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 .
Drawings
The drawings were received on 6/27/2025. These drawings are accepted.
Claim Objections
Claim 56 is objected to because of the following informalities: Claim 56 depends upon canceled claim 11. Appropriate correction is required.
Claim 64 is objected to because it is believed the temperature claimed 150°C isa typo, as it is significantly lower than the temperatures disclosed in the instant Specification (see para [0038] wherein 1500°C is the lowest temperature disclosed).
Response to Arguments
Applicant's arguments filed 6/27/2025 have been fully considered but they are not persuasive.
The amendments to the claims have negated the 35 USC § 112(b) rejection of claims 1, 2, 3, 5, and 7.
However, claims 9 and 56-59 remain rejected under 35 U.S.C. 112(b), as outlined in the rejection below. Applicant is correct in identifying claim 1 as having a Markush grouping. MPEP 2111.03 II addresses claim language comprising “consisting of”. There is no issue with the Markush grouping of claim 1. However, MPEP 2111.03 II states,
“A claim element defined by selection from a group of alternatives (a Markush grouping; see MPEP §§ 2117 and 2173.05(h)) requires selection from a closed group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs. v. Baxter Pharmaceutical Products Inc., 334 F.3d 1274, 1280, 67 USPQ2d 1191, 1196-97 (Fed. Cir. 2003). If the claim element is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. In the absence of such qualifying language there is a presumption that the Markush group is closed to combinations or mixtures. Cf. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1363-64, 119 USPQ2d 1773, 1784-85 (Fed. Cir. 2016) (presumption that Markush grouping does not encompass mixtures of listed resins overcome by intrinsic evidence in a dependent claim and the specification). See also Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1378-79, 2020 USPQ2d 3179 (Fed. Cir. 2020).”
That is to say, unless the claim provides qualifying language, which it doesn’t, claim 1 is claiming, “the polymer layer is selected from the group consisting of a high performance plastic coating and a polymer tape helically wrapped around the strength element”, meaning the polymer layer is either a high performance plastic coating or a polymer tape helically wrapped around the strength element.
There are no issues with the Markush grouping of claim 1. Claims 9 and 56-59 are indefinite because they are not further limiting when the plastic coating, rather than the polymer tape is applied. Claims 9 and 56-59 further limit the polymer tape but does not further limit the plastic coating, and claim 1 only requires a plastic coating or a polymer tape.
Response to Amendment
Applicant argues the amended claims are not disclosed by the previously applied prior art. Examiner respectfully disagrees, as outlined in the rejection below.
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.
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.
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.
Claims 9 and 56-59 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.
Claims 9 and 56-59 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.
Claim 1 recites the limitation “where the polymer layer is selected from the group consisting of a high performance plastic coating and a polymer tape” (lines 9-10). Claims 9, 11, and 56-59 depend directly or indirectly on claim 1. However, claims 9 and 56-59 further limit the details of the limitation of the polymer tape only. Because claim 1 can have a plastic coating only, instead of a tape, claims 9 and 56-59 are indefinite because it is not clear if the invention of claim 1 actually requires both a plastic coating and a polymer tape, or if these additional claims are amending a potentially nonexistent feature.
Claims 9 and 56-59 are indefinite because they are not further limiting when the plastic coating, rather than the polymer tape is applied.
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) 1-3, 5, 7, 9, 56-61, and 63-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 11,250,972 B1 Evans (herein “Evans”, previously cited) in view of US 10,345,544 B1 Shen (herein “Shen”).
Regarding claim 1, Evans discloses in Figs. 1 and 2E,
An overhead electrical cable (100) comprising:
a strength member assembly comprising at least a first strength element (central strength member, CSM) comprising a fiber-reinforced composite material comprising elongate reinforcing fibers disposed in a binding matrix (wherein Evans discloses CSM can include dielectric components, shown in Fig. 2, that can include a wide variety of suitable materials, including fiber reinforced plastic, FRP; Examiner notes FRP is a fiber-reinforced composite material comprising elongate reinforcing fibers disposed in a binding matrix; col. 6, lines 35-50);
an electrical conductor (240) surrounding the strength member assembly (CSM) (see Fig. 2E, an example of a suitable strength member, CSM, where CNTs 240 are conductive and surround strength member 238), the electrical conductor comprising a plurality of conductive aluminum strands that are helically wrapped around the strength member (col. 5, lines 42-49, wherein aluminum material is disclosed; col. 5, lines 56-64, wherein aluminum strands are disclosed; col. 7, lines 12-15, wherein the strands are helically wrapped);
an optical fiber (in buffer tube 110A-N) disposed along an outer surface of the first strength element (CSM) (fibers are in buffer tubes 110A-N that are disposed along an outer surface of CSM);
a polymer layer (120) disposed over the outer surface of the first strength element (105) and the optical fiber (fibers are in buffer tubes 110A-N), where the polymer layer is selected from the group consisting of a high performance plastic coating and a polymer tape helically wrapped around the strength element (col. 13, lines 12-22 which discloses a high performance plastic coating; col. 9, line 41 — col. 10, line 20 which discloses a helically wrapped polymer tape).
Evans discloses the use of aluminum (col. 5, lines 43-55), but is silent as to specifically an aluminum layer disposed over the polymer layer. However, Shen discloses in Fig. 1, a composite optoelectronic cable having a polymer layer (2) that is either a polymer tape or an aluminum layer (col. 3, lines 23-28; claim 8). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include the aluminum layer taught by Shen over the polymer layer of Evans so as to provide a shielding layer for protection as taught by Shen. In this case, aluminum is well known as a shielding layer in optoelectronic cables — aluminum is known for its conductive properties as well as being both lightweight (thus not adding bulk and strain to the cable) and cost effective.
Regarding claim 2, Evans discloses in Fig. 2E, the strength member comprises a single strength element (238) (col. 1, line 54 — col. 2, line 18).
Regarding claim 3, Evans discloses in Fig. 2D, the strength member comprises a plurality of strength elements (228) (col. 1, line 54 — col. 2, line 18).
Regarding claim 5, Evans discloses the fiber-reinforced composite material comprises carbon fibers (col. 6, lines 35-50).
Regarding claim 7, Evans discloses in Fig. 1, the first optical fiber is disposed linearly along the outer surface of the strength element (105) (shown in the figure where fibers and strength element extend linearly in the direction of the z-axis, wherein the figure is showing a slice of the cable along the x-y axis).
Regarding claim 9, Evans discloses in Fig. 1, the polymer layer comprises a polymer_tape layer disposed over the optical fiber (col. 9, line 41 — col. 10, line 20).
Regarding claim 56, Evans discloses in Fig. 1, the polymer tape overlaps upon itself to cover the strength member with no gaps (col. 9, line 41 — col. 10, line 20).
Regarding claim 57, Evans discloses in Fig. 1, the polymer tape comprises aramid fibers (col. 12, line 65 — col. 13, line 11).
Regarding claim 58, Evans discloses in Fig. 1, the polymer tape has a thickness of at least about 0.05 mm (col. 8, lines 45-58, wherein 0.05 is disclosed).
Regarding claim 59, Evans discloses in Fig. 1, the polymer tape has a thickness of not greater than about 3 mm (col. 8, lines 45-58, wherein 3 mm is disclosed).
Regarding claims 60, 61, and 65, Evans in view of Shen disclose the aluminum layer (see rejection of claim 1) but are silent as to a thickness of at least about 0.4 mm and not greater than about 1.5 mm. However, Evans discusses using any suitable thickness for the layers as needed (col. 8, lines 45-58). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a suitable thickness as disclosed by Evans. In this case, it would require only routine skill in the art at the effective filing date of the invention, to provide aluminum with a thickness in the range of 0.4 mm to 1.5 mm, so as to be an appropriate thickness and be neither too thin nor too thick so as to be effective in providing sufficient shielding and strength without being too bulky.
Regarding claim 63, Evans discloses the polymer layer comprises a high-performance plastic coating (col. 13, lines 17-23, wherein a thermoplastic coating is disclosed, and Applicant’s instant Specification para [0038] discloses thermoplastic as a suitable high-performance plastic coating).
Regarding claim 64, Evans in view of Shen, is silent as to the continuous service temperature of the high performance plastic coating. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to optimize the continuous service temperature to ensure the strength of the high performance plastic coating.
Claim(s) 62 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 11,250,972 B1 Evans (herein “Evans”) in view of US 10,345,544 B1 Shen (herein “Shen”) in further view of US 9,640,986 B2 Politis et al. (herein “Politis”).
Regarding claim 62, Evans in view of Shen disclose method for the installation of an overhead electrical cable, comprising providing an overhead electrical cable as recited in Claim 1 (see rejection of claim 1), however, Evans and Shen are silent as to the details of installation. Politis discloses in Fig. 2, supporting an overhead electrical cable (60) on a plurality of support towers (e.g. 130); separating a portion of the optical fiber from the strength member at an end of the overhead electrical cable (breakout device 162 separates out the optical fiber 152 from the hybrid cable 160); and operatively attaching the separated portion of the optical fiber to a detection device (134) (col. 2, lines 36-59). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include the detection step taught by Politis, because the optical information in the overhead hybrid cable must be sent somewhere, otherwise the optical fibers in the cable would serve no purpose. Politis provides an example of the overhead hybrid cable in use.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY A EL-SHAMMAA whose telephone number is (571)272-2469. The examiner can normally be reached Mon-Fri, 9am-6pm (flexible schedule).
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/MARY A EL-SHAMMAA/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874