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 06/29/2026 have been fully considered but they are not persuasive. Applicant’s amendments to the drawings address a portion of the objections, but fail to address the objection pertaining to subject matter not shown (see the previous Office Action, halfway through page 3). As neither the amendments nor the Remarks address the objection, it is maintained. The pending rejections under §112 are withdrawn in view of the amendments, but new issues are identified in detail below.
Applicant’s traversal of the rejection under §103 begins on page 7 of the Remarks. Applicant contends that “the immersed portion of liquid silicone disposed in the concave cavity and disposed on a surface of the silicone support plate” is not disclosed by Chen. Applicant further contends that “the switch body (21), the fixing member (24), and the protective pad (4) of Chen are not equivalent to a waterproof seal formed by cooling the immersed portion of the liquid silicone in the present claim.” Applicant concludes by alleging that Rapisarda fails to disclose the instant subject matter, and further fails to render the subject matter obvious when combined with Chen. Examiner respectfully disagrees with all of Applicant’s arguments.
If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). Moreover, arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
First and foremost, Applicant’s amendments fail to adopt Examiner’s paraphrased understanding of original claim 1, as alleged by the Remarks. Applicant has reformatted the order of limitations, giving rise to new issues under §112. Moreover, Applicant’s new claim 7 completely omits the portion of liquid silicone that is poured into the concave cavity; this is significant because the portion of liquid silicone poured into the concave cavity forms, at least in part, the waterproof seal that Applicant relies upon in arguments. Without this poured portion of liquid silicone, no waterproof seal is formed. The dipped portion of the webbed wiring harness is not sufficient to create a waterproof seal for the entire controller body. The disclosure as filed neither suggests nor supports such a claim scope. See, e.g., page 4 of the Specification as filed, which provides that “[t]he silicone for surface waterproof encapsulation is separately filled in the concave cavity opening….” Thus, Applicant’s amended claim is transparently inconsistent with the original claims, the original specification, and Applicant’s own arguments. Thus, Applicant’s arguments cannot be considered persuasive to any extent because they fail to recognize the instant deficiencies in new claim 7.
In addition to the fundamental flaws discussed above, Applicant’s arguments do not even address the actual rejection of record. Applicant, while acknowledging the elements identified by Examiner in the rejection of record, fails to appropriately consider the rejection as a combination of references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). With respect to Chen, Applicant contends that the reference fails to disclose the instant waterproof seal because it does not form the waterproof seal by “cooling the immersed portion of liquid silicone.” Chen was not relied upon to teach an immersed portion, or cooling thereof, and thus Applicant’s argument must fail because it attacks Chen individually when the rejection is based on a combination of Chen in view of Rapisarda and common knowledge in the art.
With respect to Rapisarda, Applicant conducts yet another fundamentally flawed analysis, choosing again to attack the reference individually when the rejection is based on a combination of references. Applicant’s contention that Rapisarda “does not disclose or suggest ‘the immersed portion of liquid silicone disposed in the concave cavity and disposed on a surface of the silicone support plate’…is not obvious in view of common knowledge” cannot be considered persuasive because Rapisarda was only relied upon to teach a machine washable garment having electronic components (“LED assemblies”), wherein the wiring connected to the electronic components is dipped in a waterproofing material to form a dipped seal. Common knowledge was relied upon to provide the motivation for modifying Chen with the teachings of Rapisarda. Thus, the attack on Chen and Rapisarda, individually, must fail because it does not correctly and appropriately consider the rejection as a combination of references.
Moreover, Applicant does not even attempt to present any evidence, or even a logical and reasoned argument as to why Examiner’s interpretations of the prior art contain reversible error. Indeed, Applicant does nothing more than make a broad and unsupported claim that Examiner’s interpretations are incorrect. Applicant does not present any evidence or argument that the fixing member 24 of Chen, which is explicitly disclosed as a silicone that is poured (i.e., “a liquid silicone”) into the cavity 211 of switch body 21 (see para. [0014]), and which “[a]fter cooling” causes the control unit 22 to be “packed in the receiving space 211,” would be anything other than a waterproof seal for the switch body. Applicant’s unfounded contention is not only incorrect, but it fails to make any attempt at all to adequately and appropriate rebut Examiner’s findings and rejection. Applicant further fails to present any argument or evidence pertaining to modification of Chen to include a webbed wiring harness which is dipped into a liquid silicone to form, in part, a waterproof seal, as is taught by Rapisarda. Applicant further fails to present any argument or evidence pertaining to Examiner’s findings and motivation to combine the references in view of common knowledge.
As Applicant’s response fails to appropriately capture all the subject matter originally claimed, fails to present an argument consistent with the scope of the instant claims, and fails to present any form of logical reason or evidence as to why the prior rejection contained reversible error, Examiner finds that the instant rejection, modified as necessary in view of Applicant’s amendments, remains appropriate.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “concave cavity opening” of claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Examiner notes that Applicant specifically identifies this opening as “not shown in the figures” on page 12 of the Specification as filed. This is not acceptable under the circumstances because it is unclear how this “opening” differs from the previously recited “wiring slot notch” which appears to be nothing more than an opening in to the concave cavity.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because abstract exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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 7 is 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 7, Applicant recites “a webbed wiring harness having an end disposed in the concave cavity of the silicone shell through the wiring slot notice, the end of the webbed wiring harness being immersed in a liquid silicone to form an immersed portion such that the webbed wiring harness may be electrically connected to the PCB….”
This portion of the claim renders the subject matter indefinite because there is more than one plausible claim construction. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008). Here, the cited portion may be interpreted in at least the following manners:
A webbed wiring harness having an end disposed in the concave cavity of the silicone shell through the wiring slot notch, such that the webbed wiring harness may be electrically connected to the PCB, wherein the end of the webbed wiring harness is immersed into a liquid silicone portion to form an immersed portion.
A webbed wiring harness having an end disposed in the concave cavity of the silicone shell through the wiring slot notch, the end of the webbed wiring harness being immersed in a liquid silicone to form an immersed portion, the immersed portion being provided such that the webbed wiring harness may be electrically connected to the PCB.
Since both of the above are plausible interpretations of new claim 7, resulting from the grammar of the claim as filed, claim 7 is indefinite.
Applicant further recites “the immersed portion of the liquid silicone” in claim 7. There is no antecedent basis for this limitation. The “immersed portion” is not “of the liquid silicone,” but is instead the immersed portion of the webbed wiring harness. It is unclear how a liquid would form an immersed portion of itself, thus this limitation also renders claim 7 indefinite.
Finally, Applicant recites “wherein the immersed portion of the liquid silicone is cooled to form a waterproof seal for the temperature controller body.” This amounts to an omission of an essential element required to form “a waterproof seal for the temperature controller body.” While the immersed portion of the webbed wiring harness does, in fact, form a portion of the waterproof seal, the disclosure as filed makes unmistakably clear the need for a second, poured portion of liquid silicone. This second, poured portion of liquid silicone is provided directly in the cavity of the silicone shell, thereby covering the electrical components therein which cannot be covered or otherwise waterproofed by the portion of liquid silicone that constitutes the immersed portion of the webbed wiring harness. As a waterproof seal for the temperature controller cannot be formed only by the immersed portion, claim 7 is indefinite for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2017/0013889 (“Chen”) in view of U.S. Patent No. 9,557,049 (“Rapisarda) and common knowledge in the art, as best understood by Examiner in view of the rejections under §112.
Regarding claim 7, Chen discloses:
A machine washable (abstract) temperature controller body (FIGS, temperature control switch 2), comprising:
a silicone shell (FIG 2:21, para. [0014]) having a concave cavity (receiving space 211),
a printed circuit board (PCB) (control unit 22) disposed in the concave cavity (see FIG 4),
a wiring slot notch (see annotated FIG 4, below, where the curved surfaces adjacent to the wires within the added black box represent “a wiring slot notch”) disposed on a side of the silicone shell (as seen, it is positioned adjacent to the side wall and, thus, is “disposed on a side”) and spatially connected to the concave cavity (as shown by FIG 4),
a silicone support plate (the portion of switch body 21 extending downwardly toward protective pad 4 constitutes “a silicone support plate” because it is made of silicone and provides support to the wires 23) disposed on the silicone shell at a position adjacent to the wiring slot notch (as shown in FIG 4), and
a webbed wiring harness (as seen in FIG 2, the wiring appears to be a webbed wiring wherein individual strands are joined together by a webbed conductor insulation layer) having a first portion (inherent) comprising a first end (inherent) disposed in the concave cavity of the silicone shell through the wiring slot notch (upper ends of wires, 23, are shown within the cavity through the wiring slot notch, as seen in FIG 4) such that the webbed wiring harness may be electrically connected to the PCB (as shown);
wherein the first portion is further disposed within the concave cavity or disposed on a surface of the silicone support plate (inherent; as the “first portion” is an arbitrary designation of a portion of the wiring harness, it may be arbitrarily selected such that it is in the cavity, adjacent to the silicone support plate, or some combination thereof); and
wherein a volume of liquid silicone is poured into the concave cavity (24; see para. [0014]); and
wherein the volume of liquid silicone is cooled (para. [0014]; “after cooling”) to form a waterproof seal (inherent; as disclosed, the controller is machine washable and one of ordinary skill would therefore infer that the silicone poured into the shell forms a waterproof seal once it has cooled, otherwise the PCB and internal wiring would be subject to corrosion or damage from water when washed) for the temperature controller body.
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Chen does not disclose the end of the wiring harness being dipped into a liquid silicone to form an immersed portion, wherein placement of the first end results in the immersed portion being within the cavity or disposed on a surface of the silicone support plate.
Rapisarda discloses a machine washable garment having LED assemblies affixed to the garment, wherein the wiring which is connected to the LEDS is dipped in a waterproofing material to form a dipped seal. While Rapisarda does not elaborate on why dipping is utilized or how it would provide waterproofing, those of ordinary skill in the art would know that a low-viscosity waterproofing material, such as silicone, is able to more easily enter and fill minor interstitial areas and gaps prior to being cured. This helps to ensure a better waterproof seal once the silicone is cured.1
It would have been obvious to one of ordinary skill in the art to modify Chen by dipping the first portion of the wiring harness into a first volume of silicone for the purposes of filling small gaps or interstitial areas in the wire insulation, between adjacent wires, and/or between wires and the housing in which they are placed, thereby providing a more effective waterproof seal once the silicone is cured.
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.
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, 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
1 See, e.g., U.S. Patent No. 4,978,694 to Vincent et al.
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