DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2024/0006866, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Response to Amendment
The Amendment filed 11 December 2025 in response to the Non-Final Rejection dated 12 August 2025 (hereinafter “NFOA”) has been entered. Claims 1-3 have been amended; claim 5 (previously withdrawn) has been canceled. Claims 1-4 remain pending and under consideration on the merits.
The amendments to the Drawings and corresponding replacement sheets are accepted and have overcome the objection to the Drawings previously set forth [NFOA, ¶4-5]. The objection has been withdrawn.
The amendments to the claims have overcome the rejection of claims 1 and 3 under 35 U.S.C. 102(a)(1) as anticipated by Krabs [NFOA, ¶8-12], the rejection of claims 1-3 under 102(a)(1) as anticipated by Nakamura [NFOA, ¶13-18], and the rejection of claim 4 under 35 U.S.C. 103 as unpatentable over Nakamura as applied to claim 1, further in view of Holt [NFOA, ¶20-25]. As such, the 102(a)(1) and 103 rejections have been withdrawn.
New grounds of rejection are set forth below, necessitated by the amendments to the claims and made in view of newly cited prior art.
Claim Objections
Claim 2 is objected to because of the following informalities:
The term “cold-shrink tube” is objected to for inconsistent punctuation/grammar – the hyphenated term “cold-shrink” is inconsistent with the recitations of “cold shrink” throughout claim 1
Appropriate correction is required.
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.
Claim 2 is 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 regards as the invention.
Regarding claim 2, the term “the pre-assembly tool state” of the phrase “on a radially outer side of the cold-shrink tube in the pre-assembly tool state” lacks sufficient antecedent basis and renders the claim indefinite. There is no prior recitation/introduction of a pre-assembly tool state, and/such that the metes and bounds of the scope of said pre-assembly tool state are unclear. It is unclear if the term is directed to (1) a state of the covering tool prior to assemblance of the holding member, cold-shrink tube, impervious layer, and cushion layer, or directed to (2) a state of the covering tool prior to its intended use, i.e. prior to cold-shrinking over/around an object, wherein the diameter of the cold shrink tube is [held] in the expanded state (i.e. the form/state of the covering tool as defined by independent claim 1).
Further, the specification does not explicitly recite, or reasonably imply/suggest the meaning or boundaries of the terms “pre-assembly tool state” or “pre-assembly”. As such, it is unclear how, or in what manner(s), the “pre-assembly tool state” of the covering tool defined by claim 2 differs from the state/form of the covering tool defined by claim 1.
For examination on the merits, claim 2 is interpreted in accordance with following amendment, of which is respectfully suggested to overcome the indefiniteness issue(s): “…further comprising a putty-like waterproof material provided on at least both end sides on a radially outer side of the cold-shrink tube
Appropriate action is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tashiro (JP 2001-231123; “Tashiro”) (newly cited; copy and machine translation provided herewith, translation relied upon).
Regarding claim 1, Tashiro discloses a water-blocking, cold-shrinkable, reinforced insulating sleeve (hereinafter “sleeve”) for connecting power cables [Figs. 1-2; 0001, 0005-0006, 0013-0014]. The sleeve includes the following layers, in the order stated, from the inner surface to the outer surface in the radial direction:
(2) dismantlable cylindrical tubular core, which maintains overlying layers in radially-expanded elastic state [0007-0009, 0014] (diameter-expanding holding member)
(3) cold-shrinkable tube [0006, 0009] (cold shrink tube)
(4) water-impermeable layer, formed from metal foil (film or sheet) disposed circumferentially around cold-shrinkable tube [0006, 0010] (impervious layer provided outside the cold shrink tube)
(6) adhesive layer [0006, 0010, 0012]
(5) waterproof protective layer [0006, 0011] (cushion layer provided outside the cold shrink tube).
The adhesive layer (6) seals, to render watertight, the metal foil (4) – specifically, the metal foil is embedded within the adhesive [0005-0006, 0010, 0012, 0029; Fig. 1], i.e. the adhesive encapsulates the metal foil [Fig. 1]. The adhesive layer (6) (metal foil embedded therein) also functions to adhere the cold-shrinkable tube (3) to the waterproof protective layer (5) [0005, 0014] (wherein the cushion layer is bonded to substantially the entire surface of the impervious layer).
The waterproof protective layer (5) (cushion layer) is formed from an elastomer [0011], as is the cold-shrinkable tube (3) [0009]. When the core (2) is dismantled/removed, the tube (3) and protective layer (5) shrink at room temperature, i.e. return elastically to their non-expanded diameters, resulting in reduction of the diameter of the sleeve as a whole (i.e. “shrink”), wherein the adhesive layer (6) maintains interlayer adhesion and prevents stress cracking/wrinkling of the water-impermeable (metal foil) layer (4) during/after said shrinking [0014, 0029].
The sleeve of Tashiro, set forth/cited above, anticipates the covering tool defined by each and every limitation of claim 1.
Regarding claim 2, as set forth above, the metal foil water-impermeable layer (4) of the sleeve is embedded (encapsulated) within the adhesive layer (6) [0005-0006, 0010, 0012, 0029; Fig. 1]. That is, the adhesive material is present on both sides/surfaces of the metal foil, as explicitly depicted by Tashiro [Figs. 1-2 and 5], i.e. the sleeve exhibits the material layer sequence (from inner to outer): core (2)/tube (3)/adhesive (6)/metal foil (4)/adhesive (6)/protective (5).
Further the adhesive (6) is, inter alia butyl rubber [0012] (see MPEP 2131.02(II)), and is present at both ends (e.g. distal end and proximal end) of the cold shrink tube (3) [Figs. 1 and 5] on the radially outer surface thereof. Applicant’s spec indicates that the putty-like waterproof material may be a butyl rubber compound or silicone rubber compound [spec, 0044, 0059].
As such, the adhesive layer (6), formed from butyl rubber, present in the aforesaid layer sequence of the sleeve, and located on the radially outer surface of the cold-shrink tube (3) at both distal and proximal ends thereof, reads on the putty-like waterproof material and position thereof of the covering tool defined by claim 2. Therefore, the sleeve of Tashiro anticipates the covering tool defined by claim 2.
Regarding claim 3, the rejection of claim 1 above reads on the covering tool defined by claim 3 – the circumferentially-disposed metal foil water-impermeable layer (4), is embedded, i.e. encapsulated within adhesive layer (6), thereby defining the material layer sequence set forth above (¶21) in the rejection of claim 2 (i.e. 2/3/6/4/6/5), wherein the adhesive is rubber or plastic, e.g. butyl rubber, or alternatively chloroprene rubber or polyvinyl acetate (PVAc) [Fig. 1; 0005-0007, 0010, 0012, 0018, 0029]. The aforesaid layer(s) of adhesive (6) material read on the claimed at least one resin film under the broadest reasonable interpretation of “film” (MPEP 2111). Thus, said metal foil encapsulated within the adhesive anticipates a circumferential laminate comprising a metal foil bonded to at least one resin film.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tashiro as applied to claim 1 under 35 U.S.C. 102(a)(1) above, further in view of Dower et al. (US 7,304,242; “Dower”) (newly cited), Seraj et al. (US 2014/0338953; “Seraj”) (newly cited), and Busby et al. (US 12,074,415; “Busby”) (newly cited).
Regarding claim 4, as set forth above in the rejection of claim 1, the waterproof protective layer (5) (cushion layer provided outside the cold shrink tube) of the sleeve of Tashiro is formed from an elastomer. In particular, Tashiro discloses that the layer (5) may be formed from styrene-butadiene rubber, chloroprene rubber, butadiene rubber, urethane rubber, ethylene-propylene rubber, silicone rubber, or fluororubber [0011]. It is noted, as set forth/cited above, that the cold shrink tube (3) of the sleeve is formed from an elastomer whose diameter elastically contracts after removal of the core (2), wherein the layers overlying the tube (3) also contract via the presence of the adhesive layer (6).
Additionally, Tashiro discloses that the waterproof protective layer (5) may be formed over the outer radial surface of the adhesive layer (6) (to form the sleeve) by radially-expanding a tube formed from the elastomer (5), inserting a radially-expanded intermediate sleeve including layers 2/3/4/6 into the lumen of the radially-expanded elastomer tube (5), and then allowing the tube (5) to contract into position on the radially-outer surface of adhesive layer (6) [0019-0020].
In view of the foregoing, Tashiro is silent regarding the waterproof protective layer (5) (cushion layer) being configured by a foam tape, as claimed.
Dower teaches that elastomers including silicones, polyurethanes, butadiene rubbers, and styrene-butadiene rubbers, in closed-cell foamed form [col. 3 ln. 1-32], are suitable for use in cold shrink tubing applications requiring provision of a watertight seal and protection from harmful of environments to cables/cable joints [Abstract; col. 1 ln. 15-48; col. 2 ln. 40-67]. The closed-cell foamed form of said elastomers allows the elastomer (film) to demonstrate volume compliance, thereby increasing the conformity of the elastomer film [col. 3 ln. 45-51], while preventing permeation of fluids and external particles [col. 5 ln. 4-13]. The closed-cell foamed elastomers are suitably attached to the cold shrink tubing via an adhesive [col. 4 ln. 8-15]. See MPEP 2144.07.
Seraj teaches that the outer sleeve (90) [Fig. 6], i.e. outermost layer of a multilayer cable joint body [Abstract; Fig. 6; 0004, 0023-0024, 0027, 0059] – in the alternative to being formed from an elastomeric (e.g. EPDM, silicone) cold shrink tube or an elastomeric wrap-around sleeve (i.e. wrap-around film) [0059, 0081-0082] – may be formed from an elastomeric tape that is wrapped, e.g. helically around the underlying substrate, wherein the tape remains elastic [0083]. See MPEP 2144.06(II), MPEP 2144.07.
Busby teaches that (stretchable) elastomeric foam tapes [col. 1 ln. 52-65; col. 5 ln. 12-28, 48-57; col. 7 ln. 33-55; claims 1, 7-8; Figs. 3C, 4] were known/recognized in the art as suitable for use in forming one or more layers of cold shrink tubing/overwrap/protection assemblies for cables/cable connections requiring resistance to moisture penetration and protection from the environment [Abstract; col. 2 ln. 40-65; col. 3 ln. 29-58; col. 4; Figs. 1-4].
Dower, Seraj, and Busby each constitute prior art which is directly analogous to the claimed invention, in view of the disclosures/teachings set forth/cited above.
In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the sleeve of Tashiro by having formed the elastomeric waterproof protective layer (5) from a foamed elastomeric tape rather than an elastomeric tube, as foamed elastomers – in tape form – would have been readily recognized as suitable for (the intended use of) providing the requisite degree of waterproofness to the sleeve, while exhibiting increased volume compliance and conformity (relative to non-foamed elastomers) (MPEP 2144.07), in addition to constituting a suitable alternative structure/formation method for forming the outermost waterproof/cold shrinkable layer of the sleeve relative to cold shrink elastomeric tubes (requiring radial expansion to be positioned, as disclosed by Tashiro and taught/recognized by Seraj) and wrapped sheets (MPEP 2144.06(II), MPEP 2144.07).
Applicant is respectfully directed to MPEP 2144.06(II) and 2144.07, which indicate that an express suggestion (in the prior art) to substitute one equivalent component or process for another is not necessary to render such substitution obvious, and that the selection of a known material based on its suitability for its intended use has been held prima facie obvious by the Courts.
In accordance with the foregoing modification, the waterproof protective layer (5) of the sleeve of Tashiro (“modified Tashiro”) would have been formed from a foamed elastomeric tape (cushion layer configured by a foam tape), e.g. wound, helically wrapped, or otherwise circumferentially disposed around and bonded to the outer radial surface of adhesive layer (6). The resultant sleeve would have remained cold shrinkable, given the presence of elastomeric cold shrink tube (3) held in the radially-expanded state by core (2), the adhesive layer (6) (having water-impermeable metal foil layer (4) embedded therein) adhering protective layer (5) to the cold shrink tube (3), and the foamed tape and thereby the resultant protective layer (5) being elastic.
The sleeve of modified Tashiro reads on the covering tool defined by claim 4.
Response to Arguments
Applicant’s arguments presented on pp. 5-7 of the Remarks filed 11 December 2025, in conjunction with the amendments to the claims, have been fully considered and found persuasive. As a result, and as indicated above, the rejections under 102(a)(1) and 103 previously set forth in the NFOA have been withdrawn. However, it is noted that new grounds of rejection are set forth above, necessitated by the amendments to the claims.
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
EP 0959537 A1 to Paske (copy provided herewith) – teaches that outermost, moisture-tight layer (30) of protective cable connector (molded) housing may be formed from an elastomeric tape (30) or wrap (70), e.g. ethylene-propylene rubber (EPR) tape [Figs. 1 and 3-4; 0008, 0013-0017, 0021, 0028-0030]
US 4,915,990 to Chang – teaches stretchable, elastomeric tapes for use in cold shrink tubing applications for protection of cable connections [Abstract; Fig. 14; col. 1 ln. 45-53; col. 3 ln. 15-56; col. 12 ln. 3-38; col. 15 ln. 5-12]
US 3,555,168 to Frykberg – teaches that foamed (closed cell) elastomers are compressibly resilient and suitable for use in lamina (i.e. in multilayer articles/applications), said elastomers including, e.g. neoprene, vinyl rubber, polyurethane, and silicone [col. 2 ln. 14-22]
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 Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782