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 .
Comment on Applicant’s Amendment
37 CFR 1.121(c) requires that each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented.
Applicant’s reply filed 04 August 2025 only lists claims 32-51. While claims 1-31 were cancelled in a prior amendment, they must still be listed in each claim amendment document [e.g., Claims 1-31 (Canceled)].
Subsequent amendments which fail to comply with 37 CFR 1.121, including the provisions above, may be considered non-compliant and denied entry [see MPEP § 714(II)(F)].
Election/Restrictions
Applicant’s election of Group I (claims 32-45; drawn to a long article management conduit) and Species A (Figs. 1-8; drawn to a conduit comprising a plurality of hoops spaced from one another in the longitudinal direction, and a membrane bonded to the outer side of the hoops and folded around the edges of the hoops) in the reply filed on 04 August 2025 is acknowledged.
Regarding the election of Species A (figs.1-8), applicant’s reply identified claims 32 to 35 and 37 to 45 as reading on the elected species, thus withdrawing claim 36 which recites “wherein the membrane is fastened to the hoops with fasteners”, a feature of non-elected species B. However, as detailed below, a further review of the claims reveals that several other claims also do not appear to read on the elected species.
While claim 33 recites “one or more membranes attached on an outer and/or inner surface of the hoops so that the hoops are linked to each other in series in the longitudinal direction” (which would, by itself, likely be generic to claimed species A-E), claim 33 further recites “wherein each of the hoops includes one or more hooks so that the one or more membranes are detachably attached to the hoops”, which is a feature of non-elected species E (figs. 12-15) not present in elected species A (figs. 1-8).
Claim 34, which recites “connecting webs which connect every other set” of ends, is clearly directed to features of non-elected species F (figs.17A-18).
Claims 35, 36 & 39-44 depend from claim 33 which, as noted above requires a feature of non-elected species E. Claim 36 also recites a feature of non-elected species B.
Note I: While claim 38 recites several features of non-elected species (e.g., wherein the at least one hoop as one or more cutouts, one or more reinforcing ribs, etc.), these limitations are presented as alternatives in an “and/or” fashion with other limitations which would read on the elected species or are otherwise generic, so claim 38 is being considered as generically encompassing the elected species at this time.
As set forth in MPEP § 821, all claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b).
In view of the above, claims 33-36, 39-44 & 46-51 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and/or a non-elected species, there being no allowable generic or linking claim.
Note II: Applicant may consider amending one or more withdrawn claims (e.g., claim 33) to read on or otherwise generically encompass the elected species by removing subject matter directed to non-elected species, or may consider adding new claims depending upon the claims under examination to further define the elected species.
Applicant is reminded that, in the event of a determination that all claims directed to the elected invention are in condition for allowance, the nonelected invention(s) will be considered for rejoinder. In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. Furthermore, where restriction was required between a product and a process of making and/or using the product, and the product invention was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. See MPEP § 821.04(b). In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 32, 37, 38 & 45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Savoy et al. (US 2003/0168248 A1; cited in IDS received 01 Nov 2022; hereafter Savoy).
Regarding claim 32, Savoy discloses a long article management conduit (42 in fig. 3; see also 10 in figs. 1, 1a & 2) with a split part (30; “seam”) extending in a longitudinal direction (20) thereof, comprising:
a plurality of hoops (16), each having first (26) and second (28) ends to have a discontinuous portion at the split part (as shown) and arranged side by side with a spacing therebetween in the longitudinal direction (as shown; see paras. 22, 23 & 31).
Examination Note: to promote compact prosecution with respect to certain subject matter currently presented in the withdrawn claims but which may be relevant to the elected species, it is noted that the conduit of Savoy further comprises one or more membranes (22, 24) attached on an outer and/or inner surface of the hoops (22 on the outside, 24 on the inside; see fig. 2; para. 22) so that the hoops are linked to each other in series in the longitudinal direction (see fig. 3)[as in claim 33], wherein the membrane is bonded to the hoops (para. 10, lines 14-15: “the layers may be bonded to the ribs by pressure sensitive adhesive”)[as in claim 35], wherein the membrane is made from a material selected from the group consisting of: fabric, nonwoven fabric, natural or synthetic fiber, paper, synthetic resin film, artificial leather, natural leather, and any other film either natural or synthetic (para. 27: “outer layer 22 preferably comprises an aluminum foil layer laminated to a glass fiber fabric…”; para. 30: “Layer 24 may also be a simple fabric liner, woven, braided or knitted from filamentary members comprising synthetics…or natural fibers…”)[as in claim 39]; wherein the membranes are provided on the outer and/or inner surface of each hoop (i.e. 22 on the outside, 24 on the inside; see fig. 2 & para. 22) [as in claim 40]; wherein one or both edges of the membrane at the split part are folded to cover the first and/or second ends of each hoop (as at 23 in fig. 1a; see para. 28) [as in claim 41]; wherein one or both edges of the membrane at the split part include a plurality of pockets into which the first and/or second ends of the hoops, or the entire hoop, are inserted(i.e., the pockets formed by the folded edges portions 23 as in fig. 1a)[as in claim 44].
Regarding claim 37, Savoy discloses the additional limitation wherein each of the hoops (16) is made of materials selected from the group consisting of thermoplastic resin, biodegradable plastics, plant based resins, and metal.
In particular, Savoy discloses (para. 24) that the support structure 12 (including the ribs 16) is “preferably formed from a thermoplastic such as nylon. Other thermoplastics such as polypropylene and polyethylene are also feasible”. Thus, Savoy discloses at least the limitation wherein each of the hoops is made of thermoplastic resin.
As set forth in MPEP § 2131, "[w]hen a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).
Regarding claim 38, the claim recites “wherein each of the hoops is a formed piece” and then further recites:
“wherein the first and second ends of each of the hoops overlap each other in a circumferential direction; and/or
wherein the dimension of each of the hoops measured in the longitudinal direction is in the range of 10 % to 200 % of the diameter or widest width of the conduit; and/or
wherein the dimension of each of the hoops measured in the longitudinal direction decreases toward the first and second ends; and/or
wherein at least one hoop has one or more openings, one or more cutouts, and/or one or more thinned wall portions; and/or
wherein the each of the hoops includes one or more reinforcing ribs.
As can be seen, all of the further recitations are presented in “and/or” combination.
Thus, claim 38 is interpreted as requiring the first limitation (each of the hoops is a formed piece) and at least one of the further limitations.
As set forth in MPEP § 2131, "[w]hen a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).
In the instant case, Savoy discloses that each of the hoops (16) is a formed piece (see paras. 34 & 35: each of the hoops may be formed by cutting from a thermoplastic sheet and then bent to form the hoops; moreover, each of the hoops is a piece which is “formed” in some manner)(To promote compact prosecution, see also MPEP § 2113), and further discloses that the first (26) and second (28) ends of each of the hoops overlap each other in a circumferential direction (as shown in fig. 2; see para. 23: “preferably, ends 26 and 28 of ribs 16 are biased into overlapping relationship as shown in FIG. 2…. [i]t is preferred to have the ends 26 and 28 of ribs 16 in overlapping relation so the seam remains closed during installation and service…”).
As Savoy discloses the first required limitation and at least one of the alternative limitations, the claim is deemed to be anticipated for the reasons set forth above.
Examination Note: to promote compact prosecution regarding the remaining “alternative” limitations, it is noted that Savoy otherwise discloses (para. 25) that “The elastic modulus, section properties and rib geometry and spacing determine the flexibility of the support structure 12. The ribs provide the radial support which prevents the sleeve from collapsing under load, with thicker ribs yielding a greater crush resistance. The size and spacing of the ribs along the length of the sleeve determines its bending flexibility. Bending flexibility is an important parameter which must be properly limited if substrates having inherent permissible bending limits, such as optical fiber bundles, are to be carried by the sleeve 10. Generally, the width and spacing of the ribs are the important parameters controlling bending with large spacing of narrow ribs providing the greatest curvature of the sleeve.”.
Thus, while not relied upon in this action, it is noted that the above statements may be seen to reasonably suggest to a person having ordinary skill in the art that bending flexibility is an important property to optimize for certain applications, wherein bending flexibility can be adjusted by appropriate selection of the hoop size (width) and spacing along the length (e.g. “the dimension of each of the hoops measured in the longitudinal direction”), and appropriate selection of other section properties and rib geometry (which may encompass, e.g., providing openings / cutouts / reinforcing ribs, etc.).
Regarding claim 45, the claim recites “wherein the spacing is in the range of 0.5 to 100 % of the diameter or widest width of the conduit; and/or wherein the spacing is in the range of 0.5 mm to 100 mm; and/or wherein the plurality of hoops are resiliently deformable”.
Thus, claim 45 is interpreted as requiring at least one of the three recited limitations.
In the instant case, Savoy discloses that the plurality of hoops are resiliently deformable (e.g., see para. 22: “Ribs 16… are resiliently biased into a concave shape defining a central space 18 for receiving the elongated substrate to be protected”; para. 24: “After forming, the thermoplastic material remains resilient and flexible, allowing the ribs 16 to be manually deformed for opening seam 30 to provide temporary access to the central space 18, the ribs 16 being biased to return to their concave shape upon release, thereby closing seam 30”).
Examination Note: as with claim 38, to promote compact prosecution regarding the remaining “alternative” limitations, it is noted that Savoy otherwise discloses (para. 25) that “The elastic modulus, section properties and rib geometry and spacing determine the flexibility of the support structure 12….The size and spacing of the ribs along the length of the sleeve determines its bending flexibility. Bending flexibility is an important parameter which must be properly limited if substrates having inherent permissible bending limits, such as optical fiber bundles, are to be carried by the sleeve 10. Generally, the width and spacing of the ribs are the important parameters controlling bending with large spacing of narrow ribs providing the greatest curvature of the sleeve.”.
Thus, while not relied upon in this action, it is noted that the above statements may be seen to reasonably suggest to a person having ordinary skill in the art that bending flexibility is an important property to optimize for certain applications, wherein bending flexibility can be adjusted by appropriate selection of the hoop size and spacing along the length.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Thursday, 9:00 AM - 5:00 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone: Kenneth Rinehart can be reached at (571) 272-4881; Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753