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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 11-15 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 connector including a plurality of wires connected to the circuit board, does not reasonably provide enablement for the same circuit board without any form of wiring. 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.
When considering whether claims in a utility patent application are enabled, USPTO personnel will use the Wands factors to ascertain whether the amount of experimentation required to enable the full scope of the claimed invention is reasonable. The focus of the examination inquiry is whether everything within the scope of the claim is enabled. MPEP §2164.08.
Here, claims 11-15 recite a connector bearing substantial similarity to the connector of claims 1-10, but notably fails to recite “a plurality of signal wires” as recited by claims 1-10. More significantly, Applicant does not recite any means of transmitting electrical power or signals within claims 11-15. Thus, the full scope of the claim encompasses embodiments wherein a circuit board is provided with a grounding bar clamped to the circuit board, but without any further wiring or electrically transmissive elements. The disclosure as filed fails to provide a reasonable basis for enablement of such a scope.
Instead, the disclosure explicitly and exclusively contemplates an embodiment wherein the circuit board is provided with a plurality of wires configured to transmit electrical signals to or from the circuit board. While common knowledge in the art may provide for means of electrical signal transmission other than wires, the same cannot be said of the embodiment having no transmissive means. Indeed, a connector without means for transmission of electrical signals is not a functional connector.
Turning to the Wands factors, Examiner finds that factors A, B, C, F, G, and H all favor a finding of non-enablement, while factors E and F are neutral at best. As discussed above, the breadth of the claims (i.e., the full scope of the claim as filed) exceeds that which is reasonably disclosed by the claims, drawings, and specification as filed. The nature of the invention and the state of the prior art are not conducive to one of ordinary skill understanding or inferring how to make and use the claimed connector based on the instant disclosure because the prior art does not contemplate a connector having a circuit board that is not connected to some transmissive element for conducting electrical signals. As noted above, the disclosure as filed does not address any embodiments other than the embodiment including a plurality of signal wires, thus it cannot be said that the inventor provides adequate direction with respect to making and using the device of claims 11-15. Similarly, there are no working examples of how one would create a functional connector without also providing wiring or equivalent transmissive means. As a result of the above, one of ordinary skill in the art would be required to perform an undue amount of experimentation to bridge the gap between the full scope (i.e., a connector withing wiring or equivalent means) device of claims 11-15 and a functional connector.
As such, Examiner finds that claims 11-15 are properly rejected under §112(a) because the disclosure as filed does not enable the full scope of the subject matter recited in claims 11-15.
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) 1-8 and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 9,035,183 (“Kodama”).
Regarding claim 1, Kodama discloses:
A connector (FIG 10), comprising:
a circuit board (40) having an upper surface (as shown) and a lower surface (inherent; cables 10 include lower cables which are clearly attached to a lower surface of board 40) opposite to each other (as shown), the upper surface comprising a plurality of upper signal contacts (contacts 41 which are connected to signal wires 11) and a plurality of upper ground contacts (contacts 41 which are connected to grounding protrusions 222B), the lower surface comprising a plurality of lower signal contacts and a plurality of lower ground contacts (inherent to the presence of lower wires and lower ground protrusions);
a plurality of signal wires (differential signal transmission cables 10), some of the signal wires being in contact with the upper signal contacts respectively, others of the signal wires being in contact with the lower signal contacts respectively (as shown by FIG 10); and
a ground bar (connecting member 220) in contact with the upper ground contacts and the lower ground contacts (col. 7, ll. 24-27; col. 8, ll. 13-26).
Regarding claim 2, Kodama discloses the limitations as set forth in claim 1 and further discloses the ground bar (220) comprising an upper portion (portion including upper wall 221A), a sidewall portion (221B, “sidewall”), and a lower portion (lower instance of 220), the upper portion is in contact with the upper ground contacts, the sidewall portion is connected to the upper portion and the lower portion, and the lower portion is in contact with the lower ground contacts (as is clearly shown by FIG 10).
Regarding claim 3, Kodama discloses the limitations as set forth in claim 2 and further discloses at least one of the signal wires comprising a differential pair (col. 4, ll. 4-8) and a shielding film (FIG 10, outer conductor 13), and the shielding film is electrically connected to the ground bar (col. 3, ll. 66-67) and located between the upper portion and the lower portion (as is clearly shown in FIG 10).
Regarding claim 4, Kodama discloses the limitations as set forth in claim 2 and further discloses at least one of the signal wires comprising a differential pair (col. 4, ll. 4-8), and Kodama may be further interpreted as discloses the sidewall portion having a through hole corresponding to the differential pair, and the differential pair passing through the through hole for connection to the circuit board.
While Examiner has cited element 221B as “a sidewall portion” in claim 2 above, the reference may be plausibly and reasonably interpreted such that a rearward surface of connecting member 20 constitutes “a sidewall portion” or a part of “a sidewall portion” because sidewalls 221B are three-dimensional objects and, therefore, must inherently have a surface on a rear-facing side of connecting member 220. As connecting member 220 may be “integrally formed” (col. 8, ll. 25-26), the rear surface of connecting member 220 would form a rectangular surface having a large rectangular opening therein. Thus rear, rectangular surface with a rectangular opening extends from the sidewalls and, thus, may be reasonably interpreted as being a part of “sidewall 221B.”
Thus, this rear facing surface, being a subelement or constituent member of sidewall 221B, and having a hole/opening formed therein, wherein the differential signal pair cables 10 pass through said hole/opening before connection to the board (as is clearly depicted by FIG 10) anticipates the instant subject matter of claim 4. Thus, Kodama discloses each and every limitation of claim 4 when the reference is properly considered for all that it reasonably discloses.
Regarding claim 5, Kodama discloses the limitations as set forth in claim 2 and further discloses the upper portion having a main panel (“upper wall 221A”) connected to the sidewall portion (as seen in FIG 10) and a plurality of finger portions (protruding portions 222A) connected to the main panel (as shown in FIG 10), and the finger portions extend away from the sidewall portions (as shown in FIG 10).
Regarding claim 6, Kodama discloses the limitations as set forth in claim 5 and further discloses the finger portions and the signal wires being arranged alternately (as seen in FIG 10).
Regarding claim 7, Kodama discloses the limitations as set forth in claim 2 and further discloses the circuit board (40) having a side surface connected to the upper surface and the lower surface (inherent to any three-dimensional object, but also explicitly shown by FIG 10), and the sidewall portion faces the side surface (at least some portion of sidewall 221B, as explicitly shown or as interpreted by Examiner in the rejection of claim 4 above, may be reasonably interpreted as “facing” at least one of the side surfaces of board 40).
Regarding claim 8, Kodama discloses the limitations as set forth in claim 1 and further discloses each of the signal wires (10) comprising a differential pair (col. 4, ll. 4-8) and a shielding film (13) surrounding the differential pair, the ground bar having a plurality of soldering openings (the gaps between protruding portions 222A, 222B may be reasonably interpreted as “soldering openings”), the soldering opening respectively correspond to the differential pairs (as shown), and the soldering opening expose the shielding film (as seen in FIG 10).
Regarding claim 10, Kodama discloses the limitations as set forth in claim 1 and further discloses the ground bar (220) having a C-shaped structure (as seen at the end of connecting members 220 in FIG 10, a C-shape is formed between upper and lower protrusions 222B), and two ends of the C-shaped structure (i.e., an upper and lower end) clamp1 on the upper surface and the lower surface respectively (as shown in FIG 10).
Regarding claim 11, Kodama discloses:
A connector (FIG 10), comprising:
a circuit board (40) having an upper surface (as shown) and a lower surface (inherent; cables 10 include lower cables which are clearly attached to a lower surface of board 40) opposite to each other (as shown), the upper surface comprising a plurality of upper signal contacts (contacts 41 which are connected to signal wires 11) and a plurality of upper ground contacts (contacts 41 which are connected to grounding protrusions 222B), the lower surface comprising a plurality of lower signal contacts and a plurality of lower ground contacts (inherent to the presence of lower wires and lower ground protrusions);
a ground bar (220), wherein two ends of the ground bar (upper and lower protrusions 222B) clamp2 on the upper surface and the lower surface respectively and are in contact with the upper ground contacts and the lower ground contacts respectively (as shown by FIG 10).
Regarding claim 12, Applicant merely recites the same subject matter found in claim 2. As shown above, Kodama anticipates the subject matter of claim 2. Examiner therefore finds that the rejection of claim 2 applies, mutatis mutandis, to the subject matter of claim 12.
Regarding claim 13, Applicant merely recites the same subject matter found in claim 5. As shown above, Kodama anticipates the subject matter of claim 5. Examiner therefore finds that the rejection of claim 5 applies, mutatis mutandis, to the subject matter of claim 13.
Regarding claim 14, Applicant merely recites subject matter substantially identical in scope to the subject matter recited in claim 4. As shown above, Kodama anticipates the subject matter of claim 4. The openings as discussed in claim 4 may furthermore be reasonably interpreted as being arranged sequentially in pairs on the relevant sidewall portion (see FIG 10, wherein middle protrusions 222B correspond to a wall in between rear openings of connecting member 220; said holes are arranged in a line, i.e., “sequentially,” and are “paired” in the sense that two openings are provided for the top and two openings are provided for the bottom). Examiner therefore finds that the rejection of claim 4 applies, mutatis mutandis, to the subject matter of claim 14.
Allowable Subject Matter
Claims 9 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, taken alone or in reasonable combination with others, fails to disclose a ground bar according to claim 8 or 11, further comprising at least one solder groove communicated with the/a plurality of soldering openings. Kodama is the closest art of record and a detailed rejection of claims 8 and 11 is provided above. While Kodama discloses soldering openings, there is no disclosure of a solder groove communicated with said soldering openings. Examiner is unable to find any other prior art that might be combined with Kodama to arrive at the instant limitations.
As a result, claims 9 and 15 would be allowable over the prior art of record if each claim were rewritten in independent form including all of the limitations of the base claim and any intervening claims (i.e., claim 9 rewritten to include the subject matter of claims 1 and 8, and claim 15 rewritten to include the subject matter of claim 11).
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.
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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.
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/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 Broadly construed, the verb form of “clamp” may be defined as “to fasten with or as with a clamp.” The term “fasten” may be broadly interpreted to mean “to attach especially by pinning, tying, or nailing.” Both definitions are provided by Merriam-Webster. Thus, to meet the instant limitation the C-shaped structure of Kodama must “attach as with a clamp.” A clamp is attached by placing it around an edge of an object; the C-shaped structure of Kodama is attached by placing it around an edge of the board. Thus, the C-shaped object of Kodama may be reasonably interpreted as being “clamped” on the upper and lower surfaces of board 40.
2 Broadly construed, the verb form of “clamp” may be defined as “to fasten with or as with a clamp.” The term “fasten” may be broadly interpreted to mean “to attach especially by pinning, tying, or nailing.” Both definitions are provided by Merriam-Webster. Thus, to meet the instant limitation the C-shaped structure of Kodama must “attach as with a clamp.” A clamp is attached by placing it around an edge of an object; the C-shaped structure of Kodama is attached by placing it around an edge of the board. Thus, the C-shaped object of Kodama may be reasonably interpreted as being “clamped” on the upper and lower surfaces of board 40.
Prosecution Insights