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 .
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.
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.
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.
Claim 3 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 the “bundling means” being a “hot crimp”, does not reasonably provide enablement for the bundling means being something else. Claim 3 introduces a “bundling mean” to hold two wires together (but does not define what it is). Claim 4, which is narrower in scope than the clam upon which it is dependent upon, limits the “bundling means” of the previous claim as a “hot crimp”.
The “bundling means” is disclosed in applicant’s written description in passing as a “hot crimp 4” shown in applicant’s Figure 5, which is “preferably” made of metal (This figure is unclear as to what is being shown). Since claim 4 expressly defines the “bundling means” of the preceding claim as a “hot crimp”, the Doctrine of Claim Differentiation dictates that claim 3 must be broader than claim 4, which depends on it, so the “bundling means” language of claim 3 must be sufficiently broad enough to cover other elements, besides just a hot crimp (although applicant’s written description is vague as to what else this bundling means might be besides a hot crimp). If the bundling means language of claim 3 was intended to encompass other things besides just a hot crimp, then what else might these alternative bundling means be?
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims without undue experimentation.
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 1-3, 5-8, and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishigami et al (JP 2020-180790-A). The Ishigami reference discloses a measuring assembly for measuring a temperature of a test body (“motor device (not shown)”), wherein at least two wires (element “40”; Figs. 1, 3, 4)1 which are separated from one another2 and which are suitable for thermal conduction are led away from a test body (“motor device”) and which are combined at a distance from the test body (“motor device”) to form a wire bundle (Fig. 4c & 4e), and a temperature sensor (3) being fastened by means of a holder (4) to the wire bundle by a clamping effect (Figs. 4c & 4e).
With respect to claim 2, all of the wires (40) are attached to the motor device at different points.
With respect to claim 3, wherein the wires (40) are combined in the region of the wire bundle by a bundling means3 (10) and the temperature sensor (3) is pressed against the bundling means (10) by the holder (1)4.
With respect to claims 5 and 6, the wires are power supply wires for an electric motor.
With respect to claim 7, the Ishigami reference discloses a holder (Fig. 2) comprising a holder base (1) having an inner side and an outer side and spring clips (131) connected thereto, wherein a recess (110) for receiving a temperature sensor (3) is arranged on the inner side of the holder base (1), and wherein two of the spring clips (131) are arranged opposite each other with respect to the holder base (Fig. 2b) and are configured to generate a clamping force towards the inner side of the holder base (“…The first round wire grip portion 13 includes a pair of first pressing portions 131 that press the round wire 40…”).
With respect to claim 8, since the recess (110) is form fitted to the temperature sensor (3), the recess inherently has a stop5.
With respect to claim 10, the recess allows electrical cables (31) to be guided into the recess.
With respect to claim 11, the temperature sensor (3) is form fitted into the recess.
With respect to claims 12 & 13, see Figure 2b.
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ishigami et al (JP 2020-180790-A). The Ishigama reference is silent about the use of a hot crimp to hold the two wires (40) together, but it appears that the two wires (40) are bonded together somehow (Fig. 1), and hot crimping was a well known technique for doing so6, so it would have been obvious for the ordinary practioner to use hot crimping to bond the two wires (40) of Isigama together motivated by its art recognized suitability for its intended purpose.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ishigami et al (JP 2020-180790-A). The Ishigama reference is silent about the operating temperature of the holder, but this would have been an obvious parameter to optimize depending on the intended use.
Conclusion
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY W GIBSON whose telephone number is (571)272-2103. The examiner can normally be reached Tue-Friday 10AM-6PM.
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, Peter Macchiarolo can be reached at 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RANDY W. GIBSON
Primary Examiner
Art Unit 2856
/RANDY W GIBSON/Primary Examiner, Art Unit 2855
1 “…3A and 3B are perspective views showing an example of the configuration of the second adapter 2, respectively. As described above, the second adapter 2 is a member that connects and grips a plurality of (for example, two) round wires 40, lead wires 31, and a temperature sensor 3…”
2 The two wires 40 appear to be covered with electrical insulative material (“resin”) which keeps their conductive cores separate from each other, as the wires 40 are connected to the motor separately (see Fig. 1).
3 The “bundling means” is disclosed in applicant’s written description in passing as “hot crimp 4” shown in applicant’s Figure 5, which is “preferably” made of metal. This figure is unclear as to what is being shown. Since claim 4 expressly defines the “bundling means” as a “hot crimp”, the Doctrine of Claim Differentiation dictates that claim 3 must be broader than claim 4 which depends on it, so the “bundling means” language of claim 3 must be sufficiently broad enough to cover other elements besides a hot crimp (although applicant’s written description is vague as to what else this might be).
4 “…Further, the first clip member 10 is preferably made of metal, and more preferably made of phosphor bronze or the like having a spring property. The thickness w .sub.1 of the first clip member 10 is appropriately selected depending on the shape and size of the first clip member 10, but is preferably in the range of 0.1 mm to 0.5 mm, for example. By covering the first adapter 1 with the first clip member 10, the gripping force of the first adapter 1 on the measurement object is strengthened, and the first adapter 1 is displaced or displaced from the measurement object. Can be suppressed…”
5 “…The first temperature sensor grip portion 11 is formed with a first temperature sensor gap 110 that houses the temperature sensor 3. In the first temperature sensor gap 110, when the temperature sensor 3 is housed, the size of the gap formed between the temperature sensor 3 and the wall surface 110a constituting the first temperature sensor gap 110 is equal to or less than a certain size. As such, it has a shape corresponding to the external shape of the temperature sensor 3. The first temperature sensor void 110 is an example of a sensor void…”
6 What Is Hot Crimping?" from Amada Weld Tech website https://amadaweldtech.com/technical-glossary/hot-crimping/.