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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in present Application filed on May 07, 2024.
Information Disclosure Statement
The information disclosure statements filed April 11, 2024 have been submitted for consideration by the Office. It has been placed in the application file and the information referred to therein has been considered.
Applicants must continue to share prior art references throughout the patent application process. A supplemental IDS must be submitted if prior art is discovered through a foreign patent application or an International Patent Search, or a related application before a prosecution closes.
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.
Claims 1-4 are 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.
Rejection of claim 1, the limitations “a corrugated tube protection member disposed at an inner periphery of a corrugated tube” and “a body part formed into a cylindrical shape in which a wire harness is inserted and arranged” are indefinite for failing to particularly point out and distinctly claim the subject matter.
It is not clear what is inserted in the protection member. Is it corrugated tube or a wire harness?. Claim has to clarify properly.
Furthermore, the limitation “the pair of divided members are connected to each other by a hinge disposed at a circumferential end edge and a leaf spring disposed so as to span the hinge, and can be opened and closed via the hinge and the leaf spring can be opened and closed via the hinge and the leaf spring” is indefinite for failing to particularly point out and distinctly claim the subject matter.
Use of “can” makes claim indefinite. it is not clear if Appellants intended the "can be" claim limitation to be optional or that the phrase should be interpreted as a definite statement. Also The verb form of the word "can" carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability. “Can” defines probability or possibility.
Therefore, claim 1 is indefinite.
Note: proper term for limitation is “configured to” which should have underlying necessary structure in the claim, not in specification, see MPEP.
Rejections of claims 2-4, claims 2-4 are rejected by the same reason applied to the rejection of claim 1 above.
Rejection of claim 3, the limitation “wherein the pair of divided members include a lock part and a locked part that can engage with the lock part when the pair of divided members are closed” is indefinite for failing to particularly point out and distinctly claim the subject matter.
See explanation as mentioned in the rejection of claim 1 above regarding use of “can”; also, note that according to figures, when the pair of divided members are closed, the pair of divided members include a lock part and a locked part that already engaged with the lock part, see figure 3. Therefore, use of “can” is improper.
Rejection of claim 4, the limitation “wherein the pair of divided members include a groove part that can house the leaf spring when the pair of divided members are closed” is indefinite for failing to particularly point out and distinctly claim the subject matter.
See explanation as mentioned in the rejection of claim 1 above regarding use of “can”; also, note that according to figures, when the pair of divided members are closed, the pair of divided members include a groove part that already housed the leaf spring, see figure 3. Therefore, use of “can” is improper.
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-AlA) 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 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 1-3 are rejected under 35 U.S.C.103 as being unpatentable over Santin et al. (US20080148535, herein referred to as Santin) and Sheppard et al. (US20190032817, herein referred to as Sheppard).
Note: Rejection under USC 103 below is given to advance prosecution, however, a proper clarification or amendment is required under rejection of USC 112 above to consider the rejection of USC 102 below.
Rejection of claim 1, Santin discloses a tube protection member disposed at an inner periphery of a tube,; the tube protection member (see figures 4-5, 8-10 and 15 of Santin) comprising:
a body part formed into a cylindrical shape in which the tube is inserted and arranged; wherein the body part is constituted by a pair of divided members divided along a length direction of the wire harness, and the pair of divided members are connected to each other by a hinge disposed at a circumferential end edge and a leaf spring disposed so as to span the hinge, and can be opened and closed via the hinge and the leaf spring (see a cylindrical shaped body part includes divided parts (jaws 810, figure 8) wherein the divided parts are connected to each other by a hinge (hinge 820) and a bending spring (spring 830) which used for open and close the body part).
Salacuse does not disclose a corrugated tube protection member disposed at an inner periphery of a corrugated tube; a body part formed into a cylindrical shape in which the corrugated tube is inserted and arranged (note that modified structural meaning is given to overcome 112 rejection and advance prosecution; however, proper amendment is required to consider the rejection under USC 103)
Sheppard discloses a corrugated tube protection member disposed at an inner periphery of a corrugated tube; a body part formed into a cylindrical shape in which the corrugated tube is inserted and arranged ( see corrugated tube is inserted and arranged in the protection member in figure 1 of Sheppard).
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the protection member of Santin to have the tube as corrugated tube as taught by Sheppard because flexible conduits are made as flexible metallic conduits, flexible plastic conduits or flexible plastic conduits that are lengthwise slit parallel to the through axis along its length. To improve flexibility, flexible conduits often have a corrugated external surface, internal surface may also be corrugated to further increase flexibility (paragraph 0004 of Sheppard).
Rejection of claim 2, Santin in view of Sheppard disclose the corrugated tube protection member according to claim 1, wherein when the pair of divided members are opened, a top part of the leaf spring protrudes in a direction away from the hinge and when the pair of divided members are closed, the leaf spring is in accordance with a shape along an inner peripheral surface of the divided members (see the leaf spring in open and close condition in the figures of Santin).
Rejection of claim 3, Santin in view of Sheppard disclose the corrugated tube protection member according to claim 1, wherein the pair of divided members include a lock part and a locked part that can engage with the lock part when the pair of divided members are closed (see the divided parts in the figure 10 of Santin).
Allowable Subject matter
Claim 4 has limitation “ wherein the pair of divided members include a groove part that would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Pertinent Prior Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case, all of which disclose various protection members.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PARESH PAGHADAL whose telephone number is (571)272-5251. The examiner can normally be reached 7:00AM-4:00PM, Monday - Thursday.
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/PARESH PAGHADAL/Primary Examiner, Art Unit 2847