DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/28/2024 is being considered by the examiner.
Claim Objections
Claim 4 is objected to because of the following informalities:
The units for the linear expansion coefficient should be included -- e.g., 2.2x10-4 / °C.Appropriate correction is required.
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.
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 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
"The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed." See MPEP 2163 I. “An invention described solely in terms of…its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function” (emphasis added). See MPEP 2163 A.
The limitation at issue for all the instant claims is “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”.
With regards to the “resin coating”, applicant discloses: polyurethane resin, polyester resin, and the vague “or the like” ([0034]). However, applicant also discloses that the “resin coating” may be a material “having a content of 50 mass% or more in the resin coating”. Applicant also discloses the resin coating “may contain an additive such as a flame retardant or filler or the like”.
With regards to the “resin member”, applicant discloses: polyamide resin, polyphenylene sulfide resin, polybutylene terephthalate resin, “or the like” ([0041]). However, applicant also appears to disclose that the “resin member” may be “50 mass% or more” of the resin. Applicant also discloses that the resin member “may contain an additive such as a flame retardant or filler or the like”.
Most of the disclosed resins have either unbounded, thousands, or many species. The most specific are for the “Resin Molded Member” which are PA6T ([0071]), PA612 ([0071]), “polybutylene terephthalate” ([0041]), and “polyphenylene sulfide” ([0041]). This is not including the variations in mass%, additives, filters, etc. The following are the two most important key facts that lead to both of the instant 112(a) rejections.
1) Applicant explicitly disavows the sufficiency of the instant disclosure to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”. Applicant states ([0035]) that “even if the same resin material for constituting the resin coating 23 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of additive contained in the resin coating 23 and a content of the additive. Therefore, even if the resin coating 23 is, for example, made of PU resin, it may not be possible to satisfy an adhesion work value to be described later.” Still further, for the molded member, applicant states that ([0042]) “even if the same resin material for constituting the resin molded member 3 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin molded member 3 and a content of the additive. Therefore even if the resin molded member 3 is, for example, made of PA resin, it may not be possible to satisfy the adhesion work value to be described later.” Lastly, applicant also states ([0006]) “depending on the affinity of a resin constituting the resin molded member and a resin constituting the resin coating, sufficient waterproof performance may not be obtained. This affinity possibly changes depending on grades of the resins, the molecular weights of the resins, ratios of additives contained in the resins or the like.” These paragraphs combined with the fact that applicant does not disclose the materials and process(es) with the sufficient specificity (needed by applicant’s own admission), leads the examiner to conclude that applicant disavows the sufficiency of the instant disclosure to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”.
2) Applicant fails to disclose the materials and process(es) with sufficient specificity (needed by applicant’s own admission) to yield the claimed invention -- i.e., “a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more”. Applicant provides “examples” (e.g., [0070]-[0071], [0073], and Table 3 / [0075]); however, these examples are silent with regards to specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention. E.g., what is the exact type/formulation of resin? “PE resin” and “PU resin” are effectively unbounded in their exact chemical formula. What about the number of branched chains of the resin? The resin molecular weight? The type of additive in the resin? The content of the additive?
Lastly, claim 1 defines the invention by a result rather than by structure. Claim 1 therefore reads on the entire genus of resin-coating / resin-molded-member pairings across all polymer families, grades, molecular weights, branched-chain figurations, and additive packages that satisfy the stated adhesion-work threshold of claim 1. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. “[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention”. See MPEP 2163 II (a) ii. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. Further, “for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession”. See above regarding applicant’s own admission of unpredictability as well as the lack of sufficiently specific examples.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Specifically, the specification does not enable a person skilled in the art to make the invention commensurate with the scope of the claims -- i.e., to obtain a wire assembly having a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more across the claimed genus -- without undue experimentation.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification (note the Wands factors below are assessed based on the disclosure) is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). The primary factors applied by the examiner are:
Breadth of the claims. The resins of the claims to yield the claimed invention encompass all qualifying pairings of the open polymer genera of [0034] and [0041]. Note that this includes ([0006], [0035], [0042]) nearly unbounded versions of “polyurethane resin”, “polyester resin”, various fillers and additives in differing amounts, the number of branched chains of the resin material, and a molecular weight. Claim 1 reads on the entire genus of resin-coating / resin-molded-member pairings across all polymer families, grades, molecular weights, branched-chain figurations, and additive packages that satisfy the stated adhesion-work threshold of claim 1.
The nature of the invention. The invention is merely recited as a result (i.e., a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2”).
The level of predictability in the art. Applicant explicitly sets forth that there is a very low level of predictability. Applicant states ([0035]) that “even if the same resin material for constituting the resin coating 23 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of additive contained in the resin coating 23 and a content of the additive. Therefore, even if the resin coating 23 is, for example, made of PU resin, it may not be possible to satisfy an adhesion work value to be described later.” Still further, for the molded member, applicant states that ([0042]) “even if the same resin material for constituting the resin molded member 3 is used, adhesiveness between the resin coating 23 and the resin molded member 3 changes depending on the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin molded member 3 and a content of the additive. Therefore even if the resin molded member 3 is, for example, made of PA resin, it may not be possible to satisfy the adhesion work value to be described later.” Lastly, applicant also states ([0006]) “depending on the affinity of a resin constituting the resin molded member and a resin constituting the resin coating, sufficient waterproof performance may not be obtained. This affinity possibly changes depending on grades of the resins, the molecular weights of the resins, ratios of additives contained in the resins or the like.”
The amount or direction provided by the inventor. The amount of direction provided by the inventor is exceptionally open-ended as it relates to the resin compositions and parameters that might possibly yield the result. The examiner holds that this has been addressed exhaustively above.
The existence of working examples. As set forth above applicant provides “examples” (e.g., [0070]-[0071], [0073], and Table 3 / [0075]); however, these examples are silent with regards to specific parameters and attributes that, per applicant’s own admission, are needed to yield the claimed invention. E.g., what is the exact type/formulation of resin? “PE resin” and “PU resin” are effectively unbounded in their exact chemical formula. What about the number of branched chains of the resin? The resin molecular weight? The type of additive in the resin? The content of the additive? Also see [0006], [0034]-[0035], and [0041]-[0042] of the instant specification. Any “examples” are so vague as to preclude one of ordinary skill in the art from replicating them without undue experimentation.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure. The instant disclosure reduces the practice of the claimed invention to essentially undirected trial-and-error and the quantity of experimentation required is undue. The specification provides guidance on how to measure the adhesion work (e.g., [0044]-[0058]); however, this measurement is a post-fabrication characterization step. It only provides for measurement to determine if the result was achieved, not how to achieve the result. Most of the disclosed resins have either unbounded, thousands, or many species. The most specific are for the “Resin Molded Member” which are PA6T ([0071]), PA612 ([0071]), “polybutylene terephthalate” ([0041]), and “polyphenylene sulfide” ([0041]). The disclosure of potential materials for the resin coating are near-infinite. They are “50 mass% or more” of “a polyurethane (PU) resin, a polyester (PE) resin or the like.” Each of the PU resin and PE resin are a nearly unbounded genus with thousands of species in each. Still further, the mass% can be 50-100. Still further, any of these thousands of species may “contain an additive such as a flame retardant or filler or the like”. The quantity of experimentation is already undue based on what is set forth above in this paragraph. Yet, still further, applicant explicitly discloses that the results are highly unpredictable ([0006], [0035], [0042]) and may depend on “the number of branched chains of the resin material, a molecular weight, the type of an additive contained in the resin coating 23 and a content of the additive.”
Claim 2 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 pre-AIA the applicant regards as the invention.
Regarding claim 2: It is unclear what is meant by 0.02. Is this a percentage? If so, is it 2% or 0.02%? Is it a distance measurement?
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 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda (US 20150158220 A1).Regarding claim 1:Ikeda teaches (e.g., FIGS. 1A-1C) a wire assembly, comprising:
a wire (3) including a conductor (31a / 31b) and a resin coating (33 - [0045]); an end member (e.g., 2 / 2 + 21 / 2 + 21 + 22) connected to the conductor at an end part of the wire; and a resin molded member (4) for covering a region from the end member to the resin coating,Ikeda fails to teach
a value of an adhesion work obtained from a surface free energy of the resin molded member and a surface free energy of the resin coating being 45 mJ/m2 or more
However, Ikeda teaches the resin coating may be urethane or polybutylene terephthalate and that the resin molded member may be nylon or polybutylene terephthalate. These are the same materials contemplated by applicant’s disclosure. Ikeda further teaches that during the molding, the resin coating is at least partially melted and adhered to the resin molded member ([0044], [0072]). The point of the design of Ikeda is water-tightness / a sealed protected connection between a cable and sensor / end member.
Thus, the remaining claim limitation of the adhesion work value is rendered obvious in two ways. Firstly, the reference uses the same materials, injection molding, and also explicitly states that the resin coating is at least partially melted and adhered to the resin molded member. Since Ikeda uses the same materials and a similar process, the properties / functions are presumed to be taught as well. Secondly, the adhesion work value is a measure of the seal / water-proofness of the structure, which is a results-effective variable subject to routine optimization. One of ordinary skill in the art would strive to improve the value to increase the level of water-proofness.
Regarding claim 2:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also renders obvious:
wherein: a distortion difference between the resin molded member and the resin coating is 0.02 or less, and the distortion difference is a difference between a distortion of the resin molded member and a distortion of the resin coating when a temperature changes from 90°C to 20°C
Although Ikeda fails to teach this limitation explicitly, Ikeda does explicitly teach that the resin molded member and the resin coating are the same resin material ([0045]). As such they would inherit the same properties such as coefficient of thermal expansion and would meet or render obvious the instant claim limitations, as best understood.
Regarding claim 3:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also renders obvious:
wherein shear adhesion strength of the resin molded member and the resin coating is 0.2 MPa or more
Ikeda fails to explicitly teach this claim limitation; however, Ikeda uses the same materials contemplated by applicant’s disclosure. As such, the examiner holds that Ikeda either teaches or renders obvious the same properties / functionality.
Regarding claim 4:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also renders obvious:
wherein a difference between a linear expansion coefficient of the resin molded member and a linear expansion coefficient of the resin coating at 20°C is 2.2x10-4 or less
Ikeda fails to explicitly teach this claim limitation; however, Ikeda uses the same materials contemplated by applicant’s disclosure. Since Ikeda uses the same materials and a similar process, the properties / functions are presumed to be taught as well. Alternatively, Ikeda explicitly teaches that the resin molded member and the resin coating are the same resin material ([0045]). As such they would inherit the same properties such as coefficient of thermal expansion and would meet or render obvious the instant claim limitations, as best understood.
Regarding claim 5:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also renders obvious:
wherein an elastic modulus of the resin coating at 20°C is 100 MPa or less
Ikeda fails to explicitly teach this claim limitation; however, Ikeda uses the same materials contemplated by applicant’s disclosure. Since Ikeda uses the same materials and a similar process, the properties / functions are presumed to be taught as well.
Regarding claim 6:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also teaches (FIGS. 1A-1C):
wherein the resin molded member (4) covers the entire end member (e.g., 2 / 2 + 21 / 2 + 21 + 22)
Regarding claim 7:Ikeda renders obvious all the limitations of claim 1, as mentioned above.Ikeda also teaches (FIGS. 1A-1C):
wherein the end member (e.g., 2 / 2 + 21 / 2 + 21 + 22) is a sensor ([0042])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Herbert Keith Roberts whose telephone number is (571)270-0428. The examiner can normally be reached 10a - 6p MT.
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, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
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