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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/29/24 and 12/10/24 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: guide member in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mallmann et al., U.S. Patent 2020/0010069 (hereinafter “Mallmann”).
In Reference to Claim 1:
Mallmann discloses a vehicle brake arrangement comprising: a master cylinder (12) attached to a dash panel of a vehicle (Examiner notes that the attached to a dash panel of a vehicle is intended use of the master cylinder, notwithstanding the prior art is in the same field of endeavor and typically the master cylinder is installed to a dash panel); a reservoir tank (13) mounted on an upper side of the master cylinder (12); and a guide member (30) provided at a front end of the master cylinder, wherein, the reservoir tank has an overextending portion (See, Figure 1A or 3) extending forward beyond the master cylinder; and the guide member includes a fixed portion (26) to be fixed to the master cylinder (within the orifices as shown in Figure 9) and an extending portion extending forward from the fixed portion and overlapping in a vehicle up-down direction with the extending portion.
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In Reference to Claim 2:
Mallmann further discloses wherein the fixed portion is mounted to an end surface of the master cylinder on the front side of the vehicle (See, Figure 1 and 9), the guide member has an abutment surface continuous with the fixed portion and directed toward an inner side in a vehicle width direction, and the rib portion is disposed outward of at least part of the abutment surface in the vehicle width direction.
In Reference to Claim 3;Mallmann further discloses wherein the extending portion is disposed outward of
at least part of the abutment surface in the vehicle width direction. See, Figure 5 or 6 which depicts the extending portion being larger than the abutment surfaces in the width direction.
In Reference to Claim 4:
Mallmann further discloses wherein the extending portion has a tapered portion having an inner region in the vehicle width direction thereof tapered as it extends frontward. See, Figure 3b which shows in the width direction the extending
portion 30 tappers as it extends out wide.
In Reference to Claim 5:
Mallman further disclose wherein the guide member has the abutting surface continuing from the fixed portion via bent portion, and a reinforcing part (Rib; See Annotated Figure above which illustrates that guide member contains a bent portion and rib) provided on an outer side in the vehicle width direction of the abutting surface; and the reinforcing part includes a reinforcing surface overlapping in the vehicle width with the abutting surface and extending out portion extending toward the front end surface of the master cylinder.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mallmann et al., U.S. Patent 2020/0010069 (hereinafter “Mallmann”) in view of Lange, WIPO Publication WO2014114487 (hereinafter “Lange”).
In Reference to Claim 6:
Mallmann discloses all the limiations set forth in claim 2, and further discloses the fixed portion having a fixing hole through which a fixing member is inserted. See, Figure 12.
Mallman fails to disclose a slit continuing from the fixing hole and opening outward in the vehicle width direction from the fixing hole. However, in the same field of endeavor, attachment means for a reservoir to a master cylinder, Lange discloses wherein the fixing hole has a slit continuing from the fixing hole and opening outward.
It would have been obvious to a person having ordinary skill in the art at the time of effective filing to modify Mallmann such that the fixing hole contains a slit continuing from the fixing hole and opening outward as taught by Lange because such a modification would allow for easier mating of the two components by giving additional tolerances. Examinre notes that the opening outward in the vehicle width direction from the fixing hole is merely a design choice in the direction in which the slit opens and as such without a distinct technological advantage (which Examiner could not locate within the specification) would have been obvious for a person having ordinary skill in the art to alternatively design given the limited directions the slit could open.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3,5, and 1 of co-pending Application No. 18/592,993 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are broader in at least one aspect.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
For claim 1:
Regarding the broadening aspect of the application claims, the following comparison between the co-pending application claims and the application claims highlights (see underlined features in the co-pending claims) what elements have been excluded in the presentation of the application claims.
Co-Pending Application 1
Application claim 1
A vehicle brake apparatus comprising:
a master cylinder mounted to a dash panel of a vehicle;
a reservoir tank mounted to a portion of the master cylinder on an upper side of the vehicle;
and a guide member provided at an end portion of the master cylinder on a front side of the master cylinder, wherein the reservoir tank having an overhanging portion hanging over the master cylinder toward the front side of the vehicle, wherein the guide member has a fixed portion to be fixed to the master cylinder, and an extending portion extending toward the front side of the vehicle from the fixed portion and overlapping the overhanging portion in a vehicle up-down direction, the overhanging portion has a rib portion protruding toward a lower side of the vehicle, and at least part of the rib portion overlaps the extending portion in a vehicle front-rear direction.
A vehicle brake arrangement comprising:
a master cylinder attached to a dash panel of a vehicle;
a reservoir tank mounted to an upper side of the master cylinder;
a guide member provided at a front end of the master cylinder wherein the reservoir tank has an overextending portion extending forward between the master cylinder; and
a guide member includes a fixed portion to be fixed to the master cylinder and an extending portion extending forward from the fixed portion and overlapping in a vehicle up-down direction with the overextending portion.
Thus, it is apparent, for the broadening aspect, that co-pending claim 1 includes features that are not in application claim 1. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 1 is anticipated by co-pending claim 1, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 1 is obvious over co-pending claim 1 with respect to the broadening aspect.
For dependent claims 2-5, the recited limitations are contained in patent claims 2-3,5, and 1, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S. COLLINS whose telephone number is (313)446-6535. The examiner can normally be reached M-TH 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathaniel Wiehe can be reached at (571) 272-4648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL S COLLINS/Examiner, Art Unit 3745
/NATHANIEL E WIEHE/Supervisory Patent Examiner, Art Unit 3745