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 .
Election/Restrictions
Applicant’s response to the restriction requirement dated 6/3/2026 is acknowledged. Applicants amended claim 12 to recite process of making optical cable indicating that claims 12-19 no longer satisfy the criteria for distinctness.
The examiner does not agree. The optical fibers can be single optical fiber, a bundle or container which holds optical fibers. Each one distinct from the other. The optical fibers can also be wrapped in lieu of extrusion. Optical cables are wrapped to provide mechanical protection and electrical continuity. Having said that, the examiner will agree to rejoin the claims if all allowable subject matter is included in claims 12-19. Consequently, the restriction requirement is final.
Claim Rejections - 35 USC § 112
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.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claim 26 recites zeolites in following manner:
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The way zeolites are listed, specifically, zeolite Y, hydrogen; fails to limit scope of the claim 1, because hydrogen as written is not a zeolite. It is a gas. If applicants attempt to claim synthetic zeolite which comprises hydrogen ion within zeolite hydrogen structure, and considering other zeolites that are listed, perhaps it would be better to remove the comma between zeolite Y and hydrogen to remove any ambiguity within the claim language. Otherwise it looks like two separate components.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20-26, 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (JP 03-145407 translation provided) in view of Baker (WO 2019/075010 published 18 April 2019)
With respect to claims 20 and 25, Furukawa discloses a rodent repellent for rubber, plastic or wood (Abstract). The rodent repellent can be utilized to prevent damages to optical communication cables (industrial application field section).
In example 3, the zeolite was used in the same manner as that of example 2, specifically zeolite was placed in a vacuum where the vessel was evacuated. An oil was poured into the vacuum vessel and pressure was released. Pressure release results in oil filling the pores of zeolite, resulting in zeolite infused with aversive material.
While Furukawa discloses using the rodent repellent to protect the optical cables, Furukawa does not explicitly state how such optical cable can be protected.
In the same field of endeavor, which is in producing sustainable and efficient optical cables that comprise the aversive material, Baker disclosers an optical fiber cable comprising at least one fiber having a core and a protective jacket comprising an aversive material [0005] wherein cable jacket is a polymeric jacket that prevents damage to the cable by rodents and pest (Abstract).
Baker teaches that the aversive material can be incorporated into polymeric jacket and extruded onto optical cable to be the outermost layer. See figure 11, where jacket 222 containing aversive material encapsulates the optical cable 220.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art to utilize zeolite infused with aversive material in the jacket of the optical cable as shown in Baker. Such structure would result in outer layer being the protective layer, which would more easily and controllably release aversive material to prevent damage by rodents.
It is noted that while Baker is directed to having aversive material infused into yeast and then protected by porous material, using infused zeolite will result in the same end result.
In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.").
Consequently the two references provide solutions that meet the requirement od design need or market demand. In other words, the optical cables have to have means that would repel the pests and prevent destruction of the cables. The two references show two ways (finite number of solutions) which can be utilized in a manner that would allow controlled release of the aversive agent and thereby extend the life time of the optical cables. With the two ways pest repellent can be formed, the method of Furukawa eliminates the step of using yeast encapsulant, making the process more streamlined. Furukawa further shows that infused zeolites can perform the same function as the aversive agent of Baker meets the requirement of predictable solution and therefore give person skilled in the Art a good reason to pursue use of infused zeolite in lieu of aversive material that is first infused and then protected and such modification is well within the grasp of skilled artisan.
With respect to claim 21, while Furukawa does not disclose the weathering test according to claimed test method, such property is viewed as obvious for following reason:
The polymeric jacket comprises the same components as those of the instant invention and within the same content. ASTM G154 is a hot condensation test, where warm saturated air is generated within a chamber. Most cycles alternate between 4-hour and 8 hour period of light. The repeatability of such results will vary with the materials being tested. Consequently, if the same polymeric jacket comprises the same aversive additives using the same equipment and conditions the results would be within the same range, providing the same exposure cycles are utilized.
With respect to claim 23, Furukawa discloses use of menthol (p. 3) which can be used alone or with essential oil. Examples of aversive agents include menthol, pinene, limonene and the like. Baker teaches the same compound and further supplements the list of other known aversive agents to include cinnamaldehyde, wintergreen oil, capsaicin, peppermint oil, bergamot oil, geranium oil, predator urine, eucalyptus, bitterants, lemon citrus oil, cedarwood oil, garlic oil, and the like [0031].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time of the instant invention was filed to utilize any of the listed aversive agents, as they are all known to repel rodents and pests.
With respect to claim 22, 30-32, Furukawa discloses particular examples, but does not disclose ranges that would allow one of ordinary skill in the art to hone in on the best mode or most efficient however, Baker discloses content of the first aversive material to be in a range of 0.2-12% and a second aversive material in a range of 2-40%, wherein mg/mg = % x 10. This would include aversive material of at least 2 mg/ml and second aversive material 20 mg/ml (claims) [0029]which encompasses additional claims 30-32.
With respect to claims 24, 26, 29, Furukawa does not teach any specific zeolite that could be used in the cable jacked. However Baker discloses zeolite Y especially with menthol [0029]. Zeolite Y is shown to efficiently absorb the aversive agent.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (JP 03-145407 translation provided) in view of Baker (WO 2019/075010 published 18 April 2019) as applied to claims 20-26, 29-32 above, and further in view of Ando (JP 2016-166144 translation provided).
Discussion of Furukawa and Baker from paragraph 1 of this office action is incorporated here by reference.
While Furukawa discloses zeolite in generic form, Furukawa does not provide structural limitations of the zeolite which can absorb pest repellent agent.
Ando discloses porous inorganic substance that includes zeolite [claims 1 and 3], wherein the zeolite would have BET of 550-100 m2/g and pore size of 0.3-1 nm which is equivalent 3-100 angstroms. The particle size of the zeolite D2 according to examples, the KESMON tradename by Tagosei Co Ltd which is a synthetic ZSM-5 zeolite that comprises straight 10 ring channels of approximately 5.4-5.6 angstrom with uniform pore distribution that meets instant claim 28. Other zeolites of Ando include HSZ 385HUA, a Y-type zeolite by Tosoh with pore size of 7 angstroms HSZ 960 HOA also by Tosoh with pore size of approximately 7.4 angstrom
Ando also infuses the zeolite with aversive agents to impart pest repellent properties. Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the zeolites having disclosed properties and high surface area for better infusion of the aversive agents. These types of zeolites as disclosed in Ando [0004] because it allows for controlled release of the aversive agent which will not volatilize.
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 20, 23 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 22 and 25 of copending Application No. 18/239854 (‘854). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 20 of ‘854 discloses an optical cable having at least one optical fiber and a polymeric jacket that surrounds the at least one optical fiber. The jacket comprises polymer matrix and aversive additive wherein the aversive additive includes porous inorganic material having pores and aversive material contain within the pores (infused), wherein zeolite is porous inorganic compound.
Claim 22 includes the aversive material of instant claim 23.
Claim 25 requires the jacket to be the outermost layer of the cable which meets instant claim 25.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 20, 22, 23, 25, 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 9, 13 and 14 of copending Application No. 18/920125 (‘125). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘125 discloses optical component comprising container comprising polymeric composition, at least one optical fiber disposed in the optical container, wherein polymeric composition comprises polymeric component and aversive additive comprising inorganic particles having open structure and chemical aversive material infused into the inorganic particles. Wherein container is viewed as a component that comprises optical fiber within it. While instant claim 20 does not disclose container, such cables are run through conduits which meet the limitation of container.
Claim 2 of ‘125 states that the inorganic material includes zeolite which meets instant claim 20 as well.
Claim 4 of ‘125 states that the content of aversive agent is 0.2-12 % by weight which meets instant claims 22 and 30-32.
Claim 9 of ’125 states that the polymeric component is a jacket that meets instant claim 25.
Claim 13 OF ‘125 states that optical fiber cable does not comprise metal armor component, wherein none are disclosed in instant claims.
Claim 14 of ‘125 discloses the same aversive agents as instant claim 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Specifically, Figure 3 is identified as an SEM image showing an aversive additive dispersed in a polymer matrix. However, the figure is unclear because it is shown as a black and white drawing where identify polymer vs. aversive additive is virtually impossible. The applicants are requested to submit actual SEM image.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 23, 2026
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