Patent Application 17758606 - PLASTICS PARTS FOR ENERGY CHAINS WITH INTEGRATED - Rejection

Patent Application 17758606 - PLASTICS PARTS FOR ENERGY CHAINS WITH INTEGRATED

Title: PLASTICS PARTS FOR ENERGY CHAINS WITH INTEGRATED SENSORS

Application Information

• Invention Title: PLASTICS PARTS FOR ENERGY CHAINS WITH INTEGRATED SENSORS
• Application Number: 17758606
• Submission Date: 2025-04-08T00:00:00.000Z
• Effective Filing Date: 2022-07-11T00:00:00.000Z
• Filing Date: 2022-07-11T00:00:00.000Z
• National Class: 439
• National Sub-Class: 894000
• Examiner Employee Number: 86279
• Art Unit: 2896
• Tech Center: 2800

Rejection Summary

• 102 Rejections: 1
• 103 Rejections: 5

Cited Patents

The following patents were cited in the rejection:

• US 0224135🔗
• US 0145462🔗
• US 0268338🔗
• US 0040935🔗

Office Action Text

    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 .
Summary
Claims 24-46 are pending.  Claims 24-46 are rejected herein.  This is a First Action on the Merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a).  The drawings must show every feature of the invention specified in the claims.  Therefore, the evaluation circuit and the releasable contact of the evaluation circuit with the functional circuit must be shown or the feature(s) canceled from the claim(s).  No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(a)
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.

Claim(s) 45 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.  The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 45:  Claim 45 recites a “releasable contact of the evaluation circuit with the functional circuit.”  The evaluation circuit is not even shown in the drawings and is barely described in the specification.  It is unclear where on the line guiding system the evaluation system is located.  The releasable connection is more problematic because it sounds as if there is contact between the two circuits that is made and released during the movement of the components of the line guiding line system.  If this is the case then such a system for releasing connection needs to be explained.  If the releasable contact is only a matter of a circuit being broken by wear or damage that the system is trying to detect, then other language should be used.  Please note that such a circuit change for detection purposes (part of the circuit broken by wear) is explained in para. 126-128 with respect to FIGS. 13-15 of HERMEY et al. (US 2019/0040935).
Claim Rejections - 35 USC § 112(b)
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.


The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.


Claim(s) 24-46 is/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 claims 24, 36, 43, and 44:  Claim 24 recites “wherein the functional circuit is applied by an additive manufacturing method on the formed part made of plastic.”  This is a statement of how the apparatus of claim 24 is intended to be manufactured and does not structurally limit the apparatus.  If it is intended to structurally limit the apparatus, it is unclear what limitations are put on the finished product by stating one method of how it could be made.  There appears to be multiple ways that a circuit with a trace conductor could be made on a plastic formed part, and it is not clear how one could determine the manufacturing method from the finished product based on the language of claim 1.  This reasoning also applies to the language “the trace conductor structure comprises trace conductors that are applied additively by an additive manufacturing method” and “contact regions…which are applied additively by the additive manufacturing method” in claim 36 and similar language in claims 43 and 44.
Regarding claims 28, 35, 40, and 44:  These claims use the term “and/or.”  This term is indefinite and the Examiner recommends using “or” which avoids ambiguity and has the same patentable scope as that sought to be covered by "and/or."  The Applicant may also consider using phrasing such as “at least one of.”  Claim 40 is particularly indefinite because of the repeated use of and/or, which makes it impossible to determine which limitations are listed in the alternative and which are listed in the inclusive.
Regarding claims 36 and 45:  Claim 36 recites (emphasis added) “contact regions for a releasable contact, which are applied…”  This appears to be a statement of intended use and pertains to a theoretical releasable contact applied to a contact region of the trace conductor.  Since any electrical contact could be releasably connected to another device based on the structure of the contact on the other device, it is unclear what structural limitations this puts on the contact regions of claim 36.  This claim has been interpreted as only requiring electrical contacts.  This reasoning also applies to the language in claim 45.
Regarding claim 42:  Claim 42 introduces the structure of “a line guiding system” however it is unclear if the line guiding system is supposed to be within the scope of the claim because the claimed apparatus is “The chain link part according to claim 24, wherein…”
Regarding claim 44:  Line 6 recites “a plastic formed part” and then line 15 recites “a plastic formed part.”  It appears that they are meant to be different structures, but this is indefinite because it uses the exact same terminology for two different parts.  The Examiner recommends using language such as “a first plastic formed part” and “a second plastic formed part.”  This is also true for “at least one functional electronic circuit.”  This is also true for “at least one trace conductor structure.”  This is especially true in lines 25-26 which state “wherein the system further comprises an evaluation circuit, which has a releasable signaling connection, to the functional circuit” because it is unclear which “functional circuit” is being referred to.
Regarding claim 46:  The language “the functional circuit(s)” is indefinite because it is unclear if the claim is referring to a single functional circuit or multiple functional circuits.  Furthermore, if the claim is referring to a single functional circuit, it is unclear which one because the functional circuits are not clearly distinguished in claim 44 (see rejection above).
Regarding claims 25-42, 45, and 46:  These claims are rejected as indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

The following is a quotation of pre-AIA  35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA  35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Claim(s) 25 and 42 is/are rejected under 35 U.S.C. 112(d) or pre-AIA  35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.  Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 25:  Claim 25 recites that the plastic formed part is “pre-manufactured.”  Since the functional circuit is already applied on the formed part, according to claim 1, then it is already “pre-manufactured.”  Since the functional circuit is already applied on the formed part, according to claim 1, then it is already a “circuit carrier.”  Therefore, claim 25 provides no further limitation to claim 24 and they have the exact same scope.  Therefore claim 25 is in improper dependent form.
Regarding claim 42:  Claim 24 is an apparatus claim for a “chain link part.”  Claim 42 then states an intended use for that chain link part: that it is disposed in a line guiding system having the energy chain (“the energy chain” is a statement of intended use from the preamble of claim 24.  It does not appear (see 112b rejection above) that claim 42 provides any further structural limitation to the chain link of claim 24, therefore the claim is in improper dependent form.
Claim Rejections - 35 USC § 102
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 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) 24-28, 31-34, and 40-42 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by HERMEY et al. (US 2019/0040935).
Regarding claim 24:  As best understood, HERMEY discloses:  A chain link part, for an energy chain (FIGS. 1-4), comprising: a plastic formed part (side plate 8 in FIG. 2), on which at least one functional electric circuit (10) with a sensor function (para. 97-98) for acquisition of an operating parameter (“wear”) is arranged, wherein the functional circuit comprises at least one trace conductor structure (conductor line as shown in FIG. 6 including 26, 22; para. 108-110), which is formed directly on the formed part (FIG. 2A), wherein the formed part itself forms a carrier of the trace conductor structure (FIG. 2A), wherein the functional circuit is applied by an additive manufacturing method on the formed part made of plastic (This is a statement of an intended manufacturing technique that could be used to produce the apparatus of claim 1.  Since the circuit in FIG. 2A could be made by additive manufacturing it meets this limitation.)
Regarding claim 25:  HERMEY discloses:  the plastic formed part is a premanufactured plastic formed part which operates as a circuit carrier for the functional circuit (FIG. 2A shows that the circuit is formed on the plastic side plate 8, which carries the circuit.  Para. 34).
Regarding claim 26:  HERMEY discloses:  the premanufactured plastic formed part comprises an injection-molded plastic circuit carrier for the functional circuit (para. 34).
Regarding claim 27:  HERMEY discloses:  the functional circuit comprises a detection region that is sensitive to the operating parameter (The detection region is below W in FIG. 2B to detect wear as discussed in para. 98.).
Regarding claim 28:  HERMEY discloses:  the formed part comprises a glide surface on a narrow side of the chain link part to glide on a further chain link part and/or on a glide rail of a guide trough (FIGS. 1 and 2).
Regarding claim 31:  HERMEY discloses:  the detection region extends at least partially along a wear limit to be detected such that an exceeding of the wear limit is detectable by the functional circuit (FIG. 3).
Regarding claim 32:  HERMEY discloses:  the formed part comprises an indentation in which the functional circuit lies at least partially (FIG 21B shows an indentation in a piece that the circuit 210 sits in.  FIG. 9 also shows an indentation where the circuit 10 sits.).
Regarding claim 33: HERMEY discloses:  the trace conductor structure is integrally deposited on the formed part, and is connected to the formed part by a substance-to-substance bond (para. 34).
Regarding claim 34:  HERMEY discloses:  the trace conductor structure is made of a material having significantly higher conductivity than the plastic of the formed part (inherent in the use of the term “conductor” to describe the trace as discussed in para. 120-121).
Regarding claim 40:  As best understood, HERMEY discloses:  two broad sides and four narrow sides (These are best seen on the link 7 in FIG. 19B.), wherein at least one of the narrow sides is formed for gliding on a glide rail or narrow sides of further chain link parts (This is best illustrated in FIG. 2B which shows the link 8 slides on its narrow side.), and/or wherein at least one of the broad sides comprises at least one pin (para. 5) and/or at least one corresponding receptacle to form articulated joints each having a nominal pivot axis between consecutive chain link parts (para. 5), wherein the functional circuit is attached or printed on the at least one pin and/or on the at least one receptacle (para. 116) and/or on at least one of the narrow sides (para. 116).
Regarding claim 41:  HERMEY discloses:  the chain link part is a chain link plate (para. 32; FIG. 19B).
Regarding claim 42:  HERMEY discloses:  the chain link part is disposed in a line guiding system having the energy chain, for dynamic guiding of supply lines between two connection points that are movable relative to each other (abstract).

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) 29, 30, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over HERMEY in view of PUTZ (US 2022/0268338).
Regarding claims 29 and 30:  HERMEY discloses:  the detection region is at a predefined distance from the glide surface (FIG. 2).
HERMEY does not disclose that the detection region is on a surface opposite the glide surface.
PUTZ however does teach a detection region (where 6 is in FIG. 2) on a surface that is opposite the glide surface (bottom of sliding shoe 4).  FIG. 2 also shows that the functional circuit 6 is integrated into the surface, thus meeting the limitations of claim 30.
One skilled in the art at the time the application was effectively filed would be motivated to use the placement of the detection region of PUTZ on the energy chain of HERMEY because it allows for both a distance between a link element and the surface it slides on and the wear of the sliding element to be determined (para. 13-14 of PUTZ).
Regarding claim 38:  HERMEY discloses:  the functional circuit comprises an inductive (para. 22), a capacitive, a temperature-sensitive or a piezo-resistive detection region.
HERMEY does not disclose that the detection region detects a change of position of the chain link part relative to a further chain link part that is moving relative to the chain link part.
PUTZ however does detect a change in position (para. 14) on their energy chain monitoring device (abstract).
One skilled in the art at the time the application was effectively filed would be motivated to use the displacement sensing of PUTZ along with the circuit breaking sensing of HERMEY, because it allows for a continuously monitored signal instead of just a threshold being reached.  This allows for more precise monitoring of wear on parts.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over HERMEY in view of LEE et al. (US 6,424,263).
Regarding claim 35:  HERMEY does not specify copper, silver or carbon in the trace conductor.
LEE however does specify copper for their RFID tag (col. 2 lines 37-51) which is of a similar structure (FIG. 2) to that shown in FIG. 6 of HERMEY.
One skilled in the art would be motivated to use the copper of LEE for the conductive trace of HERMEY because it is an excellent conductor and will therefore produce a stronger detectable signal for a given amount of current than a lesser conductor would.

Claim(s) 36 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over HERMEY in view of KREBS (US 2004/0224135).
Regarding claim 36:  As best understood, HERMEY discloses:  the trace conductor structure (10 in FIG. 2A) comprises trace conductors that are applied additively by an additive manufacturing method (As discussed in the rejection of claim 1.  This is a statement of an intended method of manufacture, and does not structurally limit the apparatus.)
HERMEY does not specify the dimensions of their conductive trace.
KREBS however does disclose a conductive trace (18 in FIG. 1) that is similar to that shown in FIG. 2A of HERMEY.  The conductive trace is specified at several different widths including .125 inches (para. 49-50), which is equal to 3.2mm.  Furthermore, the antenna of KREBS is created by additive manufacturing as discussed in para. 28 and the contacts to the antenna go through multiple layers and will therefore be thicker than the antenna layer by itself as discussed in para. 28.
One skilled in the art at the time the application was effectively filed would be motivated to use the dimensions set forth in KREBS on the device of HERMEY because they are small and would fit into most energy chains.
Furthermore, the specific claimed width, absent any criticality, is only considered to be the “optimum” width disclosed by HERMEY that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired signal (frequency, etc.), the size of the chain, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the width is used, as already suggested by HERMEY.
Since the applicant has not established the criticality (see next paragraph) of the width stated and since these widths are in common use in similar devices in the art, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to use these values in the device of HERMEY.
Please note that the specification contains no disclosure of either the critical nature of the claimed width or any unexpected results arising therefrom.  Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical.  In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).  Furthermore, the specified dimension covers an entire order of magnitude and does not appear specific enough to have a specific utility annexed thereto.
Regarding claim 37:  HERMEY discloses:  the functional circuit is of passive configuration (para. 42) and consists of the trace conductors and contact regions (FIGS. 6-8), and is used for resistive wear detection by a conductor interruption (26 in FIG. 6; para 110).
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over HERMEY in view of JANSA et al. (US 2019/0145462).
Regarding claim 39:  HERMEY discloses plastic as the material for the energy chain (para. 1, 34, 144), but does not specify a tribopolymer.
JANSA however does teach a tribopolymer (para. 31) with solid lubricants (para. 33) as well as a wear sensor (para. 16-19) that is similar to that of HERMEY.
One skilled in the art at the time the application was effectively filed would be motivated to use the “self lubricating” (para. 4 of JANSA) tribopolymer of JANSA as the plastic of HERMEY because it allows the sliding bearing to be maintenance free (para. 3-4 of JANSA).
Claim(s) 43-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over HERMEY in view of BLASE et al. (WO 2004090375 A1).  Please note that a machine translation of BLASE has been included with this office action and is deemed sufficient.  All references to text in BLASE are to the attached machine translation.
Regarding claim 43:  HERMEY discloses:  A guiding part of a line guiding system with an energy chain, comprising: a plastic formed part, which comprises a glide surface for the energy chain guided in the guide trough, wherein on the formed part at least one functional electric circuit with a sensor function for acquisition of an operating parameter is arranged, wherein the functional circuit comprises at least one trace conductor structure, which is formed directly on the formed part, wherein the formed part itself forms a carrier of the trace conductor structure, wherein the functional circuit is applied by an additive manufacturing method on the formed part made of plastic (All of this structure is addressed in the rejection of claim 24.).
HERMEY does not explicitly disclose that the formed part with the sensor thereon is part of a “guide trough” as recited in claim 43.  HERMEY states that the “critical region” in terms of wear can be outer region or can “adjoin the same” as discussed in para. 23, but this does not explicitly disclose a trough.
BLASE however does disclose an energy chain (abstract) with a guide trough (page 5 lines 35-38) as well a sensor that measures a physical variable embedded in the members (abstract).
One skilled in the art at the time the application was effectively filed would be motivated to put the embedded sensor of HERMEY in the guide trough of BLASE because it is a “critical region” that adjoins a moving part (para. 23 of HERMEY) and is therefore susceptible to wear.
Regarding claim 44:  As best understood, the limitations of claim 44 are addressed in the rejections of claims 24 and 43 except for the evaluation circuit which since it comes from remote reading device 12 in FIG. 1, is releasable.
Regarding claim 45:  As best understood, HERMEY discloses:  the system comprises a contact device connected to the evaluation circuit for a releasable contact of the evaluation circuit with the functional circuit (para. 126-128; FIGS. 13-15).
Regarding claim 46:  HERMEY discloses:  the evaluation circuit evaluates at least one operating parameter with aid of the functional circuit(s) and includes a communication module, which is set up to transmit an evaluation result to a higher-level monitoring system (para. 11-12 and 23).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.  Several references have been added to the Notice of References Cited for teaching one or more limitations of claim 24.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL J KOLB whose telephone number is (571)270-7601. The examiner can normally be reached M-F 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JESSICA HAN can be reached on (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHANIEL J KOLB/Examiner, Art Unit 2896