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 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.
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.
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.
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 1 and 6-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 4,427,252).
Regarding claim 1, Lee discloses a terminal assembly for connecting a cable to a busbar, the terminal assembly comprising: a tubular body (16) having a tubular portion disposed about a central axis and an annular end-wall disposed proximal to one end (left in Fig. 2) of the tubular portion, the tubular body defining an elongate recess (at 36) extending from another end (right in Fig. 2) of the tubular portion along the central axis, the elongate recess is configured to receive a free end of the cable therein; and a fastener (26) protruding outwardly from the annular end-wall of the tubular body, wherein the fastener includes: a first portion (inside 16) configured to be received within the tubular body; and a second portion (inside 14) having a plurality of external threads thereon, the second portion is configured to be received within an opening in the busbar (intended use).
Regarding claim 6, Lee discloses the tubular body defining an opening (34) extending from the annular end-wall along the central axis, and a plurality of internal threads adjacent to the opening and radially disposed about the central axis.
Regarding claim 7, Lee discloses the first portion of the fastener defining a plurality of external threads, and wherein the plurality of external threads on the first portion engage with the plurality of internal threads on the tubular body to removably couple the first portion of the fastener with the tubular body (see Fig. 2).
Regarding claim 8, Lee discloses the first portion of the fastener including a taper portion (right side in Fig. 2A) that is received within the opening, and wherein the taper portion engages with the tubular body to retain the fastener within the tubular body.
Regarding claim 9, Lee discloses a first diameter of the elongate recess being greater than a second diameter of the opening (Fig. 2).
Regarding claim 10, Lee discloses the opening extending at least partially along the annular end-wall (Fig. 2).
Regarding claim 11, Lee discloses the elongate recess and the opening being in communication with each other (Fig. 2).
Regarding claim 12, Lee discloses at least one washer (flange of 14), wherein, upon receipt of the second portion of the fastener within the opening in the busbar, the at least one washer surrounds the second portion of the fastener (Fig. 2).
Regarding claim 13, Lee discloses the fastener including any one of a stud and a bolt (Fig. 1).
Regarding claim 14, Lee discloses a machine comprising: an electrical component and employing the terminal assembly of claim 1.
Claims 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ivandic et al. (US 6,220,902).
Regarding claim 15, Ivandic discloses (in Figs. 6-10) a system for creating an electrical junction, the system comprising: a busbar (94) defining an opening (96); a cable (12) having a free end; and a terminal assembly for connecting the cable to the busbar, the terminal assembly including: a tubular body (20) having a tubular portion disposed about a central axis and an annular end-wall disposed proximal to one end of the tubular portion, the tubular body defining an elongate recess extending from another end of the tubular portion along the central axis, the elongate recess is configured to receive the free end of the cable therein; and a fastener (38) protruding outwardly from the annular end-wall of the tubular body, wherein the fastener includes: a first portion configured to be received within the tubular body (intended use); and a second portion having a plurality of external threads thereon, the second portion is configured to be received within the opening in the busbar (Fig. 9).
Regarding claim 16, Ivandic discloses the terminal assembly including a coupling member (56) configured to couple the fastener with the busbar upon receipt of the second portion of the fastener within the opening in the busbar, the coupling member defining a plurality of internal threads that engage with the plurality of external threads on the second portion of the fastener to releasably secure the tubular body and the fastener with the busbar.
Regarding claim 17, Ivandic discloses the tubular body defining a means to grip the tubular body (at 18) for securing the coupling member to the fastener.
Regarding claim 18, Ivandic discloses the tubular body defining an opening (56) extending from the annular end-wall along the central axis, and a plurality of internal threads adjacent to the opening and radially disposed about the central axis.
Regarding claim 19, Ivandic discloses the first portion of the fastener defines a plurality of external threads (36), and wherein the plurality of external threads on the first portion engage with the plurality of internal threads on the tubular body to removably couple the first portion of the fastener with the tubular body.
Regarding claim 20, Ivandic discloses a first diameter (at 60) of the elongate recess being greater than a second diameter of the opening (56).
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.
Claim 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Koch (US 3,052,866).
Regarding claim 2, Koch teaches the use of a coupling member (17) configured to couple the fastener (5) with the busbar upon receipt of the second portion of the fastener within the opening in the busbar (intended use), the coupling member defining a plurality of internal threads that engage with the plurality of external threads on the second portion of the fastener to releasably secure the tubular body and the fastener with the busbar (intended use). It would have been obvious to one having ordinary skill in the art before the invention was effectively filed to use a coupling member, as taught by Koch, in order to provide a stronger and more secure connection between the fastener and the coupling member.
Regarding claim 3, Koch discloses the coupling member being a nut (Figs. 1 and 2).
Regarding claim 4, Lee discloses the tubular body defining a means to grip the tubular body (friction texture, see Fig. 1) for securing the coupling member to the fastener.
Regarding claim 5, Lee disclose a length of the means to grip the tubular body is less than or equal to a length of the tubular body.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
In response to Applicant's arguments that Lee’s device “includes no busbar and is not configured, structurally or functionally, to connect to one”, please note that the structure of claim 1 does not positively recite nor include a busbar. The claim merely requires that the second portion of the fastener be “configured to be received within an opening in the busbar”.
A recitation that an element is “configure to” perform a function is not a positive limitation but only requires the ability to so perform. In this case, the second portion of the fastener (26) of Lee is capable of being receive within an opening of a busbar.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Applicant has not disclose any part of the claimed structure that is not present in Lee.
In response to Applicant's arguments that the claim requires “a specific structural relationship between the fastener’s second portion and the busbar opening”, it is again note that the busbar nor the busbar opening are part of the claimed invention (i.e. a terminal).
In response to Applicant's arguments that “Lee’s bore 36 is not an elongated recess configured to receive a free end of a cable”, please note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the bore (36) of Lee is capable of receiving a free end of a cable (with or without portion 18).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a cable being directly received in the bore) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant's arguments regarding claim 8, please note that the right side of the threads of 26 must be tapered in order to initiate insertion and threading.
In response to Applicant's arguments regarding claim 12, please note that the collar (14) of Lee is a separate, annular element that surrounds the fastener’s shank. It also surrounds the second portion. It is again noted that the claims 1 and 12, claim a terminals, not the combination of a terminal, a cable and a busbar.
In response to Applicant's arguments (regarding claim 15) that Ivandic does not disclose member 28 protruding outwardly from the annular end-wall of the tubular body, because it “is inserted from the exterior into the housing through the busbar”, please note that the direction of insertion does not preclude outward protruding/extending of the fastener. Nonetheless, please note that the method of forming a device is not germane to the issue of patentability of the device itself. A claimed apparatus cannot be distinguished over the prior art by a process limitation.
In response to Applicant's arguments regarding claim 16, it is again noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
In response to Applicant's arguments regarding claim 17, please note that the outer stepped surface of 18 allows for gripping by a tool.
In response to Applicant's invocation of means-plus-function in order to limit the claim interpretation, it is noted that the specification recites that “the means 208 may define two, four, or eight tool engaging surfaces, without any limitations”.
Conclusion
THIS ACTION IS MADE FINAL. 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 FELIX O FIGUEROA whose telephone number is (571)272-2003. The examiner can normally be reached M-F 9am-6pm.
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/FELIX O FIGUEROA/Primary Examiner, Art Unit 2833
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