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 .
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 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.
Claims 1-7, 10, 21, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Mack (8272448) in view of Bixenman et al. (2005/0045343).
Mack discloses an electric cable (20, Fig. 2) comprising a core including one or more electrically conductive wires (22) and one or more electric insulating layers (24) surrounding the conductive wires; a metal inner tube (28) surrounding the core; and an outer encapsulating tube (10) surrounding the core and metal inner tube (re-claim 1).
Mack does not disclose the metal inner tube and the core each including one or more undulated segments with one or more curved outer extensions projecting outwards from a longitudinal axis of the cable, wherein the outer surface of the metal inner tube has outermost portions at the curved outer extensions of the undulated segments that touch an inner surface of the outer encapsulating tube (re-claim 1).
Bixenman et al. (Fig. 1, [0026]) discloses an electric cable comprising a core surrounded by a tube (cable 28) and an outer encapsulating tube (30) surrounding the core and tube (cable 28), wherein the tube and core (the cable 28) include one or more undulated segments with one or more curved outer extensions projecting outwards from a longitudinal axis of the cable, wherein the outer surface of the tube (cable 28) has outermost portions (34) at the curved outer extensions of the undulated segments that touch an inner surface of the outer encapsulating tube (30).
It would have been obvious that instead of using body members (40/50) at selected intervals to support the tube (28) within the encapsulating tube (10), one skilled in the art would remove the body members at the selected intervals and provide the tube with undulated segments, as taught by Bixenman et al., at the corresponding selected intervals of Mack to support the tube (28) therein and reduce manufacturing cost, no body members used. It is noted that since the modified electric cable of Mack comprises structure and material as claimed, it can be used for powering a downhole tool in a wellbore (re-claim 1).
Re-claim 2, Mack, as modified, discloses the metal inner tube (28) and the core including one more straight segments (i.e., segment between two adjacent body members 40/50 which are replaced by undulated segments taught by Bixenman).
Re-claim 3, Mack, as modified, discloses two nearest ones of the undulated segments being separated from each other by one of the straight segments.
Re-claim 4, Mack, as modified, discloses the one or more curved outer extensions extending beyond the surface portions of the one or more straight segments.
Re-claim 5, Mack, as modified, discloses the outermost portions of the outer surface of the metal inner tube that touch the inner surface of the outer encapsulating tube having tangent lines that are substantially parallel with respect to the inner surface of the outer encapsulating tube.
Re-claim 6, Mack, as modified, discloses the curved outer extensions of the metal inner tube that do not touch the metal the inner surface of the outer encapsulating tube having tangent lines that are substantially non-parallel with respect to the longitudinal axis or to a surface portions of straight segments of the metal inner tube.
Re-claim 7, Mack, as modified, discloses the outer surface of the metal inner tube in the curved outer extensions being smooth and free of discontinuities.
Re-claim 10, Mack and Bixenman et al. disclose the curved outer extensions of the metal inner tube being in the same first plane perpendicular to a longitudinal axis of the electric cable.
Re-claims 21 and 25, it has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, passing through a bending machine having rollers or not formed through buckling but instead through mechanical forming, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Claims 1 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mack in view of McHugh et al. (EP 0899421).
Mack discloses an electric cable comprising the invention substantially as claimed, see the rejection above.
Mack does not disclose the metal inner tube (28) and the core each including one or more undulated segments with one or more curved outer extensions projecting outwards from a longitudinal axis of the cable, wherein the outer surface of the metal inner tube has outermost portions at the curved outer extensions of the undulated segments that touch an inner surface of the outer encapsulating tube (re-claim 1).
McHugh et al. (Fig. 2, please note that in Figure 2, reference numerals 28 and 30 are reversely shown based on specification) discloses an electric cable comprising a core surrounded by a tube (cable 30) and an outer encapsulating tube (28) surrounding the core and tube (cable 30), wherein the tube and core (the cable 30) include one or more undulated segments with one or more curved outer extensions projecting outwards from a longitudinal axis of the cable, wherein the outer surface of the tube (cable 30) has outermost portions (34) at the curved outer extensions of the undulated segments that touch an inner surface of the outer encapsulating tube (28).
It would have been obvious that instead of using body members (40/50) at selected intervals to support the tube (cable 30) within the encapsulating tube (28), one skilled in the art would remove the body members at the selected intervals and provide the tube with undulated segments, as taught by McHugh et al., at the corresponding selected intervals of Mack to support the tube (cable 30) therein and reduce manufacturing cost, no body members used. It is noted that since the modified electric cable of Mack comprises structure and material as claimed, it can be used for powering a downhole tool in a wellbore (re-claim 1).
Re-claim 8, McHugh et al. discloses a side portion of the metal inner tube (cable 30) having the curved outer extension having an outer bend radius value in a range from 1 to 10 in. ([0022], the encapsulating tube 28 has an internal diameter of 2.0 to 3.0 in. Accordingly, the side portion of the cable 30 having curved outer extension would have an outer bend radius value in a range of 1 to 10 inches). It would have been obvious to one skilled in the art to provide the curved outer extension in the modified electric cable of Mack to have an outer bend radius value in a range of 1 to 10 inches as taught by McHugh et al. to meet the specific use of the resulting electric cable.
Re-claim 9, Mack and McHugh et al. disclose the side portion of the metal inner tube (cable 30) directly opposite the side portion, having the curved outer extension, having an inner bend radius that is substantially equal to the outer bend radius.
Re-claim 10, Mack and McHugh et al. disclose the curved outer extensions of the inner tube being in the same first plane perpendicular to a longitudinal axis of the electric cable.
Re-claims 21 and 25, it has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, passing through a bending machine having rollers or not formed through buckling but instead through mechanical forming, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Allowable Subject Matter
Claims 11 and 22-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 21 and 25 have been considered but are moot in view of new ground of rejection.
Applicant argues that neither Mack nor Bixenman discloses or suggests manufactured undulated segments in a metal inner tube. Examiner would disagree. As stated in the above rejection, the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it.
Applicant argues that neither Mack nor Bixenman discloses or suggests outermost portion having tangent lines substantially parallel to the inner surface of the outer tube. Examiner would disagree because such feature is disclosed in Bixenman, Figure 1. Outermost portions 34 each have tangent lines substantially parallel to the inner surface of the outer tube (30).
Applicant argues that neither Mack nor Bixenman discloses curved outer extension surfaces having tangent lines substantially non-parallel to the longitudinal axis in non-contact regions. Examiner would disagree because such feature is disclosed in Bixenman, Figure 1, regions adjacent to the outermost portion 34 having tangent lines substantially non-parallel to the longitudinal axis.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that the modification would negate the function of Mack’s anchor system. Examiner would disagree. First, applicant has not provided any evidence to support such argument. Second, Bixenman teaches that having undulated segments with curved outer extensions having outermost portions touching the inner surface of the conduit would prevent longitudinal movement of the cable within the conduit, see abstract. Accordingly, the modified cable of Mack, with the undulated segments taught by Bixenman, would still be anchored within the conduit, not affecting the anchoring function.
Regarding the McHugh reference, the response above is equally applied herein.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841