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 .
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 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. Specification, as originally filed, does not provide support for the claimed subject matter of the “molded body formed from a non-heat shrinkable thermoplastic material forming a dimensionally stable, rigid, and temperature resistant wire splice housing” as now cited in claims 1 and 11.
Claims 2-10 and 12-15 are included in this rejection because of dependency.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Siden (4196308) in view of Harris (3985951), Condon (3774141) and Bahder (4487994).
Siden discloses a wire splice assembly comprising a wire splice including a wire splice terminal and a wire splice housing (Fig. 3) holding the wire splice terminal, the terminal including a wire tube (12) extending between a first end configured to receive an end of a first wire (26) and a second end configured to receive an end of a second wire (27, col. 3 line 33), the wire tube having a first crush barrel at the first end configured to crimp to the first wire, the wire tube having a second crush barrel at the second end configured to crimp to the second wire (Fig. 2), the wire splice housing including a body forming a cavity receiving the splice terminal, the wire splice housing including a first funnel (34) part of the body at a first end configured to guide the first wire to the first end of the terminal, the wire splice housing including a second funnel (34) part of the body at a second end configured to guide the second wire to the second end of the terminal (re-claim 1).
Siden does not disclose the body being formed from a non-heat-shrinkable thermoplastic material; first and second heat shrink sleeves respectively coupled to the wire splice housing ends and the first and second wires; and a carrier strip being integral with the wire splice housing, the carrier strip extending from the housing for connecting the housing to other wire splices, wherein the housing is configured to be singulated from the carrier strip afterward (re-claims 1, 10 and 11).
Harris discloses a wire splice assembly comprising a body formed from a non-heat-shrinkable thermoplastic matrial (col. 1 lines 27-31). It would have been obvious to one skilled in the art to use a non-heat-shrinkable thermoplastic material for the body of Siden to meet the specific use of the resulting assembly where greater rigidity and dimensional stability are desired as taught by Harris, and it is suggested by Siden that any suitable insulating polymers can be used for the housing body (col. 4 lines 38-39). It is noted that since the modified body of Siden comprises material as claimed, it is a dimensionally stable, rigid, and temperature resistant body (re-claims 1 and 11).
Bahder discloses a wire splice assembly comprising a first heat shrink sleeve (122) couped to a first end of housing (120) and a first wire; and a second heat shrink sleeve (122) coupled to a second end of the housing (120) and a second wire. It would have been obvious to one skilled in the art to provide first and second heat shrink sleeves as taught by Bahder in the assembly of Siden to further protect the splice from the surrounding environment. It is noted that since the first and second heat shrink sleeves in the modified system of Siden comprise structure and material as claimed, they can be configured to be heat shrink applied to the first wire and second wire respectively.
Condon discloses a wire splice assembly comprising a carrier strip integral with a plurality of wire splice housings (38), wherein the housing is configured to be singulated from the carrier strip afterward. It would have been obvious to one skilled in the art to provide a carrier strip integral with the housing of Siden and connecting the housing with other wire splices as taught by Condon for mass termination.
It has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, molded or co-molded, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Siden, as modified, discloses the carrier strip and the housings being a unitary monolithic structure (re-claim 2); the carrier strip being located between the first and second ends of the housing (re-claim 3); the carrier strip being approximately centered along the housing between the first and second ends (re-claim 4); and the carrier strip being located at a bottom of the housing (Fig. 2, the lower strip) (re-claim 5).
Re-claim 6, the modified housings of Siden can be configured to be wound on a reel with the carrier strips since they comprise structure and material as claimed.
Re-claim 7, Condon teaches the terminal (64) including a terminal lead-in at a first end (68) forming a terminal funnel. It would have been obvious to one skilled in the art to modify the terminal of Siden to comprise a terminal funnel, as taught by Condon, at the first end to ease the insertion of the wire into the terminal. It is noted that since the first end of the terminal is a terminal funnel end, it can be configured to guide the first wire into the first crush barrel.
Re-claim 8, Siden discloses the wire splice housing including a locating lip (22), the second end of the terminal engaging the locating lip to locate the terminal in the cavity.
Re-claim 9, Siden, as modified, discloses the first funnel has a first funnel diameter, the second funnel has a second funnel diameter, and the cavity has a cavity diameter less than the first and second funnel diameters, the second end of the wire terminal having a diameter less than the cavity diameter to load the wire tube of the wire splice terminal into the cavity, the first end of the wire tube being flared outward (see Condon, end 68) forming a large diameter greater than the cavity diameter which would restrict the first end from entering the cavity.
Re-claim 12, Siden, as modified, discloses the first heat shrink sleeve including a first housing attachment end attached to the wire splice housing and a first wire attachment end extending beyond the first end of the wire splice housing configured to be attached to the first wire, the second heat shrink sleeve including a second housing attachment end attached to the wire splice housing and a second wire attachment end extending beyond the second end of the wire splice housing configured to be attached to the second wire.
Re-claim 13, Siden, as modified, discloses the first heat shrink sleeve being separate, discrete, and spaced apart from the second heat shrink sleeve (see Bahder).
Re-claim 14, Siden, as modified, discloses the carrier strip (the upper strip in Fig. 2 of Condon) being located between the first and second heat shrink sleeves.
Re-claim 15, Siden, as modified, discloses the first heat shrink sleeve being coupled to the first funnel remote from the portion of the wire splice housing holding the first crush barrel, and the second heat shrink sleeve being coupled to the second funnel remote from the portion of the wire splice housing holding the second crush barrel (see Bahder).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 11 have been considered but are moot in view of new ground of rejection.
Regarding the 112(a), applicant states that support for the features of the “molded body formed from a non-heat shrinkable thermoplastic material forming a dimensionally stable, rigid, and temperature resistant wire splice housing” is abundantly present throughout the original specification and drawings. Examiner would disagree. Applicant states that support for the new recitations is bundantly present throughout the original specification and drawings, but does not provide where in the as-filed specification and drawings disclose such support. Throughout the specification, it is only disclosed that the wire splice housing is formed of plastic (see application’s publication, [0022] and [0030]).
Applicant argues that Siden teaches away from non-heat-shrinkable material for the housing body (sleeve 14). Examiner woud disagree. It has been held that “Teaching away” requires that a reference “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “Whether or not a reference teaches away from a claimed invention is a question of fact.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). Siden does not criticize or discredit the use of non-heat-shrinkable material. In fact, Siden discloses that “other suitable insulating polymers may also be utilized” (col. 4, lines 37-38).
Applicant argues that Condon and Bahder do not teach or suggest a rigid housing body coupled with separate heat shrink sleeves. Examiner would disagree. Condon is relied upon only to support the position of forming multiple bodies with a carrier strip for mass termination. Condon does not have to disclose the housing body being a rigid housing body. Likewise, Bahder is relied upon only to support the position of coupling first and second heat shrink sleeves at respective ends of the housing to further protect the splice from surrounding environment. Bahder does not have to disclose a rigid housing body.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that there is no motivation or rational basis to combine Condon’s carrier strip teaching with Siden’s housing body. Examiner would disagree. Condon, col. 3 line 48-51, discloses that by having multiple housing bodies formed integral with a carrier strip would provide “high-speed production” and “eliminates the necessity for mounting the individual sleeves or assembled connectors on a separate carrier band” and “ready production of individual terminal connectors simply by severing the connectors from the strip.”
Applicant argues that the “co-molded” recitation is structurally distinct from assemblies where carrier strips are mechanically clipped, adhered, or welded to pre-forming housings, and that because the prior art fails to teach or suggest the structural configuration of claim 1, claim 1 is patentable over Siden and Condon. Examiner would disagree because the housings 38 of Condon are integrall formed with the carrier strip (Fig. 2), no clipped, adhered or welded.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N Hayman can be reached at 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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