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 § 112
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 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
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 and antecedent basis issues.
For instance, the terms “associated”, “representative” and “corresponding” are used in a relative unclear manner throughout the claims, e.g., associated in what manner: size, location, material, proximity, or other? See MPEP 2173.05(b).
As another example, the term “characterized” is recited repeatedly throughout the claims, which is commonly used in PCT applications and/or under Jepson format to set forth admitted prior art of another. However, none of the figures are labeled as being “admitted prior art” nor does the written description expressly set forth any “admitted prior art” of another such that it is unclear what, if anything, in the claims applicant intends to be admitted prior art or not. Note the following policy sections:
MPEP 1824 [R-08.2012] states “
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PCT Rule 6.3. Manner of Claiming(ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.”
MPEP 2129 III states “
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Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject mater of the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
37 CFR 1.75 (e) states “Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) A phrase such as “wherein the improvement comprises,” and (3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
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.
Claims 1-3, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Levay US9728356.
The prior art structures bolded below are presumed to be inherently capable of meeting the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which state that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claim 1. An operating device (10) for an actuator of a motor vehicle, [the operating device] comprising: a frame (50, 52, 60, 76), which can be fixed to a steering wheel of said motor vehicle; and a lever (one of 20 or 26), which can be grasped by a user and can be moved relative to said frame to a plurality of operating positions, which are spaced apart from one another and are associated with respective distinct commands for said actuator; said frame further comprising: a plurality of visual indications (54, 56) associated with said operating positions of said lever and representative of said commands; at least one light source (70) designed to emit a light beam; at least one optical conveying element (30), which is optically interposed between said light source and said visual indications along a first axis (C1) so as to backlight said visual indications; characterized by said lever comprising an optical magnifying element (34, 36), which is optically coupled to said conveying element and is adapted to magnify each visual indication, when said lever is in said corresponding position.
Claim 2. The operating device according to claim 1, characterized by said lever comprising a hole (hole in 20 housing 34/36) housing said magnifying element and extending along a second axis (axis of 34, 36).
Claim 3. The operating device according to claim 2, characterized by said frame comprising a surface (surface of) made of an opaque material (50, “colored entirely”), on which said visual indications are arranged and which faces said optical conveying element; said visual indications being transparent (54, “translucent… acrylic resin…”); said hole being arranged so as to face each visual indication and said first and second axes being coincident, when said lever is in the corresponding operating position.
Claim 5. The operating device according to claim 1, characterized by said magnifying element being a magnifying lens (34, 36).
Claim 6. The operating device according to claim 5, characterized by said magnifying lens comprising, in turn, a first axial end surface (convex surface of 34 and/or 36) and a second axial end surface (concave surface of 34 and/or 36) opposite said first surface; said first surface being convex and axially interposed between said visual indications [and] said second surface along said second axis; said second surface being concave.
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 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Levay US9728356 and Takahashi US20120051074.
Claim 4. The Levay optical element is not expressly disclosed to comprise fibers. However, Takahashi teaches that it was well known in the art for an optical element to comprise optical fibres (21) for the desirable purpose of easily directing the light (para.0175, 0176). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify as such.
Claim 7. The Levay magnifying element is not expressly disclosed as being an optical fibre collimator. However, Takahashi teaches that it was well known to be desirable in the art for a magnifying element be an optical fibre collimator (21/22) for the purpose/benefit of easily redirecting the illuminating direction and easily reducing the irradiated region (para.0030, 0209, 0317, 0471, 0486). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify as detailed above.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Levay US9728356, Applicant’s Admitted Prior Art and/or Intini US2016/059699.
Claims 8 and 9 (as best understood, see 35 USC 112 rejections) set forth only additional admitted prior art particulars (e.g., steering wheel, motor vehicle, etc.) The term “characterized” is not expressly recited in either of claims 8 or 9 to designate any particulars thereafter as being applicant’s invention, but these claims depend from claim 1 which recites the term “characterized” prior to certain particulars of the operating device of claim 1 only. Accordingly, it would have been obvious to modify the Levay operating device to incorporate any particulars of claims 8 and 9 lacking in Levay, since they are admitted prior art of another and thus well known to be desirable.
Alternatively, if claims 8 and 9 are not to be interpreted as admitted prior art, note that the Levay operating device includes a hub (26), which can rotate around a third axis (axis of 26) and houses the frame, said lever comprising an arm (20), which can be grasped by a driver and is located on the outside of said hub. Levay does not expressly state that the operating device is comprised by a steering wheel of a motor vehicle. However, Intini teaches that it was extremely well known to be desirable for an operating device (Intini, 1) to be comprised by a steering wheel of a motor vehicle (Intini, para.0047) for the benefit of increasing utility (e.g., allowing for operation of the vehicle by the operator, para.0047). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify as such.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
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