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 .
Preliminary Comments
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. These errors give rise to a proliferation of issues related to scope and clarity, precluding a meaningful understanding of the claimed subject matter. While Examiner has attempted to evaluate the claims in view of the prior art it should be understood that any rejection based on prior art is made in view of Examiner’s best understanding of the claimed subject matter. Moreover, an omission of a prior art rejection is not an indication of allowable subject matter as the originally filed claims are so deficient as to preclude a meaningful understanding of the claims and scope thereof.
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 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.
Claims 1-7 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 press process of forming a predetermined closed region by press molding” in lines 3-4 of the claim as filed. It is unclear what Applicant is attempting to claim because the limitation neither recites nor suggests what “a predetermined closed region” is nor how it is formed. While the limitation recites “by press molding,” there is no limitation pertaining to what is being pressed or molded. Thus, the limitation amounts to little more than an abstract idea asserting the formation of something through a generic process.
Applicant continues, reciting “separating a predetermined bent region from a periphery while leaving only a connection portion that is a part of the bent region in the closed region” in lines 4-7. It is unclear what “a periphery” refers to because Applicant has not recited any previous structures that might have a physical periphery. “A closed region” is not a physical object, but instead a designation of a portion of another item. Moreover, it is unclear how the “predetermined bent region” is formed as no method step establishing such a bent region is previously recited. It is furthermore unclear how the bent region might be “separated” as claimed while still including “a connection portion” that is part of “the bent region in the closed region.”
Applicant then recites “a bending process of bending the bent region at the connection portion to laminate the bent region with a laminated region that is another region in the closed region, and developing the part of the bent region outside the closed region” in lines 8-12. The recitation of a bending process for the bent region, which must already be bent in order to be “a bent region” as previously recited, renders the claim ambiguous because it is unclear whether the region was previously bent, is now being bent in a different direction, or some other method step that is rendered unclear by the translation of the foreign subject matter.
It is additionally unclear whether “to laminate the bent region” is the result of “a bending process,” or if the limitation is meant to recite an additional step of laminating. This issue is further compounded by recitation of “a laminated region” that implies that a step of lamination has occurred prior to the bending process but was never recited in any clear manner. It is therefore also unclear whether the bent region is laminated over the laminated region, or if “a laminated region” is just a poor translation intending to recite a specified region within the closed region in which a lamination step is performed.
Finally, Applicant’s recitation of “the part of the bent region outside the closed region” is indefinite because the limitation lacks any clear antecedent basis. The only prior recitation of the bent region only recites a portion of the bent region in the closed region, but neither recites nor suggests that some portion of “the bent region” is outside the closed region. It is also unclear how the region is “developed” because the term “development” carries no inherent meaning that would impart a meaningful limitation on the subject matter.
In view of the foregoing, Examiner finds that claim 1 is wholly indefinite. The subject matter is not recited in any manner that distinctly points out or claims the instant subject matter with any particularity. Indeed, the subject matter is virtually incomprehensible, seemingly amounting to little more than a list of abstract processes with an alleged output. Applicant’s idiomatic language precludes any meaningful understanding of the claims, and thus Examiner is unable to reasonably ascertain the scope of what Applicant considers to be the inventive subject matter. As such, a rejection of claim 1 based on prior art cannot be provided at this time. This is not an indication of allowable subject matter. Claim 1 will be reevaluated upon receipt of arguments and/or amendments that adequately address the issues identified above. Claims 2-7 depend from claim 1, fail to cure its deficiencies, and are therefore rejected for at least the same reasons.
Regarding claim 2, Applicant further recites “further comprising a fixing process of fixing the bent region and the laminated region.” This limitation, however, is rendered indefinite because claim 1 already appears to recite a step of fixing the bent region (“bending the bent region…to laminate the bent region”). It is therefore unclear whether the relevant portions of the claims are simply the result of a poor-quality translation, or if Applicant is attempting to recite an additional fixing process in addition to the step of lamination seemingly recited by claim 1. Appropriate corrections are required. Claim 3 depends from claim 2, fails to cure its deficiencies, and is therefore rejected for at least the same reasons.
Regarding claim 3, Applicant further recites “a periphery” in line 6 of the claim as filed. It is unclear whether this is meant to establish a new periphery different from that recited in claim 1, or if it is meant to refer to the established periphery. Applicant also recites “bending the protrusion formation region in the protrusion connection portion” in lines 10-11. It is unclear how the protrusion formation region would be bent in the connection portion to which is it attached. It would appear that Applicant’s translation has failed to clearly convey an intent to bend at the protrusion connection portion. Additionally, the claim also recites “the bent region and the laminated region are fixed by further bending the protrusion passed through the fitting hole” in the final lines of the claim. There is no antecedent basis for this limitation as none of the preceding limitations recite a step of passing the protrusion through the fitting hole. Appropriate corrections are required.
Claims 8 and 9 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 singular terminal comprising internal and external portions, does not reasonably provide enablement for an external terminal and an internal terminal. 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 and use the invention commensurate in scope with these claims.
Regarding claim 8, Applicant recites “an external terminal” and “an internal terminal” in lines 3 and 6, respectively. A review of the disclosure as filed makes clear that there is no support for such elements. Paragraph [0027] provides that terminal 4 is formed by bending region 243 (which is improperly called “a bent region” despite not being bent). Paragraph [0031] recites “it can also be said that when the terminal 4 is divided into two for convenience, an internal terminal 4I…and an external terminal 4E…are connected to each other.” As seen in FIG 4, terminal 4 is not physically divided to produce two separate terminals. It is evident that the term “divided” as utilized in paragraph [0031] denotes distinct regions of the same physical element. As such, the recitation of distinct terminals as is done in claim 8 is not supported by the disclosure as filed. Instead, the disclosure provides support only for an external region and an internal region of a terminal.
Additionally, there is not enablement for “a volume of each of the external terminal and the internal terminal is substantially identical to a volume of the terminal formation hole” as recited. It is evident from the disclosure as filed, such as FIG 4, that the external portion and the internal portion cannot separately have individual volumes equal to the volume of the terminal formation hole because the terminal formation hole has a volume substantially similar to the volume of the entire terminal. Thus, there is only support in the disclosure as filed for “a combined volume of each of the…terminal[s] is substantially identical to a volume of the terminal formation hole.”
Enablement is evaluated in view of the Wands factors. Here, the pertinent factors are the breadth of the claims (factor A), the amount of direction provided (factor F), the existence of working examples (factor G), and the quantity of experimentation required to make or use the invention based on the content of the disclosure (factor H). The remaining factors are neutral to enablement.
It is evident that the literal text of the claims exceeds the scope of that which is disclosed, as is discussed above; as such, factor A favors a finding of non-enablement. The direction and examples provided by Applicant make clear that the intended scope is a singular terminal having an external region and an internal region; thus, factors F and G favor a finding of non-enablement because the only disclosure provided teaches a narrower scope than that which is recited. Finally, the amount of experimentation required would be onerous because the disclosure provides for bending of a singular terminal, yet the claims recite two distinct terminals. As a result, one of ordinary skill would have to perform an undue amount of experimentation to determine how two distinct terminals are formed from a singular terminal without physically separating the terminals or otherwise breaking an electrical connection between the internal and external portions or terminals. Thus, factor H favors a finding of non-enablement. As all factors are either neutral or favorable toward a finding of non-enablement, Examiner concludes that the full scope of claim 8 as filed is not enabled under §112. Claim 9 recites all of the limitations of claim 8 and is therefore also rejected for at least the same reason.
Appropriate corrections are required.
Claims 8 and 9 are also 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 8, Applicant recites “a closed region” and further recites the “closed region” as including “a terminal formation hole that is a hole.” It is unclear how “a closed region” would be closed if there is a hole provided in the region that inherently forms an opening in said “closed region.”
Applicant further recites “an internal terminal…formed at a connection portion that is an end of the terminal formation hole…” A “hole” is the absence of material; it is therefore unclear how a physical object or element might be “an end of the…hole” as recited. Moreover, it is unclear what exactly “is an end of the terminal formation hole” as recited; is “a connection portion” the end of the terminal formation hole, or is “an internal terminal” the end of the terminal formation hole? It is evident that the limitation is subject to multiple, plausible claim constructions. Similarly, the limitation “a volume of each of the external…and the internal terminal is substantially identical to a volume of the terminal formation hole” may be construed to recite that the individual volume of the external portion and the internal portions, separately from each other, are substantially identical to a volume of the terminal formation hole. Alternative, the same limitation may be construed to recite the combined volume of the internal and external portions being substantially identical to the volume of the terminal formation hole.
“[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). Thus, the limitation renders claim 8 indefinite. Claim 9 recites all of the limitations of claim 8 and is therefore rejected for at least the same reasons.
Appropriate corrections are required.
Claim Interpretation
While Examiner is unable to decipher the intended subject matter of claims 1-7 due to issues of clarity and definiteness arising from the translation, claims 8 and 9 may be more easily construed in view of the disclosure as filed.
With respect to claim 8, Applicant appears to recite limitations similar to the following:
Claim 8 (Examiner’s Understanding) A conductor plate comprising:
a flat, plate-shaped first region,
a terminal having an external terminal region protruding from the first region, wherein the first region includes a terminal formation hole,
an internal terminal region connected to the external terminal region at a terminal region connection portion, wherein the internal terminal region has a first end provided at an end of the terminal formation hole, and
wherein a combined volume of the external terminal region and the internal terminal region is substantially identical to a volume of the terminal formation hole.
Thus, claim 8 effectively recites a conductor plate having a flat, plate-shaped first region, wherein a terminal is formed from a subset of material in the first region, the terminal extending from the first region. The terminal further includes an internal terminal region that has a first end provided at a first end of a terminal formation hole. The terminal also includes an external terminal region that is connected to the internal terminal region by a connection portion. Finally, a volume of the terminal (including its internal and external regions) is substantially identical to a volume of the terminal formation hole.
With respect to claim 9, Applicant does little more than recite a duplication of the conductor plates as recited in claim 8. Indeed, claim 9 recites the entire subject matter of claim 8, further reciting “a first conductor plate,” “a second conductor plate…disposed so as to be laminated with the first conductor plate,” “an insulating member disposed between” the first and second plates, and the respective internal terminals of each plate being disposed on sides opposite to the respective other plate. Thus, claim 9 appears to be nothing more than a duplication of parts relative to claim 8.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2002/0140517 (“Makino”), as best understood by Examiner in view of the issues raised under §112, above.
Regarding claim 8, Makino discloses:
A conductor plate (FIGS 7A-C) comprising:
a flat plate-shaped first region (hoop material 12 forms a flat, plate-shaped region),
a terminal (13a-f) having an external terminal region (e.g., the portion of each terminal closest to its respective identifier in FIGS 7A and 7B) protruding from the first region (see FIG 7C, where the terminal is folded over and thus protruding from the first region in a vertical direction), wherein the first region includes a terminal formation hole (see FIG 7C, where terminal holes exist where terminals 13a-f existed prior to bending),
an internal terminal region (portion of each terminal adjacent to the bending site of each terminal) connected to the external terminal region at a terminal region connection portion (inherent; the external and internal terminal regions are part of the same terminal and thus are inherently joined at a “connection portion” which may be arbitrarily designated), wherein the internal terminal region has a first end provided at an end of the terminal formation hole (as shown in FIG 7C), and
wherein a combined volume of the external terminal region and the internal terminal region is substantially identical to a volume of the terminal formation hole (as is apparent from FIGS 7A and 7B).
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(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Makino in view of U.S. Patent No. 8,641,428 (“Light”).
Regarding claim 9, Makino discloses the limitations of claim 9 that are also found in claim 8 (see above). Makino does not explicitly disclose the provision of two conductor plates disposed so as to be laminated with each other, having an insulating member disposed between said conductor plates and wherein the terminals of each conductor plate are formed and/or extend outwardly on a side opposite a respective other one of the plates.
Light discloses an electrical connector (FIGS 1 and 2) wherein a first plurality of contacts (14) are placed on an upper surface of a substrate (i.e., “an insulating member”) and a second plurality of contacts (16) are placed on a lower surface of the substrate, with electrical vias provided in the substrate to facilitate electrical connection between the upper and lower contacts as desired, wherein the terminals of the upper and lower contacts extend outwardly on a side opposite a respective other one of the plates (as shown). The arrangement allows for electrical connection between two opposing surfaces (as shown by FIG 8d).
It would have been obvious to one of ordinary skill in the art (prior to the effective filing date) to modify Makino by providing a second conductor plate identical to the first, placing the two conductor plates on opposing sides of an insulating member and providing for connections between said conductor plates with vias, said conductor plates having terminals extending outwardly on a side opposite a respective other one of the conductive plates, as is taught by Light, for the purposes of providing an electrical connector that may be interposed between two opposing surfaces, as is also taught by Light.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Those references cited, but not discussed above, generally pertain to electrical connectors and methods of manufacturing the same.
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.
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/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
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