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 Interpretation
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The translation gives rise to pervasive issues of clarity and definiteness, and thus Examiner believes it to be necessary to discuss the disclosure as filed and how the claims have been interpreted in light of the disclosure.
In independent claim 1, Applicant recites “a connector” as having a first and a second portion which have respective first and second “locking features.” In independent claims 19 and 20, Applicant recites “a connector” having “first locking features” and “second locking features.” In all three claims, said locking features “engage” with their respective first or second circuit board. There is no clear support for any of these claimed configurations.
It appears that FIGS 8-15 and corresponding paragraphs [0083-92] are the intended basis for the instant claims. Applicant clearly defines elements 105 and 250 are “boards.” Each of these boards is referred to as “a female board” (see, e.g., paras. [0085] and [0088]). While the embodiment of FIGS 8-11 discloses a corresponding “male board,” the disclosure as filed fails to clearly state or suggest where the male board is with respect to the other elements of the system. Examiner has inferred that the male board of this embodiment is located within housing 112 in the same manner as the male board of the embodiment shown in FIGS 12-15, and as discussed in para. [0088]. This inference is conflicted, to an extent, by the explicit disclosure; at para. [0087], clip portions 120 and 122 are disclosed as being engageable “with a female board.” Examiner presumes this to be a mistranslation or similar transcription error since board 105 is already previously disclosed as a female board.
Thus, for purposes of examination, it is understood by Examiner that claims 1-20 intend to claim the subject matter as depicted in FIGS 8-15 and as described in paragraphs [0083-95]. While the claims have not been construed as limited by this disclosure, they have been interpreted in light of this disclosure.
Drawings
The drawings are objected to because the character of the lines, the shading, and the numbers and/or characters is inadequate for clear reproduction. See 37 C.F.R. 1.84 (l). Additionally, the drawings also fail to comply with (p)(5) because they do not include the following reference signs: 2, 21, “Z,” “w,” “S,” and “Z1.” The drawings are also object to because identifiers “4” and “S” as upside down in FIG 3. Finally, the drawings are also objected to for failure to show “a protective film” as recited by claim 3 and its dependents.
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.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/397,132 (“the reference application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims, when construed under the doctrine of broadest reasonable interpretation, reads on the claims of the reference application (“the reference claim(s)”).
Regarding instant claim 1, the sole substantive difference between the instant claim and the reference claim is that the reference claim recites “a connecting piece” that “slides through the first… and the second circuit board, and the first line circuit board and the second circuit board are fixed to each other….” The instant claim, on the other hand, further recites “a housing” while omitting, or more aptly, renaming “a connecting piece” as “a connector.” The instant claim further recites the connector as having “a first portion” and “a second portion,” each portion having a corresponding first or second “locking feature.” Aside from these differences, the claims are substantially identical.
Notably, however, “a connecting piece” as recited by the reference application is inherently “a connector.” Moreover, the connecting piece inherently has “a first portion that engages the first circuit board” and “a second portion that engages the second circuit board” because “a connecting piece” as recited by the reference application is the piece “whereby the first circuit board and the second circuit board are fixed to each other.” Thus, the sole actual difference between the reference and instant claims is the further recitation of “the first portion is a first locking feature” and “the second portion is a second locking feature.”
It is inherent that the connecting piece of the reference application has a first portion that comes into contact with the first circuit board. It is likewise inherent that the connecting piece also has a second portion that comes into contact with the second circuit board. As the connecting piece, as a whole, fixes the boards to each other, it may be reasonably stated that the connecting piece locks the first and second circuit boards together. As Applicant has not provided any special definition for “locking feature,” Examiner may broadly construe the term/phrase to mean “a feature that enables locking.” Since the first and second portions of the connecting piece pass through and come into contact with the respective first and second boards, and since the connecting piece locks the two boards together, the first and second portions of the connecting piece may be reasonably interpreted as “a first locking feature” and “a second locking feature” as presently recited.
Thus, it is clear that reference claim 1 discloses each and every limitation of instant claim 1 when instant claim 1 is properly evaluated under the doctrine of broadest reasonable interpretation.
Regarding instant claims 2-18, the reference applications recites substantially identical limitations, respectively.
Regarding instant claim 19, Applicant merely recites subject matter substantially similar to that of instant claim 1, further reciting “the first locking features being secured to the first circuit board” and “the second locking features being removable [sic] coupled to the second circuit board.” As “a connecting piece” of the reference application is slidably inserted through both the first and second circuit board for the purposes of fixing the two boards together, it may be reasonably interpreted as “being secured” to the first circuit board (by virtue of it being the means for securing the boards together) and “removable [sic] coupled” to the second board (by virtue of it being inherently removable in a manner similar to its insertion).
Regarding instant claim 20, Applicant recites the same subject matter of claim 19 and further recites the housing as “a plastic housing with a central portion and opposing side portions, the plastic housing include a pair of downwardly depending locking portions.” It is well-known in the art to provide a housing for an electrical connection, the housing being made of insulative materials (e.g., “plastic”) for the purposes of protecting the connection from environmental contaminants and simultaneously preventing electrical contact between the electrical connection and external electrical elements. As the housing cannot be free-floating, it must inherently include elements which may be reasonably interpreted as “a pair of downwardly depending locking portions” that secure the housing to the electrical connection. Thus, it would have been obvious to one of ordinary skill in the art (prior to the effective filing date) to modify the reference application to further include a plastic housing with downwardly depending locking portions configured to engage with the electrical connector and cover it, thereby protecting the connector from external electrical power sources as well as environmental contaminants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 3-18 and 20 is/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.
Regarding claim 3, Applicant recites “conductive lines and laminates” in line 3 of the claim as filed. It is unclear from the language of the claim whether “conductive” modifies both lines and laminates (i.e., “conductive lines and conductive laminates”) or if instead modifies only lines (i.e., “a number of conductive lines and a number of laminates”). “[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).
As best understood by Examiner, only the “lines” are conductive. See, e.g., instant para. [0049]. Additionally, it is unclear what “laminates” might even be covered by the disclosure as filed. Instant para. [0050] discloses the second circuit board being “in the form of protective file – conductive circuit – protective film stacked and laminated into flexible circuit board” (emphasis by Examiner). The only “laminate” that appears to be contemplated by the disclosure as filed is “a protective film” but, notably, claim 3 separately recites “a protective film” as having the lines and laminates on both sides of the protective film.
Thus, it is unclear what Applicant considers to be the inventive subject matter because the cited limitation may be plausibly interpreted in more than one manner and, furthermore, the manner that most closely aligns with the disclosure as filed does not appear to include any laminates other than “a protective film” which is recited separately from “laminates.” As a result, the scope of claim 3 is rendered wholly indefinite.
Applicant further recites “the second circuit board comprises a number of conductive lines and laminates on both sides of a protective film, close to a first side of the protective film corresponding to an avoidance hole, and a conductive circuit exposed in the avoidance hole forms the contact part” (emphasis by Examiner). It is unclear how the bolded limitation is meant to be parsed in context of the remaining limitations.
Applicant first recites lines and laminates on both sides of a protective film, i.e., a first and second side. The term “both” implies that there are only two sides, as Applicant does not recite “a top and a bottom side” which would imply “a left and a right side” or similar options. Applicant then appears to claim these lines and laminates being close to a first side of the protective film corresponding to an avoidance hole. Thus, it is unclear how something provided on both sides of the film can be closer to one side than the other.
Examiner has attempted to rely on the disclosure as filed to understand the subject matter recited in claim 3 but is unable to decipher any clear meaning from the Specification or Drawings. None of the references to “a protective film” in the Specification are accompanied by any numeric indicator that would show the film in the Drawings. As disclosed by instant paragraph 40, it would appear that “a protective film” is nothing more than a layer of film deposited on the surface of the circuit board(s). This, however, would present an issue of clarity with respect to lines and traces being on “both sides of a protective film” as recited in claim 3. Even if “sides” were interpreted to be a “left” and “right” side of the circuit board, it would still be unclear how the lines and laminates would be closer to one side or the other when arranged as shown by instant FIG 2.
Thus, it is wholly unclear from the claims and disclosure as filed what subject matter is considered to be the inventive subject matter within claim 3 as filed. Claims 4-12, 14, and 15 depend from claim 3, fail to cure its deficiencies, and are therefore subject to the same rejection.
Appropriate corrections are required. As Examiner is unable to reasonably ascertain Applicant’s intended scope for claim 3, and thus claims 4-12, 14, and 15, the subject matter of claims 3-12, 14, and 15 cannot be evaluated in view of the prior art at this time. THIS IS NOT AN INDICATION OF ALLOWABLE SUBJECT MATTER. Examiner will reconsider the subject matter of claims 3-12, 14, and 15 upon receipt of amendments and/or arguments that appropriately and fully address the issues identified above.
Regarding claim 4, Applicant recites “a surface of the conductive part…is welded for conducting the conductive part” (emphasis by Examiner). Applicant does not clearly recite or otherwise convey what the surface is welded to; an element cannot be welded to nothing, thus claim 4 is also indefinite for this reason. Claims 5-12 depend from claim 4, fail to cure its deficiencies, and are therefore subject to the same rejection. Appropriate clarification is required.
Regarding claim 6, Applicant recites “the contact part” in line 4 of the claim as filed. It is unclear which contact part is being referenced, as Applicant recites “a contact part” in claim 1 and subsequently recites “a contact part” in claim 4. Appropriate clarification is required.
Regarding claim 7, Applicant recites “the contact part” at the end of the claim as filed. It is unclear which contact part is being referenced, as Applicant recites “a contact part” in claim 1 and subsequently recites “a contact part” in claim 4. Appropriate clarification is required.
Regarding claim 8, Applicant recites “the contact part” in line 3 of the claim as filed. It is unclear which contact part is being referenced, as Applicant recites “a contact part” in claim 1 and subsequently recites “a contact part” in claim 4. Appropriate clarification is required.
Regarding claim 9, Applicant recites “the contact part” in line 4 of the claim as filed. It is unclear which contact part is being referenced, as Applicant recites “a contact part” in claim 1 and subsequently recites “a contact part” in claim 4. Appropriate clarification is required.
Regarding claim 13, Applicant recites “a quantity of connecting parts is at least two groups” (emphasis by Examiner). First, it is unclear what constitutes “connecting parts” as recited; no such parts are recited by claim 1. While there are number of parts recited by claim 1, it is not clear whether “connecting parts” of claim 13 include any of the parts of claim 1, or whether they constitute a wholly separate set of parts.
In addition to the above, Applicant’s recitation of “a quantity” being “at least two groups” presents no coherent or cognizable quantity. Two “groups” could be any number of parts ranging from two parts (i.e., the first and second groups each comprise one connecting part) or an indeterminate number of parts (i.e., “groups” are not individuals and thus each group must have at least two constituent member parts).
As it is unclear what “connecting parts” are being referenced and, moreover, how many of said “connecting parts” Applicant is trying to claim, Examiner is wholly unable to determine an appropriate scope for the subject matter of claim 13. As a scope for claim 13 cannot be determined, the subject matter of claim 13 cannot be evaluated in view of the prior art at this time. THIS IS NOT AN INDICATION OF ALLOWABLE SUBJECT MATTER. Examiner will reconsider the subject matter of claim 13 upon receipt of amendments and/or arguments that appropriately and fully address the issues identified above.
Regarding claim 16, Applicant recites “one side of the second circuit board deviating from the first line circuit board” in lines 2-3 of the claim as filed. It is wholly unclear how the second board, which is a wholly separate element from the first board, would “deviate from” the first board. As may be seen from FIG 1, the second board (presumably identified by character “Z”) includes an “insulation protection board” 9, but neither the second board nor the insulation protection board “deviate from” the first board in any cognizable manner.
Claims 17 and 18 depend from claim 16, fail to cure its deficiencies, and are therefore rejected for at least the same reason.
As Applicant’s use of the term “deviate” does not comport with the generally understood meaning of the term and, as Applicant does not provide any special definition for the term, Examiner is wholly unable to determine an appropriate scope for the subject matter of claims 16-18. As a scope for claims 16-18 cannot be determined, the subject matter of claims 16-18 cannot be evaluated in view of the prior art at this time. THIS IS NOT AN INDICATION OF ALLOWABLE SUBJECT MATTER. Examiner will reconsider the subject matter of claims 16-18 upon receipt of amendments and/or arguments that appropriately and fully address the issues identified above.
Regarding claim 20, Applicant recites “a plastic housing” having “a pair of downwardly depending locking portions” in lines 2-3 of the claim as filed. It is unclear whether these locking portions engage with the later recited “locking features,” or if the “locking portions” are unrelated and perform a separate function. Applicant does not recite any limitations that link any portion of the housing, including the locking portions, to any element or portion of the remaining elements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0302692 (“Raff”).
Regarding claim 1, Raff discloses:
A connector system (FIGS 1-15), comprising:
a housing (receptacle 1200 inherently includes a portion which may be construed as “a housing”);
a connector (FIG 6, fasteners 1600 and bosses 1220 collectively form one or more “connectors”);
a first circuit board (1100); and
a second circuit board (400), the second circuit board coupled to the first circuit board via the connector (as seen in FIG 11, where 1400 is a flexible circuit board corresponding to flexible circuit board 400), the connector includes a first portion (boss 1220) that engages the first circuit board (boss 1220 is mounted on first circuit board 1100, and thus is “engaged with” the first circuit board) and a second portion (fastener 1600) that engages the second circuit board (as seen in FIGS 6 and 11, fastener 1600 passes through openings 1510 of cowling 1500, wherein cowling 1500 is attached to flexible circuit board 400, in order to secure the second and first circuit boards together), whereby the first circuit board and the second circuit board are fixed to each other (FIG 11), wherein the first portion is a first locking feature, the second portion is a second locking feature (para. [0047] discusses how the fasteners 1600 and bosses 1220 engage with each other to secure the first circuit board to the second circuit board; as such, fasteners 1600 and bosses 1220 may be reasonably interpreted as “locking features” in the sense that they lock the boards together), the first circuit board is provided with a conductive part (contacts 1210), the second circuit board is provided with a contact part (contacts 1310), and when the second circuit board is installed on the first circuit board, the conductive part and the contact part are electrically connected (see para. [0048]).
Regarding claim 2, Raff discloses the limitations as set forth in claim 1 and further discloses the first circuit board being a hard circuit board (implicit to the disclosure of Raff; in para. [0045], Raff explicitly differentiates between “printed circuit board 1100” and “flexible circuit board 1400,” showing that printed circuit board 1100 is not flexible and, thus, may be reasonably interpreted a “hard” or “rigid”) and is provided with a first mounting hole (hole 1222 of boss 1220 is provided on the first circuit board and, thus, Raff may be reasonably interpreted as providing first circuit board 1100 with a first mounting hole 1222).
Regarding claim 19, Applicant merely rephrases and restructures the elements recited by claim 1. As shown above, Raff anticipates claim 1. Claim 19 further recites the first locking feature being secured to the first circuit board, and the second locking feature being removably coupled to the second circuit board. In Raff, the first locking feature (boss 1220) is secured to the first circuit board (1100) by means of housing (1200) being secured to the first circuit board. Raff also discloses the second locking feature (fastener 1600) being removably coupled to the second circuit board (as seen in FIGS 6 and 11). As such, Examiner finds that the rejection of claim 1 applies, mutatis mutandis, to the subject matter of claim 19.
Regarding claim 20, Applicant merely recites the subject matter of claim 19 and further recites the housing being “a plastic housing with a central portion and opposing side portions, the plastic housing including a pair of downwardly depending locking portions….” As shown above, Raff anticipates claim 19. Raff further discloses that housing 1200 “may be formed of…plastic” in para. [0016]. Housing 1200 includes portions that may be arbitrarily designated as “a central portion” and “opposing side portions,” as may be reasonably understood from FIG 6. As Applicant neither recites any structural limitations for “a pair of downwardly depending locking portions,” nor does Applicant provide any special definition for the same, Examiner is free to interpret the limitation under the doctrine of broadest reasonable interpretation.
Breaking the limitation into its constituent parts, it is clear that “a pair” requires two “downwardly depending locking portions.” Something which is “downwardly depending” may be reasonably interpreted as extending “downward” relative to one or more other elements. A “locking portion” requires nothing more than some structural configuration that enables a “locking” function. Finally, something which is “locked” need not be permanently affixed; a lock may be unlocked. Combining these things together, Raff need only disclose a pair of elements that extend downwardly from another surface, the pair of elements being configured to enable a locking function.
Raff discloses a pair of openings 1222 in bosses 1200. Openings 1222 “downwardly depend” from an upper surface of the bosses, as seen in FIG 6. Openings 1222 also enable a “locking” function by providing an opening and necessary surfaces or structures for retaining fasteners 1600. As such, openings 1222 of Raff may be broadly and reasonably interpreted to be “a pair of downwardly depending locking portions” of the plastic housing 1200.
In view of the above, Examiner finds that the rejections of claims 1 and 19 apply, mutatis mutandis, to the subject matter of claim 20.
Conclusion
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
/THO D TA/Primary Examiner, Art Unit 2834
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