgen Inc. V. Sanofi, 598 U.S. 594, 610 (2023) (emphasis added).
For purposes of analysis, “lateral” disengagement assumed to mean “rotational” disengagement.
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 rejections under this section 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lau et al. US 2002/0160629 (“Lau”). Regarding claim 1, Lau discloses a magnetic breakaway power connector, comprising:
a panel mount connector 98; and
a plug connector 6 configured to mate with the panel mount connector, wherein
the plug connector and the panel mount connector are configured such that when the plug connector is fully mated with the panel mount connector i) the minimum lateral force F2 needed to rotationally-disengage the plug connector from the panel mount connector is X pounds (lbs)
and ii) the minimum axial force F1 needed to axially- disengage the plug connector from the panel mount connector is Y pounds (lbs),
X<Y, (table 2)
the panel mount connector comprises a magnet (¶ 0030), and
the plug connector comprises a ferromagnetic face plate 12 configured to engage with the magnet,
the plug connector has a first female power contact 88,
the panel mount connector has a first male power contact (34, 36, 38) configured to mate with the first female power contact.
Response to Arguments
Applicant’s arguments have been considered. Applicant argues that the “plug will rotate around the pivot point” and this is equivalent to “laterally” disengaging the plug. The examiner disagrees for the reasons set out above. Lateral movement and rotational movement are not synonymous. Applicant’s arguments regarding Perry are moot.
Allowable Subject Matter
Claims 14-17 are allowable for the reasons previously noted.
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 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
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