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 5-6 and 16-17 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, or for pre-AIA the applicant regards as the invention.
Claim 5 is further rejected as indefinite, because the claim discloses “The method according to claim 1, further comprising… if Sdq < Sdqref, then the uncovered insulation layer surface has an acceptable surface quality for transition, if Sdq > Sdqref, then the uncovered insulation layer surface does not have an acceptable surface quality for transition and steps a) to d); steps e), f), and g) are repeated one time” (lines 1 and 7-11; emphasis added).
The “if… then” language is indefinite because it does not cover the possibility of the Sdq being equal to (=) Sdqref. If the Sdq = Sdqref, then the claim has no understandable step beyond measuring, and the reader cannot know how the method is intended to proceed. As such the scope or metes and bounds of the claim cannot be ascertained. Further, the final two lines of the claim are indefinite because the claim depends from claim 1, which does not recite any step d, e, or f. as such the recitation that those steps are “repeated” lacks antecedent basis because they were not performed in the first place. Accordingly, the reader cannot know whether steps d, e, and f should be recited in claim 1, or if claim 5 should depend from claim 4, which should depend from claim 3, which should depend from claim 2 (none of which are currently disclosed as such).
Claim 6 is also rejected as indefinite, so rendered by virtue of its dependency upon the indefinite subject matter of claim 5.
Claim 16 is further rejected as indefinite, because the claim discloses “The method according to claim 1, further comprising… if Sa < Saref, then the uncovered insulation layer surface has an acceptable surface quality for transition, if Sa > Saref, then the uncovered insulation layer surface does not have an acceptable surface quality for transition and steps a) to d); steps e), f), and g) are repeated one time” (lines 1 and 6-9; emphasis added).
Claim 16 is indefinite for effectively the same reasons as claim 5. There is no explanation of what occurs “if Sa = Saref”, and there is a lack of antecedent basis for steps d, e and f.
Claim 17 is also rejected as indefinite, so rendered by virtue of its dependency upon the indefinite subject matter of claim 16.
NOTE: Claims 5-6 and 16-17 have been interpreted and examined as best understood according to the 112(b) rejections, above.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Warner (US 6,381,850 B1), in view of Xiao (CN 214153805 U; translation and original copies concurrently provided by Examiner).
Regarding claim 1, Warner discloses a method for preparing an uncovered insulation layer surface of an end section of a cable (Abstract; col. 2, lines 26-48), wherein the cable *has an electric conductor and an insulation system surrounding the electric conductor, the insulation system having an inner semiconducting layer, an insulating layer and an outer semiconducting layer, the method comprising the steps of: a. providing a cutting tool (10) having a blade (26) comprising a cutting edge (120) and a side surface (122 or 118), the side surface extends from the cutting edge and is arranged to face the cable and be in contact (the blade face causes the insulation layer to be cut, and therefore must naturally be arranged to be in contact with the insulation layer) with the insulating layer during use (figs. 1, 3 and 14-17; col. 4, lines 20-34; cols. 6-7, lines 59-67 and 1-11), c. using the prepared cutting tool to remove the outer semiconducting layer, from the end section of the cable, providing an uncovered insulation layer surface on the end section of the cable (col. 5, lines 5-32). Warner, however, does not explicitly disclose b. preparing the cutting tool by polishing at least the edge and the side surface.
*NOTE: the structures of the product to be worked upon (i.e. the “cable”) are not held to differentiate the method itself. That is, the “electric conductor”, “inner semiconducting layer”, and “insulating layer” are not noted to be modified by the method, nor do they understandably dictate or inform how the method would be performed at all. Similarly, while it is informative that the outer sheathing of the cable to be worked on is intended to be a semiconductor material, this preferred product material does not apparently have any consequence upon the actual method as currently presented.
Xiao teaches that it is well known to perform a similar method for preparing an uncovered surface of an end section of a cable (Abstract), the method comprising the steps of: a. providing a cutting tool having a blade comprising a cutting edge and a side surface, the side surface extends from the cutting edge and is arranged to face the cable during use, b. preparing the cutting tool by polishing at least the edge and the side surface (Abstract; fig. 2; pg. 2, lines 2-9).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Warner to incorporate the polishing of the blade of Xiao. POSITA would have realized that polishing can be easily and readily incorporated into a method of using a blade to achieve the desired precision of cutting, smoothness of the cut surface, and enhanced speed of the method, predictably reducing manufacturing costs. Moreover, there is no indication in the instant disclosure that any special polishing step was devised or that any surprising results were derived from simply using the old method of Warner with the well-known blade polishing of Xiao. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 2, Warner in view of Xiao teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Warner, however, does not expressly teach the following step, prior to and/or during step c): d. cooling at least the outer semiconductive layer, to or below the glass transition temperature of the outer semiconductive layer. That being so, Warner and Xiao also do not disclose that any of the elements of the cable are heated at all during the method, and as such, POSITA would naturally expect that the method was performed at room temperature, which is below the glass transition temperature for semiconductive materials. This would have been obvious as it is quicker and more cost effective to perform a method without the need to heat materials, and keeping the materials cool would have predictably reduced the residue left behind on the blade due to the cutting process. These advantages were well known before the effective filing date of the invention and would have been easily performed with reasonable expectations of success.
Regarding claim 3, Warner in view of Xiao teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Warner, however, does not expressly teach the following step, prior to and/or during step c):e. cooling at least the outer semiconductive layer, and the insulating layer, to or below the glass transition temperature of the insulating layer. That being so, Warner and Xiao also do not disclose that any of the elements of the cable are heated at all during the method, and as such, POSITA would naturally expect that the method was performed at room temperature, which is below the glass transition temperature for insulative materials. This would have been obvious as it is quicker and more cost effective to perform a method without the need to heat materials, and keeping the materials cool would have predictably reduced the residue left behind on the blade due to the cutting process. These advantages were well known before the effective filing date of the invention and would have been easily performed with reasonable expectations of success.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Warner in view of Xiao, further in view of Bungo (US 2003/0100228 A1).
Regarding claim 4, Warner in view of Xiao teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Warner, however, does not appear to teach the following step after step c):f. applying heat to the uncovered insulation layer surface to locally heat said surface to at least the melting temperature of the insulation layer.
Bungo teaches that it is well known to perform the step of applying heat to the uncovered insulation layer surface to locally heat said surface to at least the melting temperature of the insulation layer (figs. 21 and 31; pars. 0119-0120).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Warner to incorporate the heating and melting of the insulation layer of Bungo. POSITA would have realized that an insulation melting step can be easily and readily incorporated in methods of preparing cable ends to achieve the desired precise insulation removal and/or rearrangement in order to enhance subsequent terminal/connector attachment resilience and ensure reliable conductive connections. Moreover, there is no indication in the instant disclosure that any special heating and melting step was devised or that any surprising results were derived from simply using the old method of Warner with the well-known insulation melting of Bungo. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Allowable Subject Matter
Claims 5-6 and 16-17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
NOTE: the potential allowability of claims 5-6 and 16-17 is based upon the interpretations of the claims as detailed in the 112(b) rejections above. If the Applicant amends the claims in a manner that is not consistent with the claim interpretation, then the claims may no longer be considered as allowable.
The following is a statement of reasons for the indication of allowable subject matter: the most pertinent prior art has now been cited on the record. None of the prior art discloses alone, nor reasonably teaches in combination all of the limitations of claim 1, in conjunction with those of claims 2-4, as well as measuring the surface roughness of the obtained uncovered insulation layer surface and quantifying the root mean square surface slope (Sdq) or the average roughness (Sa) values for the uncovered insulation layer surface; and comparing the obtained Sdq or Sa values to preselected reference values of root mean square surface slope (Sdqref ) or average roughness (Saref) respectively, wherein if Sdq < Sdqref or Sa < Saref, then the uncovered insulation layer surface has an acceptable surface quality for transition,- if Sdq > Sdqref and/or Sa > Saref, then the uncovered insulation layer surface does not have an acceptable surface quality and steps a) to g) are repeated one time. Even where the general concept of measuring the surface roughness or slope of insulation layers is known in the art, it is not directly applicable to the method of claim 1 (and 2-4), from which claims 5 and 16 depend, and a combination rejection would improperly rely upon hindsight reasoning.
Response to Arguments
Applicant's arguments filed 02/05/2026 have been fully considered but they are not persuasive.
The claim objection is withdrawn in light of Applicant’s claim amendments and arguments.
The amendments to the claims have corrected some of the previously noted 112(b) issues, but have also introduced new indefiniteness to the claims as noted above.
Regarding the prior art, the Applicant’s arguments are not compelling.
Applicant argued that: “Warner does not describe the blade as having a side surface arranged to face and be in contact with the insulation layer during use”. Respectfully, this argument is incorrect. Warner discloses that the cutting blade is used to cut the insulation layer, which means that it would literally be impossible for the blade to cut the insulation without also being “in contact with the insulation layer during use”. The blade is a physical object, which cuts by virtue of shearing force, which can only be applied by physical contact. Accordingly this argument is not persuasive. Further, the claim does not actually positively recite any contact between the blade side and the insulation layer but instead obliquely states that the blade side surface is arranged to face and be in contact. Why the applicant did not positively recite that the blade side is in direct physical contact during removal of the outer semiconducting layer, is a mystery, nonetheless, the method does not require contact. Even if it did, as noted above, Warner anticipates this limitation, because it is impossible to cut an insulating layer with a blade, without there being contact between said blade and the insulating layer.
The Applicant has made several assertions directed to the utility and purported benefits of the claimed method. Applicant has stated that Warner does not: “ascribe any functional role to a blade side surface in conditioning, finishing, or smoothing the exposed insulation layer”, Applicant continues, asserting that Warner does not disclose: “polishing of a blade side surface for the purpose of influencing the surface quality of the uncovered insulation layer. Warner does not recognize surface roughness of the exposed insulation layer as a problem, nor does it provide any teaching that would lead a person with ordinary skill in the art to modify the blade surface finish to address such a problem.” Respectfully, these arguments are simply not germane, because they are not directed to actually recited limitations of the method. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a functional role to a blade side surface in conditioning, finishing, or smoothing the exposed insulation layer, the purpose of influencing the surface quality of the uncovered insulation layer, and recognizing surface roughness of the exposed insulation layer as a problem) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, with respect to the above noted arguments regarding whether or not Warner is directed to the concept of preparing the cutting tool by polishing, Warner is not relied upon to teach such a feature and thus the argument is entirely without merit and is moot, as it does not apply to the reference as it was actually used in the prior art rejection.
Subsequently, the Applicant has provided a piecemeal argument against the use of Warner in view of Xiao. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It is unthinkable that prior to the method of Warner there would be no polishing of the blade in order to ensure that it is capable of performing the intended cutting. There is no POSITA who would think that the blade of Warner would simply be forged and then left completely rough and unpolished prior to use, as there is no blade manufacturer who provides an unpolished blade to the end user with expectation that it will perform as intended. As such, Xiao, simply serves to demonstrate that any POSITA would naturally ensure that the blade is polished prior to use for cutting. This is completely obvious and such a step of polishing requires no inventive effort whatsoever. As a matter of course, when one uses a blade, one ensures that it is polished prior to using it. In fact, newly cited Zhang (US 10,243,333 B2) states: “Many conventional powered wire strippers use one or multiple stationary or rotating sharp blades to cut open the wire insulation for metal reclamation. The blades are typically mounted on a rotating shaft having ball bearings. All blades, no matter what they are made of or how well they are made, will eventually get dull after extensive use.” (col. 1, lines 6-11; emphasis added). Hug (US 3,878,606) discloses: “The knife 22 can be preferably an ordinary pocket knife having a cutting blade 48 that can be easily sharpened” (col. 3, lines 15-17). In fact, a simple internet search yields hundreds of websites which explain why it is beneficial and which demonstrate that it is commonplace and well known to polish a blade before its use.
According to the updated rejections above, and the response herein, all currently presented limitations of the claims have been shown to be taught by the prior art and all arguments on the merits have been answered completely.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Tolbert et al. (US 5,988,018) is particularly relevant to at least claim 1, disclosing providing a blade, which is sharpened, and which is used to cut and this contact an insulation layer (figs. 1, 5 and 7; cols. 4-5, lines 62-67 and 1-5).
THIS ACTION IS MADE FINAL. 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 Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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