DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claims 2-4 are rejected under 35 U.S.C. 112(a) 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.
Regarding claim 2, the device as claimed including both 1) per claim 1, “the female-side contact portion is bent outward in a radial direction intersecting the axial direction with the base portion as a bending starting point and applies a contact load to the male-side contact portion in an insertion state in which the male-side contact portion is inserted into the insertion space and 2) “the female-side contact portion and the male-side contact portion are formed in such a way that an inner diameter of the female-side contact portion < an outer diameter of the male-side contact portion” 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.
In an inserted state, which is a requirement of claim 1, the diameter of the female contact portion can not be less than the diameter of the male side contact portion, as claimed in claim 2. The claim requires a geometric impossibility. The male terminal cannot be inside the female terminal if the diameter of the female terminal is less than the diameter of the male terminals.
The breadth of the claims; This factor does not support or negate the fact that the male terminal cannot be inside the female terminal where/when the diameter of the female terminal is less than the diameter of the male terminal.
(B) The nature of the invention; This factor does not support or negate the fact that the male terminal cannot be inside the female terminal where/when the diameter of the female terminal is less than the diameter of the male terminal.
(C) The state of the prior art; no prior art is known that discloses the claimed invention.
(D) The level of one of ordinary skill; One with ordinary skill could not make the claimed invention.
(E) The level of predictability in the art; This factor does not support or negate the fact that the male terminal cannot be inside the female terminal where/when the diameter of the female terminal is less than the diameter of the male terminal.
(F) The amount of direction provided by the inventor; No direction for making the claimed invention is given.
(G) The existence of working examples; no working examples are known.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. No amount of experimentation would result in the claimed invention.
MPEP section 2164.01(a); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Regarding claim 3, the device as claimed including 1) Per claim 1, the female-side contact portion is bent outward in a radial direction intersecting the axial direction with the
base portion as a bending starting point and applies a contact load to the male-side contact portion in an insertion state in which the male-side contact portion is inserted into the insertion space and 2) per claim 3 “ an inner diameter of the indent portion < an outer diameter of the male-side contact portion” 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.
In an inserted state, which is a requirement of claim 1, the inner diameter of the indent portion cannot be less than the diameter of the male side contact portion, as claimed in claim 2. The claim requires a geometric impossibility. The male terminal cannot be inside the indent portion if the diameter of the indent portion is less than the diameter of the male terminal.
The breadth of the claims; This factor does not support or negate the claimed limitation.
(B) The nature of the invention; This factor does not support or negate the fact that the male terminal cannot be inside the indent portion where/when the diameter of the indent portion is less than the diameter of the male terminal.
(C) The state of the prior art; no prior art is known that discloses the claimed invention.
(D) The level of one of ordinary skill; One with ordinary skill could not make the claimed invention.
(E) The level of predictability in the art; This factor does not support or negate the fact that the male terminal cannot be inside the indent portion where/when the diameter of the indent portion is less than the diameter of the male terminal.
(F) The amount of direction provided by the inventor; No direction for making the claimed invention is given.
(G) The existence of working examples; no working examples are known.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. No amount of experimentation would result in the claimed invention.
MPEP section 2164.01(a); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
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 1-5 are rejected under 35 U.S.C. 112. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC 112. Ex parte Lyell, 17 USPQ.2d 1548 (Bd. Patt. App. & Inter. 1990). The purpose of 35 U.S.C. 112 is to require patentee to provide others with notice of boundaries of protection provided by patent. A manufacturer or seller, at time of making or selling a device like that set forth in the claims would have no indication of whether it might later be sued for contributory infringement if the device was used in accordance with claimed process of use. Therefore the claims are not sufficiently precise that possibility of infringement may be determined with reasonable degree of certainty. Ex parte Lyell, 17 USPQ.2d 1548 (Bd. Patt. App. & Inter. 1990); MPEP section 2173.05(P).
Claim 1 requires that “the female-side contact portion is bent outward in a radial direction intersecting the axial direction with the base portion as a bending starting point and applies a contact load to the male-side contact portion in an insertion state in which the male-side contact portion is inserted into the insertion space.” The limitation that “the female-side contact portion is bent outward . . .” is a method step of using the apparatus. This limitation is not met until the female and male contact are positively mated. Possessing the female terminal and the male terminal as claimed in an unmated state would not infringe on the claim. Infringement of the claim would only occur when the female terminal and male terminal are mated and the female terminal is bent radially outward. If this limitation is not considered to be a method step of using the apparatus, then it remains unclear when/what exactly the limitation requires and when/how infringement would occur. It is unclear whether infringement would occur only when the terminals are mated or whether infringement would still occur when terminals are not mated and the female terminal sidewalls are not bent outward. Correction is required.
Regarding claim 3, the limitation of “an inner diameter of the indent portion” is ambiguous. It is unclear how this measurement is being defined. As disclosed, there is no corresponding indent 180 degrees opposite to an indent. The line L1 in figure 4 extends from an indent on one side to empty space on the opposite side. The “diameter of the indent portion” is undefined.
Claim Rejections - and 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over Varrin US 3406376 in view of Powell US 4209895.
Regarding claim 1, Varrin discloses a connection terminal comprising:
a male terminal 11 including a male-side contact portion
formed in a cylindrical shape; and
a female terminal including a female-side contact portion 10 formed in a cylindrical shape and having a linear slit (see at 10c/10d in figure 3) formed in an axial direction, wherein
the female terminal has an insertion space formed inside the female-side contact portion and into which the male-side contact portion is inserted, and
a base portion (labeled BP in annotated figure 3 below) located at a position facing the slit across the insertion space.
The female-side contact portion is capable of being bent outward in a
radial direction intersecting the axial direction with the base portion as a bending starting point and applies a contact load to the male-side contact portion in an insertion state in which the male-side contact portion is inserted into the insertion space.
Varrin does not specifically disclose that the female side contact is bent outwards when used with the male terminal. Powell discloses that in use with a male terminal, female terminals such as taught in Varrin (col. 1, lines 30-40) have the female terminal sidewalls deflect outwardly about a single point D opposite the slot (Powell at col. 2, lines 50-65, figure 1). It would have been obvious to size the Varrin male terminal 11 such that the sidewalls of the Varrin female terminal are flexed outwardly, as noted in Powell. The reason would have been to provide a secure reliable electrical connection between the male and female terminals as was known in the art.
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Allowable Subject Matter
Claim 5 might 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, depending on how the rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS GUSHI whose telephone number is (571)272-2005. The examiner can normally be reached on Monday-Thursday, 8:30 - 5:00.
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/ROSS N GUSHI/Primary Examiner, Art Unit 2834
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