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 .
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered.
Applicant argues claim 1 does not disclose a one piece assembly. This is indeed true, however, the one piece assembly was referring to the device of Sellis which is formed as one piece, as seen in fig 12 and col 6 lines 46-60, and was not referring to the claimed invention.
Applicant argues a person of ordinary skill in the art would not look into Atwell and arrive at a silicone cap, since Atwell is only a sleeve and does not have an end cap. However, the rejection uses Atwell to teach making the sleeve of Sellis out of silicone fiberglass, and since the end cap of Sellis in fig 12 is formed as one piece of material, the end caps are also made of silicone fiberglass. The same is true of Sellis in view of Borkowitz, as Borkowitz is used to teach adding a silicone layer to the sleeve of Sellis, which also involves adding a layer to the end cap of Sellis since the sleeve and end cap is the same piece of material.
Applicant argues adding a second end cap to Sellis in view of Atwell prevents the device from being able to be mounted over sensor 14 of Sellis to protect it. However, the second end cap as modified by Thompson can be removable, as Sellis only discloses one end cap formed together with the sleeve as one piece, the removable second end cap still allows the device to be positioned over sensor 14 of Sellis.
Applicant argues that a person of ordinary skill in the art would not look into Thompson due to the end caps of Thompson being configured to press fit over the exterior of the sleeve of Thompson and not into the sleeve and that the end caps of Thompson are of a different material. However, the rejection uses Thompson to teach having two end caps, one on each end, and not the material or attachment style of the end cap.
Additionally, upon further consideration, a new ground of rejection is made in view of newly found prior art.
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.
Claims 1 is rejected under 35 U.S.C. 103 as being unpatentable over Sellis (US 8263866 B2), hereafter known as Sellis, in view of Keenkee’s product “keenkee 2 PCS Cable Grommet Made of Flexible Silicone 1 Inch Desk Grommets for Table and Other Furniture’s Hole Cover Cord or Wire Pass Through White Color”, hereafter known as Keenkee, in further view of either Atwell (US 4452279 A), or alternatively in view of Borkowitz (DE 202008008547 U1), hereafter known as Atwell and Borkowitz, respectively.
Regarding claim 1, Sellis discloses a thermal, flame protective sleeve for protecting a member therein (abstract, the sleeve of Sellis is protective of member inside, col 3, lines 18-25, sleeve of Sellis is thermally protective, but does not disclose flame protection), comprising:
a tubular member including a circumferentially continuous wall with an inner surface bounding an inner cavity extending along a central longitudinal axis between opposite ends (fig 12, col 6 lines 46-60, sensor sleeve 96, Sellis);
and at least one end cap attached to at least one of the opposite ends (fig 12, col 6 lines 46-60, band 92, which functions as the end cap, is attached to one end, Sellis),
wherein the end cap has at least one resilient tine extending radially inwardly from an outer surface of the end cap for engagement with an elongate member extending into the inner cavity of the tubular member (fig 12, col 6 lines 46-60, end cap 92 has fingers 94 that extend inwardly from outer surface of 92 and engage with the unlabeled wire sheath extending into tubular member 96, Sellis),
wherein the at least one resilient tine is flexible along opposite axial directions to allow the tubular member to be moved in opposite axial directions along the elongate member (fig 12, tines 94 are flexible along opposite axial directions and allow the tubular member 96 to move in opposite axial directions (up and down) along elongate member, which is the wire, Sellis)
wherein the end cap is silicone (not disclosed).
Sellis does not disclose the end cap to be silicone. However, Keenkee teaches silicone end caps that have flexible tines (product title, first product image, Keenkee). Keenkee is a product page for an end cap grommet with flexible tines that are used for wires, a field related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Keenkee into Sellis and make the end cap of Sellis out of silicone. Silicone wire holding end caps are well known in the art, and silicone offers greater flexibility and higher temperature resistance than the nylon material of Sellis.
Sellis in view of Keenkee does not disclose fire protection. However, Atwell teaches using a silicone and fiberglass sleeve for fire resistance for tubular articles (abstract, col 2, lines 25-32, Atwell). Atwell describes a fire resistant sleeve for components in vehicles, a field closely related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Atwell into Sellis and make the outer layer of the sleeve of Sellis in view of Keekee out of the silicone fiberglass material of Atwell. The sleeve material of Atwell meets the FAA 15 minute fire resistance test (abstract, Atwell), which would allow the sleeve of Sellis in view of Keenkee and Atwell to be used in situations where flame resistance is required.
Alternatively, Borkowitz teaches using flame-retardant silicone as a wrapped sleeve for cables and hoses (abstract, Borkowitz, page 6, last paragraph, page 7 first paragraph). Borkowitz describes a flame resistant sleeve for components in vehicles, a field closely related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Borkowitz into Sellis in view of Keenkee and make the outer layer of the sleeve of Sellis in view of Keenkee out of the silicone material of Borkowitz. The silicone of Borkowitz provides UV resistance and is able to handle low and high temperatures, allowing it to be used in other vehicles such as motorcycles (page 6, last paragraph, page 7 first paragraph, Borkowitz).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee and Atwell, or alternatively Sellis in view of Keenkee and Borkowitz, in further view of Thompson (US 3912855 A), hereafter known as Thompson.
Regarding claim 2, Sellis in view of Keenkee and Atwell (or alternatively Sellis in view of Keenkee and Borkowitz) discloses the thermal, flame protective sleeve of claim 1, but does not disclose wherein the at least one end cap includes a pair of end caps, with a separate one of the pair of end caps attached to a separate one of the opposite ends.
However, Thompson teaches a pair of end caps (fig 1, end caps 13 and 14, Thompson), with one end cap on each end of the sleeve (fig 1, each cap is one each end of sleeve 20, Thompson). Thompson describes a protective sleeve for electrical cables, a field closely related to Sellis, Atwell, Borkowitz, and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Thompson into Sellis in view of Keenkee and Atwell (or alternatively into Sellis in view of Keenkee and Borkowitz) and add a removable second end cap to the other end of the protective sleeve 20. The second end cap can close off the other end of the sleeve and allows the sleeve to be used to protect a sensor or other device that is mounted to the middle of an elongated object, adding more versatility to the sleeve.
Regarding claim 3, Sellis in view of Keenkee, Atwell, and Thompson (or alternatively Sellis in view of Keenkee, Borkowitz, and Thompson) discloses the thermal, flame protective sleeve of claim 2, wherein the circumferentially continuous wall has an outer surface (fig 12, sleeve 96 has an outer surface, Sellis), and further including an outermost coating of silicone bonded to the entirety of the outer surface (in the case of Sellis in view of Keenkee, Atwell, and Thompson, the flame resistant silicone fiberglass material of Atwell replaces the outer layer of Sellis, and thus is bonded to the outer surface. In the case of Sellis in view of Keenkee, Borkowitz, and Thompson, the flame resistant silicone material of Borkowitz replaces the outer layer of Sellis, and thus is bonded to the outer surface.)
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee, Atwell, and Thompson.
Regarding claim 4, Sellis in view of Keenkee, Atwell, and Thompson discloses the thermal, flame protective sleeve of claim 2, wherein the circumferentially continuous wall is a textile wall (fig 3, col 4 lines 58-61, Atwell, the fiberglass which forms the wall is woven into a textile)
Regarding claim 5, Sellis in view of Keenkee, Atwell, and Thompson discloses the thermal, flame protective sleeve of claim 4, wherein the textile wall is woven, knit or braided (fig 3, col 4 lines 58-61, Atwell, the fiberglass which forms the wall is woven into a textile).
Claims 6,7,8,9,10 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee, Borkowitz, and Thompson.
Regarding claim 6, Sellis in view of Keenkee, Borkowitz, and Thompson discloses the thermal, flame protective sleeve of claim 2, wherein the circumferentially continuous wall is a non-textile, flexible wall (fig 12, Sellis, wall 96 is continuous, and the outer layer has been replaced with the silicone of Borkowitz, which is non textile and flexible)
Regarding claim 7, Sellis in view of Keenkee, Borkowitz, and Thompson discloses the thermal, flame protective sleeve of claim 6, wherein the non-textile, flexible wall is formed of a flexible resinous material (page 6, last paragraph, page 7 first paragraph, Borkowitz, the silicone material, which the outer layer of Sellis is modified to be made of, is flexible and resinous).
Regarding claim 8, Sellis in view of Keenkee, Borkowitz, and Thompson discloses the thermal, flame protective sleeve of claim 6, wherein the non-textile, flexible wall is formed of silicone (page 6, last paragraph, page 7 first paragraph, Borkowitz, the wall material is silicone)
Regarding claim 9, Sellis in view of Keenkee, Borkowitz, and Thompson discloses the thermal, flame protective sleeve of claim 8, wherein the non-textile, flexible wall is formed as a single, monolithic molded piece of material with the at least one end cap (fig 12, col 6 lines 46-60, the end cap (band 92 and fingers 94) and sleeve 96 are formed as one piece of material, and is thus monolithic, Sellis, but molding is not disclosed.)
Regarding the limitation of the wall being molded, as stated in MPEP 2113-I: "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). While the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, in this case it does not appear that the use of a molding process to form the flexible wall would be expected to impart any distinctive structural characteristics to the final product as claimed. Thus, claim 9 is unpatentable over the sleeve of Sellis in view of Borkowitz and Thompson, even if made by a different process.
Alternatively, to promote compact prosecution in the event that the molding process is seen to impart some distinctive structural characteristic to the final product, Thompson further teaches molding end caps (col 3, lines 29-31, Thompson). Thompson describes a protective sleeve for electrical cables, a field closely related to Sellis, Borkowitz, and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Thompson into Sellis in view of Keenkee, Borkowitz, and Thompson and mold the end caps. Silicone molding is very well known in the art, and yields fast and consistent parts, which would benefit the device of Sellis in view of Keenkee, Borkowitz, Thompson. Since the sleeve and one of the end caps are formed as one piece, the sleeve would be molded as well. Additionally, it would have been an obvious matter of design choice to mold the end cap and sleeve, since applicant has not disclosed that the molding solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well if manufactured in a different manner.
Regarding claim 10. Sellis in view of Keenkee, Borkowitz, and Thompson discloses the thermal, flame protective sleeve of claim 9, wherein the at least one end cap includes a pair of end caps, with a separate one of the pair of end caps at a separate one of the opposite ends (fig 1 Thompson, sleeve 20 has an end cap on each end, 13 and 14 respectively. The same is true of Sellis in view of Keenkee, Borkowitz, and Thompson.)
Claims 11,12,14,15,16,17 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee and Thompson.
Regarding claim 11, Sellis discloses a method of constructing (not disclosed) a sleeve for protecting a member contained in an inner cavity of the sleeve, comprising:
forming a tubular member having a circumferentially continuous wall with an inner surface bounding the inner cavity extending along a central longitudinal axis between opposite ends (fig 12, col 6 lines 46-60, sensor sleeve 96, which is for protecting a member contained in its inner cavity, and has a circumferentially continuous wall with inner surface bounding the inner cavity which extends along an axis between opposite ends, Sellis, although method of forming is not disclosed);
and attaching at least one end cap constructed of silicone to at least one of the opposite ends (fig 12, col 6 lines 46-60, Sellis, band 92, which functions as the end cap, is attached to one end during the forming process, since they are formed as one piece of material. The material can be polymer (col 4, lines 6-9), although silicone is not disclosed),
wherein the end cap has at least one resilient tine extending radially inwardly from an outer surface of the end cap for engagement with an elongate member extending into the inner cavity of the tubular member (fig 12, col 6 lines 46-60, end cap 92 has fingers 94 that extend inwardly from outer surface of 92 and engage with the unlabeled wire sheath extending into tubular member 96, Sellis).
Sellis does not disclose the end cap to be silicone. However, Keenkee teaches silicone end caps that have flexible tines (product title, first product image, Keenkee). Keenkee is a product page for an end cap grommet with flexible tines that are used for wires, a field related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Keenkee into Sellis and make the end cap of Sellis out of silicone. Silicone wire holding end caps are well known in the art, and silicone offers greater flexibility and higher temperature resistance than the nylon material of Sellis.
Sellis in view of Keenkee does not disclose the method of which the member and the end cap are formed. However, Thompson teaches molding end caps (col 3, lines 29-31, Thompson), which is a method of constructing. Thompson describes a protective sleeve for electrical cables, a field closely related to Sellis, and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Thompson into Sellis in view of Keenkee and mold the end caps of Sellis in view of Keenkee. Polymer molding is very well known in the art, and yields fast and consistent parts, which would benefit the device of Sellis in view of Keenkee and Thompson. Since the sleeve and the end cap are formed as one piece, the sleeve would be molded as well.
Regarding claim 12, Sellis in view of Keenkee and Thompson, as applied to in claim 11, discloses the method of claim 11, but does not disclose further including attaching a separate silicone end cap to each of the opposite ends.
However, Thompson teaches a pair of end caps (fig 1, end caps 13 and 14, Thompson), with one end cap on each end of the sleeve (fig 1, each cap is one each end of sleeve 20, Thompson). Thompson describes a protective sleeve for electrical cables, a field closely related to Sellis, and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Thompson into Sellis in view of Keenkee and Thompson and add a second removable end cap to the other end of the protective sleeve 20. The second end cap can close off the other end of the sleeve and allows the sleeve to be used to protect a sensor or other device that is mounted to the middle of an elongated object, adding more versatility to the protective sleeve.
Regarding claim 14, Sellis in view of Keenkee and Thompson discloses the method of claim 11, further including molding the at least one end cap in bonded attachment to the circumferentially continuous wall (col 3, lines 29-31, Thompson, discloses molding the end caps. Since the sleeve and end cap of Sellis are made from one piece of material, they are molded to be attached together).
Regarding claim 15, Sellis in view of Keenkee and Thompson discloses the method of claim 14, further including molding the at least one end cap and the circumferentially continuous wall as a monolithic piece of material. fig 12, col 6 lines 46-60, Sellis, the end cap (band 92 and fingers 94) and sleeve 96 are formed as one piece of material, Sellis, and is thus monolithic).
Regarding claim 16. Sellis in view of Keenkee and Thompson, as applied to in claim 15, discloses the method of claim 15, but does not disclose further including molding the at least one end cap including a pair of end caps, with a separate end cap molded to each of the opposite ends.
However, Thompson teaches a pair of end caps (fig 1, end caps 13 and 14, Thompson), with one end cap on each end of the sleeve (fig 1, each cap is one each end of sleeve 20, Thompson), which both can be molded (col 3, lines 29-31, Thompson), Thompson describes a protective sleeve for electrical cables, a field closely related to Sellis, and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Thompson into Sellis in view of Keenkee and Thompson and create a second removable end cap to the other end of the protective sleeve 20 via molding. The second end cap can close off the other end of the sleeve and allows the sleeve to be used to protect a sensor or other device that is mounted to the middle of an elongated object, adding more versatility to the protective sleeve.
Regarding claim 17, Sellis in view of Keenkee and Thompson discloses the method of claim 12, further including forming the circumferentially continuous wall as a textile wall (col 1, lines 31-34, reflective layer 24 of fig 1, Sellis, which is also present in fig 12, can be formed with a circumferentially continuous wall of woven polymer filaments, which is a textile).
Claims 13,18 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee and Thompson, in further view of Atwell.
Regarding claim 13, Sellis in view of Keenkee and Thompson discloses the method of claim 12 but does not disclose further bonding a silicone coating to an outer surface of the circumferentially continuous wall. However, Atwell teaches bonding a silicone coating to the outer surface of a circumferentially continuous wall (col 2, lines 30-33, Atwell, silicone coating 14 is heat cured, and thus bonded, to the outer surface of wall 12). Atwell describes a fire resistant sleeve for components in vehicles, a field closely related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Atwell into Sellis in view of Keenkee and Thompson and heat cure silicone layer 14 of Atwell to the sleeve of Sellis in view of Keekee and Thompson. The silicone layer of Atwell is inherently heat and flame resistant, which would allow the sleeve of Sellis in view of Keenkee and Atwell to be used in situations where heat or flame resistance is required.
Regarding claim 18, Sellis in view of Keenkee and Thompson discloses the method of claim 17 but does not disclose the textile wall formed from monofilaments and/or multifilaments. The textile wall of Sellis can be formed from filaments woven together but is unclear on the filaments being mono or multi filaments. However, Atwell teaches using multifilaments to weave a textile wall (fig 3, col 4 lines 58-61, Atwell, the yarns which forms the wall are woven into a textile. Col 2, lines 25-30, the yarns are made of a plurality of continuous fiberglass filaments, hence is woven from multifilaments, Atwell). Atwell describes a fire resistant sleeve for components in vehicles, a field closely related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Atwell into Sellis in view of Keenkee and Thompson and weave the scrim of layer 24 of Sellis using multifilaments. Weaving a textile from multifilaments is well known in the art, and multifilament textile offer higher flexibility than monofilament textiles.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sellis in view of Keenkee and Thompson, in further view of Borkowitz.
Regarding claim 19, Sellis in view of Keenkee and Thompson discloses the method of claim 12 but does not disclose further including forming the circumferentially continuous wall as a non-textile wall.
However, Borkowitz teaches using flame-retardant silicone as a wrapped sleeve for cables and hoses (abstract, Borkowitz, page 6, last paragraph, page 7 first paragraph). Borkowitz describes a flame resistant sleeve for components in vehicles, a field closely related to Sellis and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to incorporate the teachings of Borkowitz into Sellis in view of Keenkee and make the wall layer of the sleeve of Sellis in view of Keenkee and Thompson out of the silicone material of Borkowitz. The silicone of Borkowitz provides UV resistance and is able to handle low and high temperatures, allowing it to be used in other vehicles such as motorcycles (page 6, last paragraph, page 7 first paragraph, Borkowitz). After the modification, the wall is formed via molding as described in Thompson.
Regarding claim 20, Sellis in view of Keenkee, Thompson, and Borkowitz discloses the method of claim 19, further including forming the circumferentially continuous wall of silicone (page 6, last paragraph, page 7 first paragraph, Borkowitz, the wall material is silicone, and is formed from molding as described in Thompson).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tisbo (US 20050076469 A1) discloses a silicone end cap for wires with flexible tines.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAOTIAN LU whose telephone number is (571)272-0444. The examiner can normally be reached Monday-Friday 9:00 am-5:00 pm EST.
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/H.L./ Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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