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 .
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 “plurality of extension holes extending along a first direction intersecting the front-end surface” as recited by claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Examiner notes that none of the cross-sectional depictions (e.g., FIGS 3 and 4) show the hole structure at all. In paragraph [0048], Applicant provides that “insertion holes 4f of the first insertion hole array F1 are open toward the same direction as the first disposition surface 4m on the first disposition surface 4m.” First disposition surface 4m is perpendicular with respect to the surface on which holes 4f are provided. Thus, holes 4f cannot possibly be open “toward the same direction” as a surface. Applicant continues, stating that “in the first disposition surface 4m, the insertion hole 4f is a groove.” Despite this, FIG 4 fails to show the hole in any clear or conspicuous manner. It is not readily apparent from the drawings or disclosure whether holes 4f extend all the way from surface 4d to surface 4e, or stop somewhere in between. Moreover, the shaded region which borders element 4m is not identified at all, making it unclear what the shaded region is meant to depict.
Moreover, the groove 4s, as shown in FIG 2, does not appear to extend the entire distance between surfaces 4d and 4e. As shown, groove 4s does not even extend all the way to first connection surface 4j; thus, it is unclear how FIGS 2 and 4 could possible depict the same subject matter (as is alleged by the Specification) because claim 4 shows the body portion 81a of conductor 8 extending along the entire distance from 4d to 4e, while being recited as disposed in the groove 4s which is never shown as fully extending between the same surfaces. The same may be said of FIG 5. As the alleged depictions within FIGS 2, 4, and 5 present an unresolved conflict of subject matter, the same figures are objected to by Examiner for a failure to show the claimed subject matter.
In addition to the above, the drawings as filed completely fail to depict the subject matter disclosed by claim 7. Claim 7 recites integral formation of the conductor “by one plate-shaped member.” None of the figures show the conductor 8 being formed as one plate-shaped member, but instead show three plate shaped members, 81a, 81b, and 81c, along with protruding portions 82. Thus, none of the figures can be reasonably asserted to depict one integrally formed conductor where the conductor is plate shaped. At absolute best, the figures depicts an integrated conductor formed from a plurality of plate-shaped members.
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.
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 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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites a ferrule (“a housing”) for a connector having a plurality of holes on a front-end surface (“a mating surface”), wherein a conductor is disposed within groove between a pair of adjacent holes of the plurality of holes, the conductor having protrusions extending away from the mating surface. There is no recitation of any structure that would connect the wires to the conductor.
Claim 2 further provides that the plurality of holes comprise a first array of holes and a second array of holes adjacent to the first. The conductor is provided between the first and second array of holes, as well as having extensions between selected pairs of adjacent holes in each of the first and second arrays of holes. There remains no recitation of how the wires are connected to the conductor or any of its body regions.
Claim 3 provides further structural details of the body regions but fails to recite any connection of the wires to the conductor.
Claims 4-6 provide further structural details of the conductor and its protrusions but fails to recite any connection of the wires to the conductor.
Claim 7 asserts that the conductor is formed integrally by one plate-shaped member but fails to recite any connection of the wires to the conductor.
Claims 8-10 recite other various details of the connector but fail to recite any connection of the wires to the conductor.
Claims 11-13 disclose a mating connector and structural details of the mating arrangement but fail to recite any connection of the wires to the conductor.
It is evident that the claims fail to recite an appropriate structural relationship between the conductors of the connector and the conductive wire to which it is connected. While those of ordinary skill may typically be able to infer how these wires are connected to the conductor, such is not the case with the instant application. Examiner notes that the only discussion of a relationship between the wires and the conductors within the Specification as filed refers to “a proximity” of the wires to the conductor, the proximity providing for a reduction in noise.
Significantly, however, proximity to an element does not require or inhere connection to the element. Thus, there is no disclosure at all of the necessary connection between the wire and the conductor. Additionally, it is unclear how one of ordinary skill would even connect wires to the conductors without creating a short circuit. For example, wire 52 is disclosed as being a ground electrode, while wire 62 is disclosed as a “working” (i.e., “signal”) electrode. As shown by FIG 4, the conductor 8 includes body portions 81a, 81b, and 81c. It is unclear how one of ordinary skill would connect wires to any portion of the conductor without creating a short circuit. While FIG 3 appears to depict a small, unlabeled gap between wires 51 and 52 (and extending vertically through the gap between wires 61 and 62), this does not resolve the direct contact of the conductor between wires 51 and 61 or wires 52 and 62. Even assuming, arguendo, that wires 52 and 62 are both signal wires, they would nonetheless short with each other and fail to send their respective signals to the mating connector.
Moreover, FIG 5 appears to negate or otherwise conflict with the potential gap depicted in FIG 3. FIG 5 shows that adjacent portions of the first body region directly contact each other, and thus every single wire of the instant connector would, if connected to the conductor 8, be shorted to ground or otherwise be rendered unfit for transmission of power or signals.
Setting aside all of the above, it is not even clear if the wires are in fact connected to conductor 8. Wires are disclosed as represented electrodes, and thus it is entirely conceivable that “conductor 8” is actually a shield that is not connected to the wires, but is instead connected to ground via mating pads on the mating connector.
Enablement of the claims is evaluated under the Wands factors. These include (A) the breadth of the claims, (B) the nature of the invention, (C) the state of the prior art, (D) the level of one of ordinary skill, (E) the level of predictability in the art, (F) the amount of direction provided by the inventor, (G) the existence of working examples), and (H) the quantity of experimentation required to make or use the invention based on the content of the disclosure.
For factor (A), the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. MPEP §2164.08. Here, the scope of the claims is effectively indeterminate because Applicant has neither claimed nor disclosed any clear or cognizable connection between the wires which carry the ground and working signals and the conductor which is the only disclosed means for transmitting an electrical signal between mating connectors of the claims. As the claim does not specify any connection, the claim effective covers any and all reasonable connections. Here, it is unclear if there are any reasonable connections since connection of the wires to the disclosed conductor would seemingly result in one or more shorted circuits; as a result, there do not appear to be any operative embodiments within the disclosure as filed.
The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The standard is whether a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative or operative with expenditure of no more effort than is normally required in the art. Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984) (prophetic examples do not make the disclosure nonenabling). [C]laims reading on significant numbers of inoperative embodiments would render claims nonenabled when the specification does not clearly identify the operative embodiments and undue experimentation is involved in determining those that are operative. Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984); In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971).
Here, there is no apparent disclosure of even a singular operative embodiment. The disclosure is silent regarding any operative connection between wires and the conductor or its constituent portions. Merely connecting all of the wires to a respective closest portion of the conductor would not yield a functioning connector, but would instead result in multiple short circuits. To form any sort of functional connector from the instant disclosure would require substantial modification to one or more elements of the disclosed device.
As there is no disclosure, discussion, or meaningful suggestion of how to produce an operable embodiment for the instant subject matter, Examiner finds that factor (A) strongly favors a finding of nonenablement.
For factors (B) and (C), the relevant concern is whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. MPEP §2164.05(a). The nature of the invention is, effectively, the subject matter to which the claims pertain. This is the backdrop for evaluation of the state of the art (as well as for factor (D), the level of one of ordinary skill). The state of the prior art provides evidence for the degree of predictability in the art and is related to the amount of direction or guidance needed in the specification as filed to meet the enablement requirement. Id.
Here, the claimed subject matter is a connector configured to receive a flat cable and provide an electrical connection to surface mounted ground electrode. There is no recitation of a signal connection, further evidencing a lack of discernable scope for the claimed subject matter. There are entire subclasses dedicated to the various types of connectors that may provide for a connection between a flat cable and a surface mounted electrode on a printed circuit board. None of these subclasses appear to contemplate how one would provide a plurality of wires and a conductor, without connecting the wires to the conductors, and still transmit any form of signal from one connector to a mating connector.
The specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). As discussed above, it is unclear how the wires would be connected to the conductor, or if the wires are connected to the conductor. While connection of a wire to a conductor is well-known, as are the means and methods for doing so, it cannot be said that it is well-known to connect a diverse grouping of wires to the same conductor if the goal of the connections is anything other than creating a shorted circuit.
In view of the above, Examiner finds that factors (B) and (C), at least slightly favor a finding of nonenablement.
For factor (D), the relevant concern is the skill level of those in the art in the technological field to which the claimed invention pertains. The level of ordinary skill can be highly subjective and, here, does not bear any substantial weight. Regardless of skill level, it seems unlikely that the skilled practitioner would be able to immediately conceive or otherwise reasonably experiment to find a manner of connecting the instant disclosed wires to the instant disclosed conductor without creating a short and rendering the connector unsuitable for its purpose of communicating power and/or data. Thus, Examiner finds that factor (D) is neutral with respect to enablement.
For factors (E) and (F), the relevant concern is the amount of guidance or direction needed to enable the invention, which is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling. See, e.g., Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1326 (Fed. Cir. 2004).
Here, there does not appear to be any knowledge in the prior art indicating how to connect plural wires to a singular conductor without creating a short that would render the connector unsuitable for its intended purpose. As a result, the prior art cannot be reasonably relied on to predict or otherwise suggest how to produce a working connector from the instant disclosure. Additionally, Applicant provides zero guidance on how to do so. As such, Examiner finds that factors (E) and (F) strongly favor a finding of nonenablement.
For factor (G), the relevant concern is whether the examples provided by Applicant are sufficient to enable those of ordinary skill to make and use the claimed invention. See MPEP §2164.02. Here, Applicant provides no examples of how the wires would be connected to the conductor. Applicant has disclosed nothing more than structural details of the claimed connector and structural details of how it is mated with a corresponding mating connector. There is nothing that suggests or otherwise discloses how the disclosed wires are connected to the only disclosed conductor. Thus, Examiner finds that factor (G) strongly favors a finding of non-enablement.
Finally, for factor (F) the relevant concern is whether the amount of experimentation required to make and use the claimed invention is “undue.” While one of ordinary skill might be able to make a connector to the specifications of the instant claims, it is entirely unclear how the connector would be put to use as there is no disclosure of a functional or operational connection between the wires and the sole disclosed conductor. Thus, Examiner finds that factor (F) favors a finding of nonenablement.
As detailed above, none of the Wands factors favor a finding of enablement; at best, some factors are neutral. It is evident, however, that the majority of the factors favor a finding of nonenablement and, thus, Examiner concludes that claims 1-13 as filed are not enabled.
Claims 1-13 are also 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “ferrule” in independent claim 1 (as well as dependent claims 3, 12, and 13) is used by the claim to mean “a housing1,” while the accepted meaning is “a ring or cap usually of metal put around a slender shaft (such as a cane or a tool handle) to strengthen it or prevent splitting2.” The term is indefinite because the specification does not clearly redefine the term.
Applicant additionally uses the term “a groove” in independent claim 1, but it is unclear what meaning the term is meant to have. A “groove” is defined by Merriam-Webster as “a long narrow channel or depression.” A groove must inherently have a bottom surface and two side surfaces. Examiner is unable to find any portion of the disclosure which would depict or provide support for use of the term “groove.” Instead, the ferrule/housing 4 appears to be completely hollow (see FIG 4). It would appear that, rather than a groove, Applicant is disclosing “a gap.” The term “gap” is defined by Merriam-Webster as “a break in a barrier” or “a separation in space.” While FIG 2 appears to depict “grooves 4s” as having walls, there is no corresponding depiction of walled grooves in any other figure. Indeed, FIG 4 depicts surface 4j, but does not depict any surfaces which would correspond to walls of groove 4s. FIGS 1 and 3 depict structure which may only be construed as “gaps” between arrays F1 and F2 as well as “gaps” between selected pairs of insertion holes. As Applicant’s selected term, “a groove,” does not appear to comport with the disclosure as filed, Examiner finds that use of the term also renders the claim indefinite.
Claims 2-13 depend from claim 1 and are therefore rejected for at least the same reason.
Claim 1 is further rejected for a lack of definiteness because limitations of the claim may be plausibly interpreted in multiple ways. “[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, “a plurality of insertion holes extending along a first direction intersecting the front-end surface” in lines 2-3 of the claim as filed. This limitation may be plausibly and reasonably interpreted in at least two ways: (1) a ferrule comprising a front-end surface and a plurality of holes intersecting the front-end surface, wherein the plurality of holes are provided along a first direction; (2) a ferrule comprising a front-end surface and a plurality of holes provided on the front-end surface, wherein the plurality of holes have a depth that extends along a first direction intersecting the front-end surface.
As there are at least two plausible constructions for the claim limitation, the claim is indefinite. Claims 2-13 depend from claim 1, fail to cure this deficiency, and are therefore rejected for at least the same reason.
Regarding claim 7, Applicant recites “the conductor is integrally formed by one plate-shaped member.” It is unclear how a singular conductor, formed of a singular member, might be formed “integrally.” Integral formation inheres the presence of multiple parts, not a singular element. As Applicant does not recite any other element with which the conductor might integrate with, Examiner finds that claim 7 is indefinite. Appropriate corrections are required.
Claim Interpretation
The claims as filed are so deficient with respect to the requirements of §112 that Examiner is unable to reasonably ascertain the scope of subject matter which Applicant considers to be the present invention. As detailed above, the claimed subject matter not only fails to meet the enablement requirement but is also indefinite for other reasons. Examiner has attempted to conduct a search for the claimed subject matter based on the disclosure as filed, but it is unclear whether any of the prior art identified by Examiner would anticipate or render obvious the unenabled and indefinite subject matter. As a result, Examiner cannot reasonably provide a meaningful analysis of the instant claims in view of the prior art at this time. This is not an indication of allowable subject matter. Examiner will reevaluate the claimed subject matter upon receipt of amendments and/or arguments that adequately address or otherwise overcome the rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Those documents cited, but not discussed above, generally pertain to the instant subject matter as best understood by Examiner.
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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/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 See, e.g., FIG 1 where housing element 4 is erroneously called “a ferrule” throughout the instant disclosure. Housing element 4 would not be construed as “a ferrule” by one of ordinary skill as it is not circular or ring-shaped.
2 Definition provided by Merriam-Webster.
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