DETAILED ACTION
The response filed on April 10, 2026 is being acknowledged.
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 6 is 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 6, the limitation “the first tape member is the protective tape member according to claim 1, which is affixed to …. and the second tape member is the protective tape member according to claim 1, which is affixed to …” is indefinite and unclear.
Note that a protective tape member in claim 1 can not be as two tape members; first tape member and second tape member. For example a car can not be a first car and a second car. Cars include a first car and a second car.
The first tape member and second tape member are two different tape members (see figures) across the wires; thefore, claiming the first tape member and second tape member as same tape member is improper or incorrect.
Therefore, appropriate correction is required.
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.
Note: The rejection under USC 102 and/or USC 103 below with modified language are given to advance prosecution; however, proper clarification is required under rejection of USC 112 above to consider the rejection under USC 102 and USC 103.
Claim Rejections - 35 USC § 102
The following is a quotation of 35 U.S.C. 102 which forms the basis for all rejections set forth 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) (whichever apply) as being anticipated by Aoyama et al. (US20180268958, herein referred to as Aoyama) or Takase et al. (JP20080120415, herein referred to as Takase).
Rejection of claim 1, Aoyama (see figure 2, 7 or 23 of Aoyama) or Takase (see figure 6 or 4 in view of figure 2 of Takase) discloses a protective tape member for protecting at least one electric wire from foreign matter that comes into contact with a wire harness including the at least one electric wire (“for” only defines intended use), comprising:
a base member (21 in Aoyama; or 11 in Takase) that is band-shaped and has a first surface (a top surface in Aoyama; or a top surface in Takase) and a second surface on a side opposite to the first surface (a bottom surface Aoyama; or a bottom surface Aoyama); and an adhesive layer laminated on the second surface (see paragraph 0130 as well as disclosure of specification in Aoyama wherein each end of 21 in terminal sides attached by an adhesive; adhesive 12 ),
wherein a length direction of the base material is a direction orthogonal to a width direction of the base material (see length and width direction in the figures of Aoyama; or see length and width direction in the figures of Takase),
the base material has, on the first surface, a plurality of protruding portions extending continuously along the width direction of the base material, and the plurality of protruding portions are arranged side by side in the length direction of the base material (see protruding portions along the width and side by side in length direction the length in the figures of Aoyama; or see protruding portions 17 along the width and side by side in length direction the length in the figures of Aoyama).
Rejection of claim 2, Aoyama (see figure 2, 7 or 23 of Aoyama) or Takase (see figure 6 or 4 in view of figure 2 of Takase) discloses the protective tape member according to claim 1, wherein both end regions of the base member in the length direction include adhesion portions at which both end regions of the base material in the length direction of the base material for adhering to an outer peripheral surface of the at least one electric wire by the adhesive layer (note that claim 1 is claiming a protective tape, both having end regions in tape as disclosed by Aoyama or Takase, the tape of known intended to use for adhering to an outer peripheral surface of the at least one electric wire by the adhesive layer ).
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.
Claim 6 is rejected under 35 U.S.C. 103 (whichever apply) as being unpatentable over Frederic et al. (US20030159824, herein referred to as Frederic) in view of Aoyama or Takase.
Rejection of claim 6, Frederic discloses a wire harness (figures 6-7 of Frederic) comprising an electric wire bundle including a plurality of electric wires (602 or 702 in figures 6 or 7),
wherein the electric wire bundle includes a flat portion in which the plurality of electric wires are arranged side by side in a flat manner, in at least a portion in a direction in which the electric wire bundle extends (see side by side wires 602 or 702),
the wire harness further comprises an exterior member that protects the flat portion (606-607 or 706-706 on both sides the wires),
the exterior member has a first tape member (607 or top 706) and a second tape member (606 or bottom 706) that sandwich the flat portion from both sides of the flat portion in a thickness direction,
the first tape member is the protective tape member according to claim 1, which is affixed to the flat portion by the adhesive layer of the first tape amber, and
the second tape member having same structure as the first tape member (both top and bottom tape members are attached to wires by adhesive in between, see paragraph 0030 and claim 8; note that rejection is given based on modified language; however proper clarification under rejection of USC 112 is required in order to consider rejection under USC 103 ).
Aoyama or Takase discloses the protective member (see rejection of claim 1 above).
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the wire harness of Frederic Hirohisa to shape or structure of protective tape member as taught by Aoyama or Takase as first and second protective tapes members as Frederic in order to improve overall flexibility of the elongated structure covered by the protective tape member, and further prevents damaging of the structure. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Note that amendment to claim 6 does not resolve the problem mentioned in the rejection of under USC 112 above; see rejection of USC 112 for further details; therefore, argument refereeing to claim 6 would not consider and appropriate action is required.
Pertinent Prior Arts
The prior arts 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 arts in the present case, all of which disclose various wire protectors assemblies.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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