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 .
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 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.
Examiner Request
The Office requests Applicant’s cooperation with reviewing and correcting any other remaining informalities present in the claims, but not made of record in the instant action.
Several of the formality issues relate to that the dependency of the claims has been amended to avoid multiple dependent claims. The claims were not carefully reviewed to insure that there is proper antecedence after the claim set has been amended.
Claim Interpretation
The claims are interpreted in light of the specification. Para. [0009] of the specification provides that “directional terms such as downward and downwardly, upward and upwardly, and lower and upper, which will be used with reference to the housing assembly of the invention when positioned generally horizontally within, for example, the engine bay of a vehicle. There is, of course, generally no need for such a housing assembly to be positioned horizontally in a vehicle, and housing assemblies often are not installed horizontally, but this language will be used in this specification for ease of description and understanding. Further, there will also be references to inner and outer, and inwardly and outwardly, which will be references made with respect to the interior of the enclosure formed by the housing assembly of the present invention.” There the prior art can be rotated and still meet the requirements of the claimed invention based upon Applicant’s written disclosure.
Regarding claims 24 and 27, the term “assembly” in the body of the claim is understood as the verb tense of “assembly” because it used as “after assembly:, whereas the term “assembly” in the preamble is understood as the noun tense of “assembly” which has antecedence in “electronics housing assembly” of claim 1.
Specification
The disclosure is objected to because of the following informalities: para. [0052], “10” should be “11”. Appropriate correction is required.
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, “a series of ribs” (claim 18, line 2) and “a cover plug (claim 24, line 4 and claim 27, line 4) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 Objections
Claims 1-33 are objected to because of the following informalities:
“the base member” should be “the rigid base member” throughout the claim set;
“the outer shell” should be “the rigid shell” throughout the claim set;
“the flexible membrane” should be “the flexible inner sealing membrane”;
“the abutment”/”the deformable abutment” should be “the inwardly projecting, elastically deformable abutments” throughout the claim set;
“the housing assembly: should be “the electronics housing assembly” throughout the claim set:
Preamble of claims 2-33, “An assembly” should be “The electronics housing assembly”;
Claim 3, line 3, “the exterior” lacks antecedent basis and should be :an exterior”;
Claim 2, line 2, The printed circuit board” should be “the at least one printed circuit board”;
Claim 5, line 1, “the outer shell’s side walls” should be “the side walls of the outer shell”;
Claim 8, lines 2 and 3, “the free ends” slacks antecedent basis and should be “free ends”;
Claim 12, line 2; and Claim 13, line 2, “the shape and configuration” lacks antecedence basis and should be “a shape and configuration”;
Claim 12, line 4; and Claim 13, line 3, “the printed circuit board” should be “the at least one printed circuit board”;
Claim 21, line 1, “the light pipes” should be “when the one or more light pipes and/or the one or more pressure testing ports is the one or more light pipes, the one or more light pipes”
Claim 21, line 2, “LED” should “a light emitting diode (LED)”;
Claim 21, line 2, “exterior” should be “an exterior”;
Claim 22, line 2, “the light pipes” should be “the one or more light pipes”;
Claim 23, line 2; and Claim 26, line 2, “the flexible membrane” should be “the flexible membrane,” (adding “,” [comma] after membrane); and
Claim 29, line 2, “liquid silicone rubber” should be “a liquid silicone rubber”.
Appropriate correction is required.
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 3-28 and 30-33 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, line 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4, line 3 requires “its periphery.” Is “its” referring to “the outer shell”, “box-shaped”, or “a top portion”?
Claim 5, line 3 requires “its end walls.” Is “end walls” have antecedence in “end walls” of claim 4, line 3?
Claim 5, line 4; and Claim 8, line 4, “the bottom portion” lacks antecedent basis;
Claim 6, line 3 requires “its periphery.” Is “its” referring to “the flexible member”, “box-shaped”, or “a top portion”?
Claim 7, line 2 requires “its periphery.” Is “its periphery” the same or different from “its periphery” of claim 6, line 3;
Claim 8, line 2, “the walls” lacks antecedent basis. Does “the walls” have antecedence in “the side walls”, “the end wall” or both?
Claim 8, line 2 does “columnar members” have antecedence in “columnar members” of claim 6, line 3;
Claim 8, line 3 requires “free ends of the outer shell.” Does “Free ends” refer to free ends of the side wall and the end wall of the outer shell, or some other portion of the outer shell?
Claim 9, line 2 and Claim 1, line 7 each require “a plurality of inwardly projecting, elastically deformable abutments.” Are these the same or different “plurality of inwardly projecting, elastically deformable abutments” being claimed?
Claim 9, lines 3-4, does “vibration resistance” have antecedence in “vibration resistance” of claim 1, line 8?
Claim 12, line 2; Claim 16, line 2; Claim 18, line 2; and Claim 32, line 2, “the interior surface” lacks antecedent basis;
Claim 12, line 3, requires “abutments.” Does “abutments” have antecedence in claim 1, line 7 (and claim 12, line 2)?
Claim 16, line 2; Claim 18, line 2; and Claim 32, line 2, “the top member” lacks antecedent basis;
Claim 12, line 4; and Claim 13, line 3, “the housing” lacks antecedent basis. Did Applicant intend “the enclosure”?
Regarding claim 19, line 2, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 19, line 3 requires “particular printed circuit boards” and Claim 1, line 2, requires “at least one printed circuit board.” Are these the same or different printed circuit board(s) being claimed?
Claim 21, line 2 requires “a printed circuit board mounted LED” and Claim 1, line 2 requires “at least one printed circuit board.” IS the printed circuit board that the LED of claim 21 is mounted on, the same or different from “at least one printed circuit board” of claim 1?
Claim 23, line 3, should “leakage” (second occurrence) have antecedence in “leakage” of line 3 (first occurrence)?
Claim 24, line 2; and Claim 27, line 2, should “pressurized gas” have antecedence in “a pressurized gas” of claim 23, lines 2-3, and claim 26, line 2, respectively?
Claim 24, line 3; and Claim 27, line 3, should “a vacuum” have antecedence in “a vacuum” of claim 23, line 3 and claim 26, line 3, respectively?
Claim 24 line 3; and Claim 27, line 3, should “assembly” (second occurrence) have antecedence in “assembly” of line 3 (first occurrence)? and
Regarding claim 24, line 4; and Claim 27, line 4, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 duplicates the limitations of lines 7-8 of claim 1, and therefore does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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 1-7, 9-15, 17-22, 29-31, and 33 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Deer (US 9,282,663) and Chen (US 7,864,513).
With respect to Claim 1, Deer teaches an electronics housing assembly (see fig. 1) including a rigid base member (11) for mounting at least one printed circuit board (30) thereto, a rigid outer shell (51), and a flexible inner sealing membrane (50), the base member and the outer shell together forming an enclosure (11,51) for the at least one printed circuit board, wherein the flexible membrane includes: a sealing portion (periphery of 50 sandwiched between 51 and 11) about its periphery (periphery of 50) for compression between the base member and the outer shell to seal the enclosure; and a plurality of inwardly projecting, abutments (70 and col. 3, ll. 5-6, “at least one” means there can be a plurality) configured to couple against the at least one printed circuit board to provide vibration resistance (see MPEP 2112, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”). Deer fails to disclose a plurality of inwardly projecting, elastically deformable abutments configured to compress against the at least one printed circuit board to provide vibration resistance. Chen teaches the flexible membrane (fig. 2, 60) includes a plurality of inwardly projecting, elastically deformable abutments (63) configured to compress against the at least one printed circuit board (30) to provide vibration resistance (see MPEP 2112, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the elastically deformable abutments of Chen for the abutments of Deer for the purpose of providing a means to hold the printed circuit board in place without the possibility of damaging the printed circuit board.
With respect to Claim 2, Deer further teaches the rigid base member includes a bottom portion (portion of 11 that 50 sitting on) whose upper surface (surface of 11 against 50) provides a mounting surface for the printed circuit board, with the bottom portion including opposed upstanding side walls (outer side walls). Deer fails to disclose being open at its ends. It would have been obvious to one having ordinary skill in the art at the time the invention was made to omit the end walls if these are not need to seal volume V! of Deer, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
With respect to Claim 3, Deer and Chen fail to disclose the side walls include an integrated external heat sink arrangement in the form of elongate heat dissipating fins, the fins configured preferably longitudinally along the exterior of the side walls. Official Notice is taken that the side walls include an integrated external heat sink arrangement in the form of elongate heat dissipating fins is well-known in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly of Deer and Chen with well-known elongate heat dissipating fins for the purpose of increasing the surface area for greater dissipation of heat from the printed circuit board to the external environment surrounding the assembly. substitute the elastically deformable abutments of Chen for the abutments of Deer for the purpose of providing a means to hold the printed circuit board in place without the possibility of damaging the printed circuit board.
With respect to Claim 4, Deer further teaches the outer shell is box-shaped (see fig. 2) with a top portion (horizontal portion of 12) having downwardly extending perimetric side walls (left and right vertical walls of 12) and end walls (near and far vertical walls of 12) about its periphery (periphery of horizontal portion of 12).
With respect to Claim 5, Deer further teaches the outer shell's side walls (see fig. 1, vertical portions of 51) are opposed and are spaced and sized to fit inside the side walls (portions of 11 fitting vertical portions of 51 within) of the base member, with the top portion of the outer shell itself being sized such that its end walls (near & far vertical sides of 51) can be positioned adjacent the ends of the bottom portion (portion of 11 that 50 sitting on) of the base member such that the base member and the outer shell together form the enclosure (see fig. 1, 11 and 51 form an enclosure) of the housing assembly.
With respect to Claims 6 and 7, Deer further teaches the flexible membrane is box-shaped (see fig.1, box shaped formed by horizontal portion of 50 and vertical portions sandwiched between 11 and 51) with a top member (horizontal portion of 50) with downwardly extending perimetric side walls (right and left sides of 50) and end walls (near and far sides of 50), about its periphery (periphery of 50) , all sized to fit within (see fig.) the outer shell (claim 6), the flexible membrane includes a sealing portion (portion sandwiched between 11 and 51) about its periphery (periphery of horizontal portion of 50) for compression between the base member and the outer shell to seal the enclosure when assembled (see fig.) (claim 7)
With respect Claims 9-15, 17, 18, 30, 31, and 33, Deer discloses the claimed invention except for a plurality of inwardly projecting, elastically deformable abutments configured to compress against the at least one printed circuit board to provide vibration resistance. Chen teaches the flexible membrane (fig. 2, 60) includes a plurality of inwardly projecting, elastically deformable abutments (63) configured to compress against the at least one printed circuit board (30) to provide vibration resistance (see MPEP 2112, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”) (claim 9), the deformable abutments project inwardly from an interior surface (fig. 2, near side of horizontal surface of 60) of the top member (horizontal surface of 60) of the flexible membrane (claim 10), the abutments are integrally formed (see fig. 2) in the flexible membrane (claim 11), the shape and configuration of the abutments (shape and configuration of 63s) is customized across the interior surface of the top member of the flexible membrane, such that abutments of a suitable size and configuration compress against and hold (see fig. 2) appropriate parts of the printed circuit board (30) when the housing (should this be “the enclosure”?) is assembled (claim 12), the shape and configuration of the abutments (shape and configuration of 63s) is regular and standardised so as to compress and hold any part of the printed circuit board (30) that the abutments contact when the housing (should this be “the enclosure”?) is assembled (claim 13), the abutments are in the form of an array of cells (fig. 2, 63s are arranged in two-dimensional array) (claims 14 and 30) the cells are similarly sized (see fig. 2) and shaped (see fig. 2) (claims 15 and 31) and the cells are circular (see fig. 2) (claims 17 and 33), the abutments are a series of ribs (63s, “rib” defined as a raised piece of stronger or thicker material across a surface typically serving to support or strengthen it) projecting away from the interior surface (fig. 2, near side of horizontal surface of 60) of the top member (horizontal surface of 60) of the flexible membrane (claim 18). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the elastically deformable abutments of Chen for the abutments of Deer for the purpose of providing a means to hold the printed circuit board in place without the possibility of damaging the printed circuit board.
With respect to Claim 19, Deer and Chen disclose the claimed invention except for the series of ribs are of different spacings and heights, and are optionally adopted in conjunction with an array of cells, allowing for customisation of the abutments to suit particular printed circuit boards. It would have been an obvious matter of choice for the ribs to be different spacing and height to be customized for the specific application, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
With respect to Claims 20-22, Deer discloses the claimed invention except for the flexible membrane includes integral formations in the form of one or more light pipes and/or one or more pressure testing ports. Chen teaches the flexible membrane includes integral formations in the form of one or more light pipes (60 conducts light from 65s, so 60 is a “light pipe”) (claim 20), the light pipes are optical components for transporting light from a printed circuit board mounted LED (33 on PCB 30) to exterior (fig. 4 above 61) of the housing assembly so that the LED is visible to a user when lit (light from 33 is visible to a user thru 61) (claim 21) and the outer shell (80) includes cooperating openings (85s) aligned with the light pipes (fig. 4, thru 60 at each 61) so as to permit the LED to be visible through the outer shell.
With respect to Claim 29, Deer and Chen discloses the claimed invention except for the flexible membrane is formed from rubber (Deer - col. 3, l. 34, Chen – col. 1, l. 52). Deer and Chen fail to disclose liquid silicone rubber. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to for the rubber to be a silicone rubber that has good resistance to oils and a wide temperature range, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Liquid is a product-by-process limitation of the silicone rubber as a liquid before it is cured and does not impart any structure to the silicone rubber after it is cured. See MPEP 2113.
Allowable Subject Matter
Claims 8, 16, 23-28, and 32 would be allowable if rewritten to overcome the claim objection(s), 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8 are allowable over the art of record because the prior art does not teach or suggest that “the sealing portion is an outwardly projecting peripheral sealing flange at the free ends of the walls and/or columnar members of the flexible membrane, sized and positioned to locate between the free ends of the outer shell and the bottom portion of the base member when together, for compression between the base member and the outer shell to seal the enclosure.”
Claims 16 and 32 are allowable over the art of record because the prior art does not teach or suggest that “the cells are hexagonal cells forming a honeycomb structure on the interior surface of the top member of the flexible membrane.”
Claim 23 and all claims dependent thereof are allowable over the art of record because the prior art does not teach or suggest that “including in the flexible membrane a formation in the form of a testing port through which a pressurised gas may be injected to test for leakage or a vacuum may be applied to test for leakage.”
Claim 26 and all claims dependent thereof are allowable over the art of record because the prior art does not teach or suggest that “including in the flexible membrane a formation in the form of a testing port through which a pressurised gas may be injected to test for leakage or a vacuum may be applied to test for leakage.”
The aforementioned limitations in combination with all remaining limitations of the respective claims are believed to render said claims 8, 16, 23, 26, and 32 and all claims dependent thereof patentable over art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DE 4217837 discloses a flexible membrane to protect a printed circuit board.
D1044799 and D1077800 are related design patent corresponding to the instant application.
US 5,208,728 discloses a sealing portion (outward extending flange of 6) is an outwardly projecting peripheral sealing flange at the free ends of the walls of a flexible membrane (6)
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RJH 12/28/2025
/ROBERT J HOFFBERG/
Primary Examiner, Art Unit 2835