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 .
Response to Arguments
Applicant's arguments filed 03/20/2026 (“the Remarks”) have been fully considered but they are not fully persuasive. Claims 11-15 remain properly rejected under §112(a) for lack of enablement for the full scope of said claims. As claim 21 is nothing more than a rewriting of claim 11 “as new independent claim 21,” claim 21 is also rejected under §112(a) for lack of enablement. New claims 22-25 are duplicates of claims 12-15 and are also rejected for the same reasons.
While a prior art rejection was not provided for claims 11-15, Examiner notes that the subject matter of these claims was also not included or otherwise discussed in the “Allowable Subject Matter” section of the pending Office Action. This discrepancy stems from the fact that claims 11-15 (and now claims 21-25) recite the combination of subject matter disclosed in discrete embodiments that are explicitly disclosed as having mutually exclusive elements. Examiner notes that the previous Office Action specifically correlated FIGS 11-16 with the subject matter of claims 1 and 19, a finding that has not been contested by Applicant. This is significant because the disclosure as filed, at paragraph [0042], explicitly states “the grounding member described above is not provided, and the shielding member itself is in electrical contact with the ground terminal 1302” (emphasis by Examiner). Thus, it is unclear how one would combine elements which are explicitly disclosed as being exclusive to each other. The scope of the claim conflicts with the disclosure as filed, and there being no clarity to be found elsewhere (despite the broad and unsupported allegation that embodiments are combinable), Examiner is unable to ascertain the scope of the claimed subject matter. Without a discernible scope, a search and examination of the subject matter in view of the prior art is not possible and, thus, a rejection based on prior art was not provided. Thus, the omission of a rejection based on prior art is not an admission that the subject matter would be allowable if the scope of enablement rejection were overcome.
Applicant’s sole argument traversing the scope of enablement rejection under §112(a) begins on page 9 of the Remarks. There, Applicant contends that the extremely broad contention that “modifications may be made in these embodiments” and that “various features described in different embodiments may be freely combined with each other without conflicting in configuration or principle” provides the requisite disclosure to avoid or overcome a rejection under §112(a). Examiner respectfully disagrees.
Examiner first notes that Applicant makes no attempt to address the discussion by Examiner in the pending Office Action. Applicant makes no attempt to discuss or otherwise explain how one of ordinary skill would find it reasonable to modify an embodiment which explicitly omits the grounding member to nonetheless include the explicitly excluded grounding member. The mere allegation that it might be possible is transparently insufficient to enable the subject matter of claims 11-14 (and thus 21-25) when the explicitly disclosure effectively teaches away from the combination of embodiments by explicitly excluding the combined element. Indeed, the embodiment depicted by FIGS 11-16 and discussed in paragraphs [0042-45] not only explicitly excludes the grounding element, there is also no apparent reason to make the modification as grounding is instead provided by the shielding member itself.
Indeed, there is no clear and apparent argument that these claims are in fact enabled. “When analyzing the enabled scope of a claim, the teachings of the specification must not be ignored because claims are to be given their broadest reasonable interpretation that is consistent with the specification.” MPEP §2164.08. Turning to the Wands factors, it is evident that the scope of these claims exceeds that which is reasonably and explicitly provided in the disclosure as filed. A mere allegation that embodiments might be combined is facially inadequate to enable specific embodiments, particularly when the disclosure also provides that the embodiment of the parent claim explicitly excludes the subject matter of a different embodiment sought to be combined by Applicant. Thus, factor A mandates a finding of non-enablement for the scope of claims 11-14 and 21-25.
Moreover, the base embodiment (i.e., that of FIGS 11-16 and claim 1) is disclosed as explicitly excluding the subject matter of claims 11-14 because grounding is provided by other elements, thus there would be no reason or motivation for one of ordinary skill to infer that these embodiments could be combined as broadly alleged by Applicant. Examiner is unable to find any evidence that either the state of the prior art or the nature of the invention would lend themselves to a finding of enablement, and Applicant provides no evidence or discussion beyond the unsubstantiated allegations of paragraphs [0048-49]. Thus, factors B and C favor a finding of non-enablement.
The level of one of ordinary skill is largely immaterial to the discussion because a reasonable person would not read the instant disclosure, which explicitly excludes the grounding member of claim 11, as simultaneously suggesting that it may be combined with the embodiment from which it is excluded. Thus, factor D is neutral.
With respect to the level of predictability and the amount of direction provided by Applicant, Examiner must find that these factors favor non-enablement. Indeed, it would not be predictable to take an embodiment which is disclosed as explicitly excluding the grounding member and nonetheless adding the grounding member. Applicant’s disclosure provides no actual discussion or guidance as to implementing this combination of embodiments beyond broad and unsubstantiated allegations that various embodiments might be combined. Thus, factor E (level of predictability) cannot favor a finding of enablement because it would not be predictable to do that which is explicitly excluded by the instant disclosure. Factor F (the amount of direction provided by Applicant) mandates a finding of non-enablement because, in the absolute best-case scenario, the instant disclosure is conflicting as to whether the relevant embodiments may actually be combined; at worst, the instant disclosure explicitly rejects the combination of embodiments. In both scenarios, the amount of direction provided is transparently inadequate to find that factor F factors enablement.
The existence of working examples, or in this case, the lack of working examples (i.e., factor G) also favors a finding of non-enablement. As discussed repeatedly above, the only pertinent discussion in the disclosure as filed explicitly excludes the grounding member. Thus, the only potential support for a “working example” of the instant subject matter would be the broad statements of paragraphs [0048-49] which conspicuously fail to actually discuss the instant subject matter in any amount of detail that would overcome the prior disclosure of excluding the grounding member.
Finally, the quantity of experimentation required (i.e., factor H) must also favor non-enablement because, as shown above and in the previous office action, there is simply no enabling support for the embodiment of claims 11-14 and 21-25. Applicant provides that the grounding member is not included in the embodiment which would correspond to claim 1. The broad allegation that embodiments might be combined cannot overcome a clear disclosure that the relevant embodiments are not in fact combined.
Thus, the rejection of claims 11-14 under §112(a) is maintained. As admitted by Applicant, claim 21 is nothing more than a rewriting of claim 11 in independent form; thus, the rejection of claim 11 applies, mutatis mutandis, to the subject matter of claim 21. New claims 22-25 simply mirror the subject matter of claims 12-15, none of which overcome the scope of enablement rejection; thus, claims 12-14 and 22-25 are also rejected for the same reasons as claims 11 and 21, respectively.
Similar logic applies to the subject matter and §112(a) rejection of claim 15. Applicant relies on the same portion of the disclosure as filed to make the same unsubstantiated allegation that discrete embodiments which might be combined through undisclosed modifications is adequate to enable an actual combination and modification. As above, this is unpersuasive. The embodiment of claim 1, as depicted by FIGS 11-16, provides grounding through electrical contact between the shielding member and the ground terminal(s). As grounding is already provided, one of ordinary skill would not see any reason to further modify the shielding member to also obtain grounding contact through a circuit board element. Moreover, paragraph [0042] once again states, in no uncertain terms, “the grounding member described above is not provided, and the shielding member itself if in electrical contact with the ground terminal.” Simply alleging that “various embodiments” might be combined remains inadequate to provide an enabling disclosure of the combination of specific embodiments, particularly where the explicit embodiments are disclosed as excluding the elements sought to be combined.
Thus, the rejection of claim 15 under §112(a) is also maintained.
With respect to claim 18, Examiner find the Remarks persuasive and the pending rejection under §112(b) is withdrawn. Applicant’s amendments to claim 1, however, create a new issue under §112(b), as discussed below.
With respect to the pending rejections based on Ito, Examiner finds the Remarks to be sufficiently persuasive and the §102 and §103 rejections of the claims based on Ito are withdrawn. While Applicant’s amendments do not include all of the limitations of intervening claims 5 and 6, further search and consideration of the subject matter as amended has not yielded any relevant prior art. Thus, an appropriate indication of allowable claims and allowable subject matter is provided below.
Claim Interpretation
Examiner notes at the outset of this action that the instant disclosure contemplates a variety of embodiments. As best understood by Examiner, instant claims 1 and 19 are only applicable to a singular embodiment, particular the embodiment depicted by FIGS 11-16. This results from recitation of the shielding member including the contact arm, rather than some other element connected to the shielding member including the contact arm.
To further elaborate, the embodiment of FIGS 2-4 depicts a shielding member 140 that does not include contact arms because the contact arms 1503 are provided on grounding member 151, a separate and distinct element. Thus, FIGS 2-4 cannot be reasonably interpreted as depicting the subject matter of claims 1 and 19.
The embodiment of FIGS 5-7 is similar, having contact arms 1503 on grounding members 151 that are explicitly disclosed as being a separate element (see instant paragraph [0040]). Thus, FIGS 5-7 cannot be reasonably interpreted as depicting the subject matter of claims 1 and 19.
The embodiment of FIGS 8-10 completely omits a contact arm in electrical contact with the ground terminal(s), thus it FIGS 8-10 cannot be reasonably interpreted as depicting the subject matter of claims 1 and 19.
Claim Rejections - 35 USC § 112
Claims 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a shielding member having contact arms, does not reasonably provide enablement for a shielding member having contact arms in addition to a separate grounding plate or member. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
As discussed in the Claim Interpretation section above, the subject matter recited by claims 1 and 19 reflects the embodiment of FIGS 11-16. The subject matter of claim 11 is entirely inconsistent with this embodiment as this embodiment explicitly omits the grounding member (see instant paragraph [0042]). As a result, the subject matter of claim 11 is not enabled by the disclosure as filed. Claims 12-14 depend from claim 11, fail to cure this deficiency, and are therefore rejected for at least the same reasons.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a shielding member having contact arms, does not reasonably provide enablement for a shielding member having contact arms in addition to a separate grounding plate or member. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
As above, the embodiment relevant to claims 1 and 19 does not incorporate a contact leg as recited by claim 15. This subject matter is explicitly recognized by Applicant as belonging to a separate embodiment (see para. [0040]).
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.
Claim(s) 16-18 is/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.
Regarding claim 16, Applicant recites “an installation base” in line 2 of the claim as amended. It is unclear whether this is meant to refer to “an installation base” of claim 1 as amended, or to instead recite another instance of “an installation base.” As a result, the scope of claim 16 is indefinite. Claims 17 and 18 depend from claim 16, fail to cure this deficiency, and are therefore rejected for the same reason.
Allowable Subject Matter
Claims 1-6, 9, 10, 19, and 20 are allowed.
Claims 16-18 are rejected under §112(b), but would be allowable by virtue of dependency if the rejection were overcome.
The following is an examiner’s statement of reasons for allowance: the prior art of record, taken alone or in reasonable combination with others, fails to disclose the subject matter of instant claims 1 and 19.
With respect to claim 1, Ito may be reasonably interpreted as disclosing:
An electrical connector (title), comprising:
an outer housing (FIG 1:11);
an insulating housing arranged in the outer housing (FIG 2:35, 55);
a pair of terminal assemblies (FIG 3, C1 and C2) arranged in the insulating housing (as shown by FIGS 2 and 3, collectively) and spaced apart from each other in a first direction (there is both a vertical and a horizontal gap between elements of terminal assemblies C1 and C2, as seen in FIG 3) to define an insertion space therebetween (as seen in FIG 3, the vertical gap between assemblies is configured to receive a mating connector), the insertion space adapted to receive a connection terminal of a mating connector (see FIGS 2 and 3), each terminal assembly including a plurality of conductive terminals arranged in rows in a second direction perpendicular to the first (see FIG 4), the plurality of conductive terminals of each terminal assembly (e.g., FIG 5) including a signal terminal (20B) and a ground terminal (20A), each terminal assembly further including an installation base (partition walls 12 and 13 may be reasonably construed as being portions of the respective upper and lower terminal assemblies C1 and C2 because they partially enclose their respective terminal assemblies, as seen in FIGS 1 and 2) formed with an insertion protrusion (as seen in FIG 2, partition walls 12 and 13 protrude inwardly toward the insertion space) defining an insertion slot (as seen in FIGS 1 and 2, collectively); and
a shielding member (FIG 2:30, 50, collectively) at least partially positioned between the pair of terminal assemblies in the first direction (as shown in FIGS 2, 3) and including a contact arm (FIG 6:32; FIG 8:52A, 52B) in electrical contact with the ground terminal (see col. 11, ll. 59-64), the shielding member including two subshielding members (FIG 2, 30 and 50 individually).
While the subshielding members of Ito may be interpreted as inherently including “a subshielding body,” the reference does not teach, suggest, or otherwise disclose these bodies having “an insertion portion adapted to be at least partially inserted into the insertion slot and fixing the subshielding body relative to the installation base” as recited by amended claim 1. Amended claim 19 recites substantially similar limitations. As such, claims 1 and 19 distinguish over the prior art of record. Amended claims 2-6, 9, 10, and 20 depend from one of claims 1 and 19 and would therefore be allowable for at least the same reason. Amended claims 16-18 depend from claim 1 and would therefore be allowable for at least the same reason, if the pending rejection under §112 were overcome.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 THOMAS K QUIGLEY whose telephone number is (571)272-4050. The examiner can normally be reached Monday - Friday, 8:30 AM - 4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TULSIDAS PATEL can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
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