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. A comparison of the machine translation of the claims in the corresponding international application to the instant claims as amended suggests that the instant claims are the result of a machine translation from the original language into English. The machine translation creates multiple issues of clarity and definiteness, rendering the claims so indefinite that Examiner is unable to reasonably ascertain the scope of subject matter which Applicant considers to be inventive.
Appropriate rejections under §112 are provided below. While Examiner has attempted to conduct a search for pertinent subject matter, it should be understood that omission of a corresponding rejection under §§102 and 103 does not indicate the presence of allowable subject matter. The indefinite nature of certain claims resulting from the overly literal machine translation precludes a meaningful understanding of the pertinent claim scope and therefore Examiner cannot provide a rejection based on prior art for all claims at this time. The subject matter will be reevaluated upon receipt of amendments and/or arguments that adequately overcome the rejections under §112, below.
Drawings
The drawings are objected to because the character of the lines, numbers, and letters, as well as the shading of the figures, are all inadequate for clear reproduction. See 37 C.F.R. 1.84(l) and (m). 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 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 1-37 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 1, Applicant recites “[a] support profile rail element (1) for forming an elongated support rail system (100)” and “an elongated profile rail element (2) with…a connection section (23) for connecting to a corresponding further connection section (123) of an elongated support profile rail (110) in order to form a support rail system (100)” (emphasis added by Examiner).
Applicant effectively recites two different forms for the same element. In the preamble, “a support profile rail element (1)” is what forms “support rail system (100).” Applicant then improperly redefines “a support rail system (100)” as being formed by “an elongated profile rail element (2)” connected to “an elongated support profile rail (110).” The same element cannot be formed in two wholly distinct manners within the same independent claim because doing so creates an issue of clarity and definiteness as to the intended scope of the claimed subject matter. As such, claim 1 is rendered indefinite by Applicant’s improper and indefinite redefinition of a previously established element.
In addition to the apparent improper redefinition of “a support rail system (100),” Applicant’s chosen claim language is also unclear because it recites “an elongated support rail system (100)” and “a support rail system (100),” making it wholly unclear whether “an elongated support rail system” and “a support rail system” are meant to be distinct elements with distinct structures, or if “a support rail system (100)” instead refers to the previously established “an elongated support rail system (100).” There is no clear answer from context of the claim, as Applicant refers to “an elongated support rail system (100)” as “the support rail system (100)” in lines 2-3 of the claim as amended. Thus, claim 1 is also indefinite for this reason.
Applicant further recites “at least one electrical conductor (103)” in line 19 of the claim as amended. It is unclear whether this limitation is meant to refer back to “electrical conductors (103)” as recited in line 3 of the claim, or if Applicant is attempting to recite further electrical conductors. Applicant’s subsequent recitation of “all of the likewise parallel electrical conductors (103) of the corresponding busbar (102)” in lines 28-29 of the claim as amended is unclear for similar reasons.
Applicant further recites “when the support profile rail element (1) is connected to a support profile rail (110)” in lines 26-27 of the claim. It is unclear whether “an elongated support profile rail (110)” is connected to a support profile rail element (1), or whether “an elongated support profile rail (110)” is a constituent member of a support profile rail element (1). As amended, “the support profile rail element (1) has:…a connection section (23) for connecting to a corresponding further connection section (123) of an elongated support profile rail (110)….” Thus, the claim may be plausibly construed as reciting the support profile rail (110) as an element of the support profile rail element (1) such that it would be unclear how “the support profile rail element (1) is connected to a support profile rail (110)” because the support profile rail (110) is part of the support profile rail element (1).
Moreover, Applicant recites “when” the two pertinent elements are “connected,” yet there is no prior recitation of either element being configured as such. Indeed, it is entirely unclear whether “a corresponding further connection section (123) of an elongated support profile rail (110)” is a constituent element of “a support profile rail element (1)” or some other unclaimed and unclear mating member or device. It is therefore unclear whether these elements even form a portion of the invention, rendering the intended scope of the claim indefinite and unclear.
Applicant further recites “a support profile rail (110)” in line 27 of the claim. As with other limitations above, it is unclear whether this “a support profile rail (110)” is intended as a new limitation, or if instead the claim again fails to properly refer back to established limitations (e.g., “an elongated support profile rail (110”) as recited in line 11). The same is applicable to “an elongated busbar (102) as recited in lines 2 and 27-28 of the claim. Thus, claim 1 is also indefinite for this reason.
Examiner additionally notes that the limitation “the interior (21)” found in lines 12-13 of the amended claims would be considered indefinite if the numerical identifier “(21)” were to be subsequently removed. At this point in time, Examiner considers the specific limitation to be sufficiently definite due to inclusion of the numerical identifiers. Without such identifiers, it would be unclear whether “the interior” as recited in lines 12-13 is meant to refer to “a system interior” as recited in line 2, or “an interior” as recited in line. Applicant should be cautious in making amendments to ensure that future changes do not unnecessarily introduce new issues of clarity and definiteness.
Appropriate corrections are required. None of claims 2-28 cure the above deficiencies and are therefore rejected for at least the same reasons. As a result of the pervasive issues of indefiniteness within claim 1, Examiner is unable to reasonably ascertain the scope of subject matter considered to be inventive by the Applicant; as such, Examiner is unable to evaluate the subject matter of claims 1-28 in view of the prior art at this time. THIS IS NOT AN INIDICATION OF ALLOWABLE SUBJECT MATTER.
Regarding claims 18 and 19, Applicant recites dependency from claim 1 for each claim. Such dependency is inadequate to provide the necessary antecedent basis for each claim. Both claims recite “the carrier (4),” an element which is first recited in claim 14. As such, both of claims 18 and 19 must instead depend from claim 14. Correction is required.
Applicant further recites “and/or, if present,” in both claims as amended. The recitation of “if present” renders each claim indefinite because it is unclear whether the subsequent limitations are a necessary element of each claim. Appropriate correction is required.
Regarding claim 23, Applicant recites “if present” in the final line of the claim. This limitation is indefinite for reasons similar to those discussed in the rejection of claims 18 and 19. Appropriate correction is required.
Regarding claim 29, Applicant recites “a carrier (4) which is designed to be completely inserted into the system interior (101) of the support rail system (100) via the system coupling opening (104) and to be secured therein” in lines 7-8 of the claim as originally filed. It is unclear which of the preceding elements is being referred to by “therein.”
“[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).
Here, the claim may be plausibly construed as reciting “a carrier (4) which is…completely inserted into the system interior (101)…via the…opening (104) and to be secured within the opening” or “to be secured within the system interior.” As there are at least two plausible claim constructions, the claim is appropriately rejected under §112 as indefinite. Claims 30-37 fail to cure this deficiency and are therefore rejected for at least the same reasons.
Applicant further recites “at least one electrical conductor (103)” in line 15 of the claim as originally filed. It is unclear whether this limitation is meant to refer back to “electrical conductors (103)” as recited in line 3 of the claim, or if Applicant is attempting to recite further electrical conductors. Applicant’s subsequent recitation of “all electrical conductors (103)” in lines 21-22 of the claim as originally filed is unclear for similar reasons.
Applicant further recites “a corresponding busbar (102)” in line 22 is also indefinite because it is unclear whether it is meant to refer back to “an elongated busbar (102)” as recited in lines 1-2 of the claim, or to further busbars. Examiner notes that the claim does not provide any antecedent basis for a plurality of busbars (i.e. such that there is “a corresponding” busbar; there is only one busbar previously recited). As such, claim 29 is also indefinite for these reasons.
As a result of the pervasive issues of indefiniteness within claim 29, Examiner is unable to reasonably ascertain the scope of subject matter considered to be inventive by the Applicant; as such, Examiner is unable to evaluate the subject matter of claims 29-37 in view of the prior art at this time. THIS IS NOT AN INIDICATION OF ALLOWABLE SUBJECT MATTER.
Regarding claims 32 and 34, Applicant recites “if present” in the final line of each claim. This limitation in each claim is indefinite for reasons similar to those discussed in the rejection of claims 18 and 19. Appropriate correction is required.
Election/Restrictions
Due to the issues detailed above, it is currently unclear whether the claims are or may be subject to restriction for a lack of unity of invention. As noted by the Written Opinion of the International Searching Authority, the subject matter of claims 1 and 29 appears to be substantially similar save for the particular phrasing of limitations. Thus, it is entirely possible that claims 1 and 29 would share the same special technical feature. As further noted by the Written Opinion, neither of claims 1 and 29 were considered by the International Searching Authority to be novel or non-obvious in view of the prior art. As such, the shared special technical feature would not be a special technical feature. It therefore seems likely that the claims as originally filed and as amended would be appropriately subject to restriction for lack of unity if they were not so deficient under §112. Applicant should carefully review the claims when filing a response to ensure that future amendments do not require restriction for lack of unity.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TULSIDAS PATEL can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
Prosecution Insights