DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1-20 are pending. Claim 18 is currently amended. The 35 U.S.C. 112(b) rejection of claims 18-20 are withdrawn. A response to Applicant’s Remarks filed 11 June 2026 can be found at the end of this Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 9,573,602 B2 in view of Schlein (US 3397857 A) and Sandford (GB 107636 A).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims fully encompass the subject matter of the instant application claims 1-2 and 5-7.
In regards to claim 3, the patented claims recite all the limitations of the instant application claim, except for wherein a portion of the support structure defining the third channel is configured as a substantially continuous circumferential boundary around the shield wire so as to inhibit removal of the shield wire from the third channel.
Schlein teaches wherein a portion of the support structure defining the third channel is configured as a substantially continuous circumferential boundary around the shield wire so as to inhibit removal (Schlein, as seen in Fig. 2, shield wire L is surrounded by structure 34 and 38 inhibiting removal) of the shield wire from the third channel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the patented claims with the circumferential boundary as taught by Schlein with a reasonable expectation of success for the purpose of increasing ease of assembly (col. 3, lines 17-20).
In regards to claim 4, the patented claims recite all the limitations of the instant application claim, except for wherein the support structure defines a damper opening through which a shield wire extends such that the shield wire, within the damper opening, is configured to support a damper device.
Schlein teaches wherein the support structure defines a damper opening (Schlein, as seen in Fig. 12, the portion where shield wire L extends through the device) through which a shield wire extends such that the shield wire, within the damper opening, is configured to support a damper device (see Schlein, col. 5, lines 8-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the patented claims with the damper device as taught by Schlein with a reasonable expectation of success for the purpose of reducing potential damage from vibrations and oscillations (see Schlein, col. 1, lines 43-45).
In regards to claim 8, the patented claims recite all the limitations of the instant application claim, except for the support structure comprising:
a first support portion;
a second support portion spaced apart from the first support portion; and
an attachment portion configured to attach the first support portion to the second support portion, the first support portion and the second support portion defining a first opening on a first side of the attachment portion and a second opening on a second side of the attachment portion, the first opening configured to movably receive the guide wire and the second opening configured to movably receive a second guide wire.
Sandford teaches a first support portion (A, the top of the device) (Fig. 5);
a second support portion (A, the bottom of the device) spaced apart from the first support portion (as seen in Figs. 3 and 8, the two sides A are opposite of one another); and
an attachment portion (as seen in Figs. 3 and 8, the walls of the device connect the top and bottom sections A) configured to attach the first support portion to the second support portion, the first support portion and the second support portion defining a first opening (a, on the left) (Fig. 5) on a first side (the left side of the device as seen in Fig. 5) of the attachment portion and a second opening (a, on the right) (Fig. 5) on a second side (the left side of the device as seen in Fig. 5) of the attachment portion, the first opening configured to movably receive the guide wire (G) (as seen in Fig. 2) and the second opening configured to movably receive a second guide wire (pg. 3, line 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Schlein to include first and second support portions with an attachment portion as taught by Sandford with a reasonable expectation of success for the purpose of joining two wires or repairing a broken one (see Sandford, pg. 4, lines 28-30).
In regards to claims 9-10, the combination of the patented claims as modified by Sandford above recite all limitations of the instant application claims.
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 pre-AIA 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 –
Claim(s) 18-20 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Schlein (US 3397857 A).
In regards to claim 18, Schlein discloses a line bypass system comprising:
a guide wire (40) (Fig. 3); and
a support structure (20) (Fig. 1) defining:
a first channel (30, the top channel) (Fig. 3) into which a first wire portion (42, the top portion) of the guide wire is received, the first channel having an open outer side for the first wire portion to be exposed while the first wire portion is received in the first channel (as seen in Fig. 7, wire portion 42 is seen in the first channel with a gap in the channel exposing the wire portion, furthermore as seen in Fig. 4, the wire can be seen through the gap in the flanges 28), and
a second channel (30, the bottom channel) into which a second wire portion (42, the bottom portion) of the guide wire is received, the second channel having an open outer side for the second wire portion to be exposed while the second wire portion is received in the second channel (as seen in Fig. 7, wire portion 42 is seen in the first channel with a gap in the channel exposing the wire portion, furthermore as seen in Fig. 4, the wire can be seen through the gap in the flanges 28), wherein:
the first wire portion is at least one of unwrapped or detached from the guide wire to be received (as seen in Fig. 3) within the first channel,
the second wire portion is at least one of unwrapped or detached from the guide wire to be received (as seen in Fig. 3) within the second channel, and
the first wire portion is spaced a distance (as seen in Fig. 3) from the second wire portion with a shield wire (L) (Fig. 3) extending between the first wire portion and the second wire portion (as seen in Fig. 3).
In regards to claim 19, Schlein discloses the line bypass system of claim 18, wherein the support structure defines a third channel (32) (Fig. 2) into which a shield wire (L) is received, the third channel extending substantially parallel (as seen in Fig. 3) to the first channel and the second channel.
In regards to claim 20, Schlein discloses the line bypass system of claim 19, wherein a portion of the support structure defining the third channel is configured as a substantially continuous circumferential boundary around the shield wire so as to inhibit removal (Schlein, as seen in Fig. 2, shield wire L is surrounded by structure 34 and 38 inhibiting removal) of the shield wire from the third channel.
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Schlein (US 3397857 A) in view of Phillips (US 20110192315 A1).
In regards to claim 1, Schlein teaches a line bypass system comprising:
a guide wire (40) (Fig. 3); and
a support structure (20) (Fig. 1) defining:
a first channel (30, the top channel) (Fig. 3) into which a first wire portion (42, the top portion) of the guide wire is received, and
a second channel (30, the bottom channel) into which a second wire portion (42, the bottom portion) of the guide wire is received, wherein:
the first channel is dimensioned to facilitate engagement (as seen in Fig. 2) of a robot with the first wire portion, and
the second channel is dimensioned to facilitate engagement (as seen in Fig. 2) of the robot with the second wire portion as the robot traverses the support structure (20).
Schlein does not teach a robot.
Phillips teaches a robot (10) (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Schlein to include a robot as taught by Phillips with a reasonable expectation of success for the purpose of easing maintenance efforts (see Phillips, para. [0002]).
In regards to claim 2, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 1, wherein the support structure defines a third channel (32) (Schlein, Fig. 3) into which a shield wire (L) (Schlein, Fig. 3) is received, the third channel extending substantially parallel (Schlein, as seen in Fig. 3) to the first channel and the second channel.
In regards to claim 3, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 2, wherein a portion of the support structure defining the third channel is configured as a substantially continuous circumferential boundary around the shield wire so as to inhibit removal (Schlein, as seen in Fig. 2, shield wire L is surrounded by structure 34 and 38 inhibiting removal) of the shield wire from the third channel.
In regards to claim 4, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 1, wherein the support structure defines a damper opening (Schlein, as seen in Fig. 12, the portion where shield wire L extends through the device) through which a shield wire extends such that the shield wire, within the damper opening, is configured to support a damper device (Schlein, col. 5, lines 8-12).
In regards to claim 5, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 1, wherein the guide wire defines a guide wire opening (Schlein, as seen in Fig. 3, where shield wire L meets guide wire 40) into which a shield wire is received, the guide wire dimensioned to facilitate disengagement of the robot (10) (Phillips, Fig. 1) from the shield wire and engagement of the robot with the guide wire (Schlein, as seen in Fig. 2).
Schlein does not teach facilitating disengagement from the shield wire.
Phillips teaches facilitating disengagement from the shield wire (para. [0005])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Schlein to include disengaging from the shield wire as taught by Phillips with a reasonable expectation of success for the purpose of avoiding objects it otherwise could not pass (see Phillips, para. [0005], line 10).
In regards to claim 6, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 1, wherein the first channel is disposed on a first lateral side (Schlein, as seen in Fig. 3) of the support structure and the second channel is disposed on a second lateral side (Schlein, as seen in Fig. 3) of the support structure.
In regards to claim 7, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 6, wherein the first lateral side of the support structure is opposite the second lateral side of the support structure (Schlein, as seen in Fig. 3).
Claim 8-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Schlein (US 3397857 A) in view of Phillips (US 20110192315 A1) and Sandford (GB 107636 A).
In regards to claim 8, the combination of Schlein as modified by Phillips above teaches the line bypass system of claim 1, the support structure comprising:
a first support portion;
a second support portion spaced apart from the first support portion; and
an attachment portion configured to attach the first support portion to the second support portion, the first support portion and the second support portion defining a first opening on a first side of the attachment portion and a second opening on a second side of the attachment portion, the first opening configured to movably receive the guide wire and the second opening configured to movably receive a second guide wire.
Schlein does not teach the first support portion, second support portion, and attachment portion.
Sandford teaches a first support portion (A, the top of the device) (Fig. 5);
a second support portion (A, the bottom of the device) spaced apart from the first support portion (as seen in Figs. 3 and 8, the two sides A are opposite of one another); and
an attachment portion (as seen in Figs. 3 and 8, the walls of the device connect the top and bottom sections A) configured to attach the first support portion to the second support portion, the first support portion and the second support portion defining a first opening (a, on the left) (Fig. 5) on a first side (the left side of the device as seen in Fig. 5) of the attachment portion and a second opening (a, on the right) (Fig. 5) on a second side (the left side of the device as seen in Fig. 5) of the attachment portion, the first opening configured to movably receive the guide wire (G) (as seen in Fig. 2) and the second opening configured to movably receive a second guide wire (pg. 3, line 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Schlein to include first and second support portions with an attachment portion as taught by Sandford with a reasonable expectation of success for the purpose of joining two wires or repairing a broken one (see Sandford, pg. 4, lines 28-30).
In regards to claim 9, the combination of Schlein as modified by Phillips and Sandford above teaches the line bypass system of claim 8, wherein the support structure comprises a first connecting structure (H, on the left) (Sandford, Fig. 5) extending between the first support portion and the second support portion (Sandford, as seen in Fig. 3), the first connecting structure spaced apart from the attachment portion to define the first opening (as seen in Figs. 2 and 5, connecting structure H is spaced apart from the attachment portion which allows for the opening to exist and a wire to pass into the opening as seen in Fig. 2).
In regards to claim 10, the combination of Schlein as modified by Phillips and Sandford above teaches the line bypass system of claim 9, wherein the support structure comprises a second connecting structure (H, on the right) (Sandford, Fig. 5) extending between the first support portion and the second support portion (Sandford, as seen in Fig. 3), the second connecting structure spaced apart from the attachment portion to define the second opening (as seen in Figs. 2 and 5, connecting structure H is spaced apart from the attachment portion which allows for the opening to exist and a wire to pass into the opening as seen in Fig. 2).
Claim 11-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Phillips (US 20110192315 A1) in view of Schlein (US 3397857 A).
In regards to claim 11, Phillips teaches a line bypass system comprising:
a support structure comprising:
a body (121) (Fig. 21) defining a third channel into which a shield wire (101) is received, the body comprising a first support edge and a second support edge extending parallel to the first support edge (see annotated Fig. 21 below);
a first support portion (120) positioned on a first side of the body and extending coaxially with respect to the third channel of the body (as seen in Fig. 21), the first support portion dimensioned to facilitate disengagement (para. [0057]) of a robot (10) (Fig. 1) from the first support portion and engagement of the robot with the first support edge and the second support edge of the body (para. [0057]); and
a second support portion (122) positioned on a second side of the body and extending coaxially with respect to the third channel of the body, the second support portion dimensioned to facilitate disengagement (para. [0057]) of the robot from the first support edge and the second support edge of the body and engagement of the robot with the second support portion (para. [0057]).
Phillips does not explicitly teach a third channel in the body.
Schlein teaches a third channel (32) in the body where a shield wire (L) is received through the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Phillips to include a third channel with a shield wire received through as taught by Schlein with a reasonable expectation of success for the purpose of enabling the device to travel along the shield wire since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963). See MPEP § 2144.04(V)(E).
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In regards to claim 12, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 11, wherein the first support portion defines a first channel (Phillips, see annotated Fig. 21 above) into which the shield wire is received, the first channel extending coaxially (Phillips, as seen in Fig. 21) with respect to the third channel of the body.
In regards to claim 13, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 12, wherein the first channel extends entirely through the first support portion from one end to an opposing end (Phillips, as seen in Fig. 21, the first support portion 120 includes a bulging portion indicating the first channel extending entirely through the first support portion), such that the shield wire can extend completely through the first support portion.
In regards to claim 14, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 12, wherein the first channel is defined to match a size (Phillips, as seen in Fig. 21) of the shield wire.
In regards to claim 15, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 11, wherein the second support portion defines a second channel (Phillips, see annotated Fig. 21 above) into which the shield wire is received, the second channel extending coaxially (Phillips, as seen in Fig. 21) with respect to the third channel of the body.
In regards to claim 16, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 15, wherein the second channel extends entirely through the second support portion from one end to an opposing end (Phillips, as seen in Fig. 21, the second support portion 122 includes a bulging portion indicating the second channel extending entirely through the second support portion), such that the shield wire can extend completely through the second support portion.
In regards to claim 17, the combination of Phillips as modified by Schlein above teaches the line bypass system of claim 15, wherein the second channel is defined to match a size (Phillips, as seen in Fig. 21) of the shield wire.
Response to Arguments
Applicant's arguments filed 11 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the flanges 28 of Schlein are encapsulating the wire portions in such a way that the wire portions are exposed and thus the robot of Philips would not be able to engage the wire portions. The examiner disagrees, as seen in Figs. 4 and 7 of Schlein, the wire portions are exposed and thus the robot of Philips would be able to engage the wire portions.
Furthermore, it has been held that the test for obviousness is not whether the features of one reference may be bodily incorporated into the other to produce the claimed subject matter but simply what the combination of references makes obvious to one of ordinary skill in the pertinent art. In re Bozek, 163 USPQ 545 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WILLIAM JONES whose telephone number is (571)270-7063. The examiner can normally be reached M-F: 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel Morano can be reached at (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WILLIAM JONES/ Examiner, Art Unit 3615
/S. Joseph Morano/ Supervisory Patent Examiner, Art Unit 3615
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