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 Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sugita et al. (WO 2017/134730) in view of Hashimoto et al. (JP 10-294023).
Sugita et al. discloses an electrical wire comprising a conductor wire (1); a non-crosslinked insulation member (2, page 4 of the machine translation) covering an outer circumference of the conductor wire; and a resin body (30) directly covering the insulation member, wherein the insulation member contains a thermoplastic polyurethane (re-claim 1).
Sugita et al. does not disclose the insulation member also containing an acrylic thermoplastic elastomer and the resin body containing polybutylene terephthalate (PBT) (re-claim 1).
Hashimoto et al. discloses an electrical wire comprising an insulation member which contains a thermoplastic polyurethane and an acrylic thermoplastic elastomer (component c) and a resin body containing PBT.
It would have been obvious to one skilled in the art to include an acrylic thermoplastic elastomer, as taught by Hashimoto et al., in the insulation member of Sugita et al. to provide the insulation member with heat resistance and water resistance.
It would have been obvious to one skilled in the art to modify the resin body of Sugita et al. to contain PBT since PBT is a known (molding) resin due to its ease of molding and superior mechanical strength as taught by Hashimoto et al. ([0002]).
It has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, molded, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Re-claim 2, Sugita et al. discloses the insulation member further containing PBT (page 3, last paragraph of the translation).
Re-claim 3, Sugita et al. discloses the insulation member further containing a polyester-based thermoplastic elastomer (page 3 last two paragraphs).
Re-claim 4, Sugita et al. discloses the insulation member (2) being an insulator directly covering the outer circumference of the conductor wire.
Re-claim 6, Sugita et al. discloses a plurality of insulated wires including the conductor wire (1) and the insulation member (2), wherein the insulated wires are covered collectively with the resin body.
Re-claims 7 and 8, Sugita et al. discloses the polybutylene terephthalate or polyester-based thermoplastic elastomer being contained in an amount of 30 parts by mass (pbm) relative to a total of 100 pbm of the resin contained in the insulation member (abstract).
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (JP 2019-136988) in view of Hashimoto et al.
Ikeda et al. discloses an electrical wire comprising a conductor wire (6); a non-crosslinked insulation member (5, Ikeda does not disclose sheath 5 being crosslinked) covering an outer circumference of the conductor wire; and a resin body (8) directly covering the insulation member, wherein the insulation member contains a thermoplastic polyurethane (re-claim 1).
Ikeda et al. does not disclose the insulation member (5) also containing an acrylic thermoplastic elastomer and the resin body containing PBT (re-claim 1).
Hashimoto et al. discloses an electrical wire comprising an insulation member which contains a thermoplastic polyurethane and an acrylic thermoplastic elastomer (component c) and a resin body containing PBT.
It would have been obvious to one skilled in the art to include an acrylic thermoplastic elastomer, as taught by Hashimoto et al., in the insulation member of Ikeda et al. to provide the insulation member with heat resistance and water resistance.
It would have been obvious to one skilled in the art to modify the resin body of Ikeda et al. to contain PBT since PBT is a known (molding) resin due to its ease of molding and superior mechanical strength as taught by Hashimoto et al. ([0002]).
It has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, molded, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Re-claim 5, Ikeda et al. discloses that the insulation member (5) is a sheath indirectly covering the outer circumference of the conductor wire.
Response to Arguments
Applicant’s arguments with respect to claims 7 and 8 have been considered but are moot in view of new rejection.
Applicant argues that Sugita discloses that “the insulator 2 does not need to be crosslinked.” On the other hand, Hashimoto discloses that the covering layer is required to be crosslinked. Therefore, there is no motivation to combine feature of Hashimoto with Sugita.
Examiner would disagree because Sugita, on page 4 of the machine translation, discloses that the insulator 2 does not need to be crosslinked, “but may be cross-linked.” The fact that Hashimoto teaches adding the acrylic thermoplastic elastomer in the insulator would provide the same with heat resistance and water resistance, one skilled in the art would have motivated to include the acrylic thermoplastic elastomer taught by Hashimoto in the insulator of Sugita.
Applicant’s arguments with respect to the combination of Ikeda and Hashimoto are similar to the arguments regarding Sugita and Hashimoto. Therefore, the response above would be equally applied herein.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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