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 .
DETAILED ACTION
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11538608 B2 Tohyama (Tohyama).
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Regarding claim 1, Tohyama discloses a wire harness (Annotated Tohyama Figure 1) comprising: an electric wire (Annotated Tohyama Figure 1) for transmitting electric power; a grommet (Annotated Tohyama Figure 2) configured to be attached to an opening (Annotated Tohyama Figure 2) through which the electric wire (Annotated Tohyama Figure 1) extends and to accommodate the electric wire (Annotated Tohyama Figure 1); a water-blocking plug (Annotated Tohyama Figure 1) through which the electric wire (Annotated Tohyama Figure 1) extends, the water-blocking plug (Annotated Tohyama Figure 1) being arranged to block entry of water into the grommet (Annotated Tohyama Figure 2); a shielding member (Annotated Tohyama Figure 1) attached to a circumference of the water-blocking plug (Annotated Tohyama Figure 1); a first close contact layer (Annotated Tohyama Figure 1) attached to an outer circumference (Annotated Tohyama Figure 1) of the shielding member (Annotated Tohyama Figure 1) so that the shielding member (Annotated Tohyama Figure 1) is tightly fitted to the water-blocking plug (Annotated Tohyama Figure 1); and a second close contact layer (Annotated Tohyama Figure 1) attached to an outer circumference (Annotated Tohyama Figure 1) of the first close contact layer (Annotated Tohyama Figure 1) so that the first close contact layer (Annotated Tohyama Figure 1) is tightly fitted to the shielding member (Annotated Tohyama Figure 1).
Regarding claim 2, Tohyama discloses the shielding member (Annotated Tohyama Figure 1) is a braided shield (Annotated Tohyama Figure 1 [Col. 2 Ln. 41-44]) formed by strands, and the first close contact layer (Annotated Tohyama Figure 1) includes at least a butyl-based rubber (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]).
Regarding claim 3, The claims include language that defines the process by which the apparatus (product) is made. Such language amounts to a product-by-process limitations, which are treated differently than structural limitations. The MPEP provides the following: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (See MPEP Section 2113) Further, the MPEP states that "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." (See MPEP Section 2113)
Moreover, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. (See MPEP 2113)
For the reasons set forth above, Examiner will analyze the patentability of the claims based on the product itself and not based on the stated process by which it is made.
Tohyama discloses the first close contact layer (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) is a butyl-based rubber sheet (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) that includes at least a butyl-based rubber (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]); and the butyl-based rubber sheet (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) is wound around the braided shield (Annotated Tohyama Figure 1 [Col. 2 Ln. 41-44]) in multiple turns while shifting a position of the butyl-based rubber sheet (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) in an axial direction of the electric wire (Annotated Tohyama Figure 1), and a pressure is applied to the butyl-based rubber sheet (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) by a jig so that the butyl-based rubber sheet (Annotated Tohyama Figure 1 [Col. 3 Ln. 34-37]) is tightly fitted to the braided shield (Annotated Tohyama Figure 1 [Col. 2 Ln. 41-44]).
Regarding claim 5, Tohyama discloses the grommet (Annotated Tohyama Figure 2) includes an inner surface (Annotated Tohyama Figure 2) on which an annular seal (Annotated Tohyama Figure 2 [Col. 3 Ln. 7-13]) is arranged to water-tightly seal a gap (Annotated Tohyama Figure 2 [Col. 3 Ln. 7-13]) between the grommet (Annotated Tohyama Figure 2) and the second close contact layer (Annotated Tohyama Figure 1).
Regarding claim 6, Tohyama discloses the water-blocking plug (Annotated Tohyama Figure 1) includes a hole (Annotated Tohyama Figure 1) through which the electric wire (Annotated Tohyama Figure 1) extends, and the hole (Annotated Tohyama Figure 1) is defined by a wall (Annotated Tohyama Figure 1) on which an annular seal (Annotated Tohyama Figure 1) is arranged to water-tightly seal a gap (Annotated Tohyama Figure 1) between the wall of the hole (Annotated Tohyama Figure 1) and the electric wire (Annotated Tohyama Figure 1).
Regarding claim 7, Tohyama discloses the grommet (Annotated Tohyama Figure 2) includes a tubular portion (Annotated Tohyama Figure 2) accommodating an assembly (Annotated Tohyama Figure 2) that includes the water- blocking plug (Annotated Tohyama Figure 1), the electrical wire (Annotated Tohyama Figure 1), the shielding member (Annotated Tohyama Figure 1), the first close contact layer (Annotated Tohyama Figure 1), and the second close contact layer (Annotated Tohyama Figure 1); and a seat portion (Annotated Tohyama Figure 2) supporting a proximal end of the tubular portion (Annotated Tohyama Figure 2).
Regarding claim 8, Tohyama discloses the seat portion (Annotated Tohyama Figure 2) includes a water-blocking wall (Annotated Tohyama Figure 2) formed in a circumferential shape (Annotated Tohyama Figure 2) continuously extending along an entire edge (Annotated Tohyama Figure 2) of the seat portion (Annotated Tohyama Figure 2).
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(s) 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 11538608 B2 Tohyama (Tohyama) in view of US 20230352207 A1 Sakura (Sakura).
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Regarding claim 4, Tohyama discloses the second close contact layer (Annotated Tohyama Figure 1 above) . . . the electric wire (Annotated Tohyama Figure 1 above).
Tohyama fails to disclose that said second close contact layer is a tape that is wound in multiple turns while shifting a position of the tape in an axial direction of said electric wire. However, Sakura teaches that said second close contact layer is a tape (Annotated Sakura Figure 1 above) that is wound in multiple turns while shifting a position (Annotated Sakura Figure 1 above) of the tape (Annotated Sakura Figure 1 above) in an axial direction (Annotated Sakura Figure 1 above) of said electric wire.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the second close contact layer of Tohyama by incorporating a tape wound in multiple turns while shifting a position of the tape in an axial direction of the electric wire, as taught by Sakura. Such a modification would not produce any unexpected results. Moreover, doing so would allow the tape to maintain consistent, overlapping coverage along the length of the wire during winding, thereby providing more uniform close contact and protection while accommodating flexing or bending of the wire without gaps forming in the wound layer thus creating an even more water tight seal.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the references used in this rejection and those cited in the PTO-892, the following references are very relevant to the claimed invention: US 20220048447 A1, US 20150008032 A1, US 11408458 B2.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASA F SOLOMON whose telephone number is +1 571-272-8379. The examiner can normally be reached Monday-Friday: 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at +1 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASA FRANKLIN SOLOMON/Examiner, Art Unit 3632
/TERRELL L MCKINNON/Supervisory Patent Examiner, Art Unit 3632
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