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 domestic priority under 35 U.S.C. 120. The PCT Application Number PCT/JP2022/038411, being filed on October 14, 2022.
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 April 17, 2024.
Information Disclosure Statement
The information disclosure statements filed April 17, 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 submit 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.
Election/Restrictions
Applicant's election of Species A encomssing claims 1-2 and 6 with traverse of in the reply filed on December 10, 2025 is acknowledged. The traversal is on the ground(s) that all it would not be an undue burden for the examiner to search. This is not found persuasive because
Applicant’s arguments based on search burden as mention would not be considered proper because restriction is based on PCT unity of invention, thefore, incorrect or inappropriate arguments are presented.
And under PCT rule 13.1, restriction requirement clearly mentions why restriction is proper based on lacking special technical features (see explanation in the context of prior art in the restriction requirement) in view of prior art mentioned (see further MPEP PCT Rule). The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. a "special technical feature" in the context of prior art refers to a specific technical aspect of an invention that represents a unique contribution over existing technology, meaning it is not found in the prior art and defines what makes the invention novel and potentially patentable; It appears that applicant defining all features as common features, if all features as common features, then no novelty exists, and the claim or invention is unpatentable.
Therefore, the requirement is still deemed proper and is thefore made final.
Claims 3-5 and 7-11 are withdrawn from further consideration as being drawn to a nonelected subject matter or species.
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 2 and 6 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 2, the limitation “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 are adhered to an outer peripheral surface of the at least one electric wire by the adhesive layer’ is indefinite or unclear.
Note that claim 1 is specifically claiming a protective tape, see preamble in claim 1; not wire harness including protective tape and wires; thefore, positively claiming electric wire in or as part of protective tape which is improper or incorrect.
Therefore, appropriate correction is required.
Rejection of claim 6, the limitation “the first tape member is the protective tape member according to claim 1, which is affixed to the flat portion by the adhesive layer, and the second tape member is the protective tape member according to claim 1, which is affixed to the flat portion by the adhesive layer” is indefinite and unclear.
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. Additionally, each the first tape member and the second tape member has two different adhesive layers across wires to attach wires to individually by the first and second adhesive layers.
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 Known et al. (US20170025645, herein referred to as Known).
Rejection of claim 1, Known discloses a protective tape member (see figures 2-4) 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 (3,1,4) that is band-shaped and has a first surface (a top surface) and a second surface on a side opposite to the first surface (a bottom surface); and an adhesive layer laminated on the second surface (fist polymer layer 2; note that specification states “first polymer resin layer 2 are adhered to each other”),
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),
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 figures) .
Rejection of claim 2, Known 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, see preamble in claim 1; not wire harness including protective tape and wires; thefore, positively claiming wire in protective tape in claim raises USC 112 issue, see rejection under USC 112 above; both having end regions in tape as disclosed by Known, 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 Known (as mentioned in claim 1).
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, and the second tape member is the protective tape member according to claim 1, which is affixed to the flat portion by the adhesive layer (both top and bottom tape members are attached to wires by adhesive in between, see paragraph 0030 and claim 8).
Known discloses the protective member (see figures 1 and 4 of Known and 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 Known 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.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Thompson can be reached on (571)272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PARESH PAGHADAL/ Primary Examiner, Art Unit 2847