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 Objections
Claim 3 is objected to because line 1, “wherein” seems repeated in line 2. Therefore, any one of the occurrence of “wherein” should be deleted. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/299776 hereafter ’776. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of an instant application is equivalent to claims 1 and 19 of co-pending application no. ’776.
Claims 2 and 3 of the instant application is equivalent to claim 5 of co-pending application no. ’776.
Claim 8 of the instant application is equivalent to claim 15 of co-pending application no. ’776.
Claim 11 of the instant application is equivalent to claims 1 and 26 of co-pending application no. ’776.
Claims 16 and 17 of the instant application is equivalent to claim 1 of co-pending application no. ’776.
Only few claims comparison is noted here.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
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 1-7, 11 and 14-18 are rejected under 35 U.S.C. 102(a0(1) as being anticipated by Ebisawa et al. (US 2023/0291153) hereafter Ebisawa (having priority date of 08/04/2020 of JP 2020-132508) hereafter Ebisawa.
Regarding claim 1, Ebisawa, discloses a connector device 1, 101 comprising: a first connector 1; and a second connector 101 fitted to the first connector 1, wherein the first connector 1 comprises: a first contact 61 comprising a first type contact 61 and a second type contact 71 configured to transmit a high frequency signal of a higher frequency than a signal transmitted by the first type contact 61, wherein the first contact 61 is electrically connected to a conductor of a first board (not shown but is substrate, see paragraph [0069], an insulating first housing 11 configured to hold the first contact 61, and a first shell 50 comprising a first side portion 52 and a bottom portion 54, wherein the first side portion surrounds an outer periphery of the first housing 11, wherein the bottom portion 54 is continuous with an end portion of the first side portion in a direction close to the first board, wherein the bottom portion 54 extends along the first board within a region surrounded by the first side portion, and wherein the first shell 50 is electrically connected to a ground conductor of the first board, wherein the second connector 101 (figs. 6-7comprises: a second contact 161 electrically connected to a conductor of a second board (substrate see paragraphs [0069] and [0117], not shown), an insulating second housing 111 configured to hold the second contact 161, and a second shell 150 comprising a second side portion and an upper portion 153, wherein the second side portion surrounds an outer periphery of the second housing 111 (see fig. 7), wherein the upper portion is continuous with an end portion of the second side portion in a direction away from the second board, wherein the upper portion 153 extends within a region surrounded by the second side portion, and wherein the second shell 150 is electrically connected to a ground conductor of the second board (substrate, see paragraphs [0097] and [118]), and wherein in a state where the first connector and the second connector are fitted to each other, the first contact comes into contact with the second contact, the first side portion comes into contact with the second side portion, and the bottom portion comes into contact with the upper portion (see fig. 14).
Regarding claim 2, Ebisawa, discloses the first side portion surrounds the outer periphery of the first housing 11 to have a substantially quadrangular shape in a plan view, wherein the first side portion 50 comprises a pair of first side wall portions 50a, 50c and a pair of first end wall portions 50b, wherein the pair of first side wall portions extend along a longitudinal direction on the outer periphery of the first housing, wherein the pair of first end wall portions are continuous with the pair of first side wall portions and extend along a direction orthogonal to the longitudinal direction on the outer periphery of the first housing, and wherein the first contact is disposed within the region surrounded by the first side portion (see fig. 2).
Regarding claim 3, Ebisawa, discloses the second side portion surrounds the outer periphery of the second housing (see fig. 7) to have a substantially quadrangular shape in a plan view, wherein the second side portion comprises a pair of second side wall portions and a pair of second end wall portions, wherein the pair of second side wall portions extend along a longitudinal direction on the outer periphery of the second housing, wherein the pair of second end wall portions are continuous with the pair of second side wall portions and extend along a direction orthogonal to the longitudinal direction on the outer periphery of the second housing, and wherein the second contact is disposed within the region surrounded by the second side portion.
Regarding claim 4, Ebisawa, discloses wherein the bottom portion 18b comprises a coupling portion 56 configured to couple the pair of first side wall portions 50a, 50c each other.
Regarding claim 5, Ebisawa, discloses the coupling portion 56 is provided along the first board to divide a region where the first type contact 61 is disposed and a region where the second type contact 71 is disposed.
Regarding claim 6, Ebisawa, discloses the coupling portion 16, 56 comprises a partition wall portion 16, wherein the partition wall portion 16 is erected in a direction away from the first board, and wherein the partition wall portion 16 is configured to partition the first housing 11 into a first type 61 holding area 15 that holds the first type contact 61 and a second type holding area 16a that holds the second type contact.
Regarding claim 7, Ebisawa, discloses the bottom portion 54 comprises an engaging portion (upper portions of) 50b, 50c configured to protrude in a direction away from the first board, and wherein the upper portion comprises an engaged portion (upper surface of 50a, 50b, 50c 50d) engaged with the engaging portion (corresponding part of the second connector) in the state where the first connector and the second connector are fitted to each other.
Regarding claim 8, Ebisawa, discloses a pair of the engaging portions are provided to sandwich the second type contact (see fig. 13a, 13b, 13c)).
Regarding claim 11, Ebisawa, discloses the bottom portion is directly connected to the ground conductor of the first board.
Regarding claim 14, Ebisawa, discloses the first shell is formed by drawing a metal plate, so that the first side portion and the bottom portion are formed integrally without a joint between the first side portion and the bottom portion.
Regarding claim 15, Ebisawa, discloses the first shell is formed by square tube drawing.
Regarding claim 16, Ebisawa, discloses the second shell is formed by drawing a metal plate, so that the second side portion and the upper portion are formed integrally without a joint between the second side portion and the upper portion.
Regarding claim 17, Ebisawa, discloses the second shell is formed by square tube drawing.
Regarding claim 18, Ebisawa, discloses the first side portion 50 comprises a protrusion portion 51a protruding inward from an inner peripheral surface of the first side portion 50 facing the first housing 11, and wherein the protrusion portion 51a presses the second side portion 152c in the state where the first connector 1 and the second connector 101are fitted to each other (see fig. 14).
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.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ebisawa.
Regarding claims 12 and 13, Ebisawa, discloses all the claimed subject matter except for the first housing is formed integrally with the first contact by insert molding of a resin material, and the second housing is formed by injection molding of a resin material.
Examiner took official notice that “the first housing is formed integrally with the first contact by insert molding of a resin material, and the second housing is formed by injection molding of a resin material” is a product-by-process claim and even though such claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, as in the present situation, the claim is unpatentable even though the prior product was made by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
It is also to be noted that insert molding and injection molding with resin material is well known with preferred material in order to have ease of manufacturing at lower cost.
Allowable Subject Matter
Claims 9-10 are 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.
Regarding claim 9, the prior art of record does not disclose or teaches a connector device comprising a second housing comprises a locking hole, wherein an upper portion comprises a locking portion extending toward a second board, and wherein the locking portion is fixed into the locking hole as required in combination with other limitations of this claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO 892.
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/HARSHAD C PATEL/Primary Examiner, Art Unit 2831
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