DETAILED ACTION
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: “l “light guiding sleeve”. The Specification appears to be a rough foreign machine translation which has not been reviewed or edited.
A “light guide”, the plain meaning understood in the art, is a “waveguide” or a device that propagates light in a desired direction (a widely known example being fiber optics). Because of the higher refractive index of silicone rubber (n = 1.41-1.51) in respective to air (1.0), it may function as a light guide through total internal reflection (at some angles). Thus, the functionality of a “light guide” is permitted.
The nomenclature of other elements conflicts with the Drawings, including a “sleeve”. A “sleeve” has the plain meaning of a protective container usually thin and flexible with an opening on one side for insertion or removal of an item (dictionary.com). From the Drawings it appears that the word “periphery” or “border” or the like was intended, however this is completely speculative and is lacking proper support.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a basic concept of a “light-guiding” structure (sleeve and post), does not reasonably provide enablement for all structure which could conceivably be light guiding. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Claim language is non-enabled when it "merely described a particular end result, did not set forth any specific structure, and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented.". Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946); see also Ex Parte Miyazaki, BPAI 2007-3300 (Claim language is non-enabled when it "merely described a particular end result, did not set forth any specific structure, and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented." The term “light-guiding” is functional limitation that does not provide any particular structural detail, and would cover a variety of different structures and layers which the applicant has not invented.
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 1-20 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.
In respect to claims 1-2, the claims contain several words which are not consistent with their plain meaning, or meaning known in the art, which are delineated above the in the Specification Objection. Some confusing and indefinite terms are further compounded e.g. a “light-guiding sleeve”, where the claimed element is not a sleeve, thus ascertaining the structure as well as comparison to prior art is difficult if not impossible. The term “light-guiding post” is further indefinite since the “post” is not a post as one of ordinary skill would ascertain. A post is usually cylindrical, but not always, but would be readily ascertained to be longer in height/length than width. The “post” of the instant application is wider than it is tall, which is not the plain and ordinary meaning of a post. Claims 3-11 depend from these claims are reiterate some of these terms. Furthermore, in claim 2, the new recitation “the rear shell is provided with a front cover, which blocks an opening of the rear shell and is located on a front side of the screen” is unclear. The REAR shell is clearly located on a back side of the screen.
The Examiner will assume the intended terminologies noted in the Specification Objection and look to the Drawings to assist in finding prior art. However, it is noted that any assumptions made as to the intended meanings are speculative, and does not amount to any clear or definite meaning derived from the Specification as originally filed.
There are several further clarity, indefiniteness, and antecedent basis issues, throughout. This is not a comprehensive or exhaustive list of 35 USC 112 issues. It is the responsibility of the applicant to comply with 35 USC 112.
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.
Claims 1 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nilsson (US 2015/0198484).
In respect to claim 1, the claimed structure is impossible to ascertain for the 35 USC 112 reasons detailed above, with the claim language not providing a clear and definite device; at least the terms “light guiding sleeve” and “light guiding post” do not provide any clear and definite structure to one of ordinary skill, since the “sleeve” or “post” do not conform to the plain and ordinary meaning of the terms, nor does the Specification clearly provide a definite redefining of the terms. However, the Examiner is using the Figures to best construe the closest prior art.
Nilsson appears to disclose the invention, as best can be construed by the examiner, disclosing an electronic shelf label comprising: a screen 3, a “light guiding sleeve” 5, and an indicator light 11; a “light guiding post” 4 formed on a front end face of the “light guiding sleeve” 5, and integral therewith, and overlapped with the indicator light (Fig. 2); a rear shell 6 forms an “accommodating space”; and a control panel 17 between the screen 3 and “accommodating space”.
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (CN 211957023).
In respect to claim 1, the claimed structure is impossible to ascertain for the 35 USC 112 reasons detailed above, with the claim language not providing a clear and definite device; at least the terms “light guiding sleeve” and “light guiding post” do not provide any clear and definite structure to one of ordinary skill, since the “sleeve” or “post” do not conform to the plain and ordinary meaning of the terms, nor does the Specification clearly provide a definite redefining of the terms. However, the Examiner is using the Figures to best construe the closest prior art.
Chen et al. appear to disclose the invention, as best can be construed by the examiner, disclosing an electronic shelf label comprising: a screen 2 a “light guiding sleeve” area around the periphery of the screen, and an indicator light 42 (Fig. 7) (wherein light-guiding posts are provided, thus a “light guiding” sleeve which contains the “light-guiding posts” 4); a “light guiding post” 4 formed on a front end face of the “light guiding sleeve” (periphery of 2) and integral therewith, and overlapped with the indicator light (Fig. 3); a rear shell 6 forms an “accommodating space”; and a control panel 2 between the screen 2 and “accommodating space” (Fig. 3) (0027-0028).
In respect to claims 2 and 3, although unclear for the reasons stated above, Chen et al. disclose that both the screen 2 and indicator light 42 are located in the rear shell 6 (Fig. 9), and a front cover 3 “blocks an opening of the rear shell located on a front side of the screen” (Fig. 3); a display window is opened in the front cover, overlapped with the screen 2 (Fig. 3).
In respect to claim 4, Chen et al. disclose a control board 2 (next to the screen) in which the indicator light 42 is connected (via conductive contacts 21) (0030; Fig. 8).
In respect to claim 7, Chen et al. disclose a plurality of reinforcing ribs provided on an inner wall of the rear shall 6 along an edge which are abutted against an edge of the light guiding sleeve 2 (Fig. 3).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 211957023) (See NPL for English Translation).
In respect to claim 5 and 6, Chen et al. further disclose that the control board is interposed between the screen and an inner wall of the rear shell, but disclose that it is contained by snap-fitting, however, providing a screw and/or positioning post, would have been obvious to one of ordinary skill in the art at the time the invention was made at the effective filing date of the present application to provide further secure the control board. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, providing a screw between components to provide additional securing or a positioning post to assure proper positioning.
In respect to claim 8, Chen et al. further disclose that the front cover is fixed to the rear shell via snap fit, however, but do not disclose using ultrasonic welding. However, providing an ultrasonic welding between parts would have been obvious to one of ordinary skill in the art at the time the invention was made at the effective filing date of the present application to provide further secure the front cover to the rear shell. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, providing a permanent connection between parts (e.g. via well known ultrasonic welding) to permanent secure parts (if removable/interchangeable parts are not desired).
In respect to claims 1-4, 7, and 9-10, Chen et al. disclose the structures, including specifically that a light-guiding post 4, but do not specifically disclose light-guiding properties to the area “sleeve” around the screen (however the sleeve is a “light-guiding sleeve” on account of providing connection to the light-guiding posts), however, there are an extremely large variety of plastics (including silicone rubber) which are transparent, partially transparent, or translucent and do to the overwhelming majority of these plastics having a higher refractive index than air, will act as “light-guides”. Selection of any of these known plastics is obvious 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.
Allowable Subject Matter
Claims 11-20 may be allowable if rewritten to overcome 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.
Claim 1 continues to provide unclear terminology which makes clear comparison to any of the prior art extremely difficult. If the applicant provided clear terminology for the structures, in their plain and ordinary meaning, a useful comparison to the prior art can be made.
Response to Arguments
Applicant's arguments filed 03/19/26 have been fully considered but they are not persuasive.
The applicant has made no effect to clarify the independent claim, resulting in further frustration in attempting to compare the prior art to the present invention. The confusing terms are further unclear in view of the Specification contain only three pages of detailed description and only two Figures which do not show any details whatsoever, only general connections between large parts. Thus, any interpretation on how the light guiding structure is a “sleeve” is unclear. The term “light-guiding” is merely functional and further evokes the scope of enablement rejection above, wherein the independent claim recites a functionality, with no structure, other than a sleeve, wherein the actual structure is not even a sleeve.
In respect to the 35 USC 112(b) rejection and objection to the Specification, some of the claimed terms (also in the Specification) have been rectified by argument or amendment (and corresponding changes to the Specification). However, the term “light-guiding sleeve” is not amended and remains unclear. The term “light-guiding” is permitted since the silicone rubber has a higher index of refraction than air, and thus may act to guide light through total internal refraction, however a “sleeve” is inconsistent with its plain and ordinary meaning. The explanation that the “sleeve” wraps around the screen is not persuasive. The “sleeve” actually simply forms a border around the screen. A sleeve as known in the art, would accommodate the screen through an opening which would slide into the sleeve. There is nothing in the Drawings or Specification which supports this. The interpretation that the “sleeve” has an opening, in which the screen is inserted or accommodated is not satisfactory. An opening in sleeve is provided on the thin periphery, not a through opening. A sleeve offers protection after sliding through the opening. Contrarily either a through hole or embedding on one side (unclear from the Specification and/or Drawings) provides no protection. It is simply a flexible frame or border around a periphery of the screen.
The Drawing objection has been obviated by amendment of the term “accommodating groove” to “accommodating space”
In respect to the 35 USC 102 rejection, the applicant contends that Nilsson fails to disclose an indicator light, however, the light 11 is clearly disclosed and 21 (the transparent plastic) was simply a typographical error. In respect to the arguments that “the front part 5 does not form a sleeve around the screen 3”, the term “sleeve” is inconsistent with its plain and ordinary meaning as detailed above, and thus unclear and indefinite. The front part 5 clearly fits over the screen, acting as a cover, similar to the actual disclosure of the present invention (see its engagement to the rear part 6 forming the accommodating space (Fig. 3). The contention that “the edge and corners of the screen 3 of Nilsson cannot be protected and can be easily damaged” is clearly false, as the screen is completely encapsulated in the cover (Fig. 1). Thus, any alleged differences are drawn to unclear language which contradicts the plain and ordinary meaning conferred by one of ordinary skill in the art.
No arguments against the 35 USC 103 rejection are provided, thus it is assumed that the arguments against the 35 USC 103 rejection are the same as the 35 USC 102 rejection, and thus are not persuasive for the reasons detailed above.
Although the independent claim was not amended, several dependent claims were amended, as well as the addition of 10 new claims. Further searching of these claims prompted further search and consideration and/or application of new art, thus this Office Action is FINAL.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
Prosecution Insights