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 .
Election/Restrictions
Claims 21-26 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim.
Applicant's election with traverse of group I, claims 18-20 (and newly added claims 27-29) in the reply filed on 04/13/2026 is acknowledged. The traversal is on the grounds that: there would not be a burdensome search if all of the claimed species were examined together. This argument is not found persuasive because the different groups have been shown to have distinct features, despite any overlap in some of the subject matter. Further, a proper search of the prior art requires review of thousands of prior art references while searching for numerous features of the invention. To search for the additionally noted features of the non-elected groups would significantly increase the burden of time for the search to be performed. Thus this argument is not compelling.
Applicant has also incorrectly asserted that: “All of Groups I-III are classified in class HO1R 43/048, and search and examination were already performed in parent U.S. Application No. 17/380,478. Each Group does not have a separate status in the art. Lastly, each Group does not have a different field of search (see MPEP 808.02).” Respectfully, none of the Applicant’s above note statements have any basis in fact or evidence.
First, it is quite clear from the explicit language of the restriction requirement (mailed 02/13/2026) that the groups are not all classified in class H01R 43/048. Please review the restriction requirement, wherein it is expressly stated that:
I. Claims 18-20, drawn to a wire processing machine, classified in H01R 43/0488
II. Claims 21-23, drawn to another wire processing machine, classified in H01R 43/048.
III. Claims 24-26, drawn to a third wire processing machine, classified in H01R 43/0585.
Accordingly, this argument is not compelling.
Second, it is entirely false that the “search and examination were already performed in parent U.S. Application No. 17/380,478”. Each and every patent application necessitates its own search and consideration and it would be entirely improper for the Examiner to simply avoid searching because they had previously done a search on a related application. As such, this argument is not at all compelling.
Third, each group absolutely does have separate status in the art, as separate classification and two-way distinctness between the groups has been clearly demonstrated. Therefore this argument is not compelling.
Finally, each group in fact does have a separate and distinct field of search because the search does not simply constitute review of the CPC listings. What the search actually comprises is review of thousands of prior art listings, and searching specific terms and concepts, including the distinct terms and concepts of each of the patentably distinct inventions. As such, if the inventions were examined together, the limitations of the distinct inventions would all be required to be searched and would constitute the very essence of an overly burdensome search. Thus, this argument is also not found to be compelling.
The requirement is still deemed proper and is therefore made FINAL.
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 limitations use generic placeholders that are coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholders are not preceded by any structural modifier. Such claim limitations are: “at least one force-applying device,” (claim 18, line 8); and “at least one force storage means, the at least one force storage means acting in the position of the at least one force-applying device in which substantially no force is transmittable to the at least two crimping jaws by virtue of the at least one force-applying device” (claim 18, lines 16-18).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The claim limitation(s) has/have been presumed to invoke 35 U.S.C. 112, sixth paragraph, because it/they meet(s) the following 3-prong analysis:
(A) The claim limitation(s) use the phrase “means for” or “step for” or a generic replacement therefore: The word (or phrase) “device” is a generic nonce term which imparts no structure to the words which it purportedly modifies. The claims would have no more or less weight and meaning if they instead disclosed “at least one force-applying means,” or “at least one means for applying force”. Similarly, the word “means”, with or without the following word “for” carries the same weight and meaning.
(B) The “means for” or “step for” is modified by functional language: “force-applying” and “force storage” and “acting”.
(C) The phrase “means for” or “step for” is not modified by sufficient structure, material, or acts for achieving the specified function. In this instance, the terms “force-applying device” and “force storage means” are not in any way structural, nor do they carry implicit structure. The remaining cited language is entirely functional in nature and contains no structural descriptions at all. A rock or a lever or a motor or a piston or a spring or literally any other physical object known can be used as a “force-applying device”. Similarly, a lake or a dynamo or a spring or a detent or any of thousands of other objects can be used as a “force storage means”. The reader cannot possibly guess what structures are intended in the claim without reading the specification and therefrom importing limitations into the claim.
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 § 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.
Claim 19 is 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.
Claim 19 discloses “the crimping tool is configured to: transport the at least one crimping connection from a fitment position to a crimping position” (lines 3-4; emphasis added). There is not a single structure in claim 18 which is described as being usable for such a capability. IN fact, such capability is not even implicit. As such, the reader is left to guess what structure may be used to enable “transport”. It is also possible that the structure necessary for this capability was omitted from claim 18. As such, the scope or metes and bounds of the claim cannot be ascertained. While it is not inherently indefinite to disclose elements of an apparatus/product by what it does or is capable to do, such claim disclosures must understandably define a structure in some manner. IN this instance, the disclosed capability does not provide any information as to what structures would be used to “transport” work piece(s).
NOTE: Claim 19 has been interpreted and examined as best understood according to the 112(b) rejection, above.
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.
Claims 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takada (US #).
Regarding claim 18, Takada discloses a wire processing machine (10), comprising: at least one movement device (141 and/or 150); at least one drive unit (142) for producing force on the at least one movement device (figs. 19-20; pars. 0081-0082); and a crimping tool (11, 20, 70, 100), wherein the crimping tool is movable by the at least one movement device (figs. 2-4; pars. 0046-0048), wherein the crimping tool comprises: a main body (11); at least one force-applying device (110, 140), wherein force on the at least one force-applying device is applicable by the at least one drive unit (fig. 2, 12-14; pars. 0046 and 0074-0075); at least two crimping jaws (122, 123, 131, 133) for crimping at least one crimping connection to at least one conductor (pars. 0076-0079); at least one compensating device (133), wherein the at least one compensating device is at least one opening, by means of the at least one compensating device the at least one force-applying device is movable into a position in which substantially no force is transmittable to the at least two crimping jaws by virtue of the at least one force-applying device (figs. 16-18; pars. 0078-0079); and at least one force storage means (“biasing member (not shown)” and/or 143), the at least one force storage means acting in the position of the at least one force-applying device in which substantially no force is transmittable to the at least two crimping jaws by virtue of the at least one force-applying device, wherein: the at least two crimping jaws are movable relative to the main body by the at least one force- applying device; the at least two crimping jaws are configured to adopt at least three processing positions by the at least one force-applying device, based on a relative position of the at least one force- applying device relative to the at least one compensating device; and the at least one force storage means is configured to act on the at least two crimping jaws such that the at least one crimping connection is held by force-locking caused by the at least two crimping jaws during a movement of the crimping tool by virtue of the at least one movement device (figs. 15-20; pars. 0070-0083).
Regarding claim 19, Takada discloses the wire processing machine as set forth in claim 18, wherein the crimping tool is configured to: transport the at least one crimping connection from a fitment position to a crimping position (fig. 15; pars. 0046-0047, 0067-0070, 0090-0091 and 0094); and crimp the at least one crimping connection to the at least one conductor in the crimping position (“crimping position A”) (fig. 16; pars. 0090-0091 and 0096-0098).
Regarding claim 20, Takada discloses the wire processing machine as set forth in claim 18, wherein: the crimping tool is pivotable (at 33) by the at least one movement device into a fitment position for feeding the at least one crimping connection under force of gravity substantially vertically to the at least two crimping jaws or a crimping position spatially separate from the fitment position (fig. 15-16; pars. 0067-0070, 0090-0091, 0094 and 0096-0098); and the at least one crimping connection is removable from the at least two crimping jaws in the fitment position or the crimping position (by opening of 33) (figs. 5-10).
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 of this title, 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 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Takada, in view of Eby et al. (US 2,182,663).
Regarding claim 27, Takada discloses all of the elements of the current invention as detailed above with respect to claim 18. Takada, however, does not explicitly disclose that the at least one force storage means is a fluid energy storage device.
Eby teaches that it is well known to provide a similar wire processing machine (Title; Abstract; fig. 1: all), wherein the at least one force storage means (10) is a fluid energy storage device (fig. 1; pg. 1, cols. 1-2, lines 52-55 and 1-33).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Takada to incorporate the hydraulic force storage device of Eby. POSITA would have realized that hydraulics, pneumatics, spring force, stepper motors and the like can all be easily and readily used in a predictable manner to achieve the desired storage, holding and application of force upon crimping tools. Moreover, there is no indication in the instant disclosure that any special fluid energy storage device was devised or that any surprising results were derived from simply using the old wire processing machine of Takada with the well-known hydraulic energy storage device of Eby. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 29, Takada in view of Eby teaches the wire processing machine of claim 27 as detailed above, and Eby further teaches that it is well known that the fluid energy storage device is a hydraulic accumulator (see claim 27, supra).
Claims 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Takada, in view of Krajewski (US 20060019550 A1).
Regarding claim 27, Takada discloses all of the elements of the current invention as detailed above with respect to claim 18. Takada, however, does not explicitly disclose that the at least one force storage means is a fluid energy storage device.
Krajewski teaches that it is well known to provide a similar wire processing machine (fig. 3: all), wherein the at least one force storage means is a fluid energy storage device (fig. 3; pars. 0010 and 0020-0021).
Please refer to the rationale for combination of references as applied to claim 27, supra, as it is identically applicable with respect to Krajewski.
Regarding claim 28, Takada in view of Krajewski teaches the wire processing machine of claim # as detailed above, and Krajewski further teaches that it is well known that the fluid energy storage device is a pneumatic accumulator (see claim 27, supra).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Garner, JR. (US 2007/0079501 A1) is held to disclose all of the limitations of at least claim 18. The Garner reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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, Sunil Singh can be reached at (571)272-3460. 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.
/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
Prosecution Insights