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 .
DETAILED ACTION
Response to Election
1. This action is in response to the election filed December 1, 2025.
(Group I) Claims 1-19 were provisionally elected rendering (Group II) Claim 20 withdrawn as a non-elected invention.
RESPONSE TO REQUEST FOR RECONSIDERATION
2. Applicant's election with traverse of method of making an optical recording medium (Group II) is acknowledged. The traversal is on the ground(s) that ‘if the search and examination of an entire application can be made without serious burden, the examiner must examine it on the merits, even though it includes claims distinct or independent inventions.’ M.P.E.P. 803. Additionally, ‘not only must the art be searched within which the invention is claimed, but also all analogous arts’ M.P.E.P. 904.01(c). The search of the 2 classes and subclasses would entail the requisite serious burden as the search for method of making is not the same as the article search.
The claims to the non-elected invention will be withdrawn from further consideration under 37 CFR 1.142. See MPEP § 809.02(c) and § 821 through § 821.03.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
3. The references disclosed within the information disclosure statement (IDS) submitted on January 26, 2024, has been considered and initialed by the Examiner.
Claim Rejections – 35 USC § 102(a)(1)
4. The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
5. Claims 1-10, 16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gotz et al (DE 10 2018 125009).
Gotz discloses a cable holder comprising a housing (9), exterior collar (80), rigid portion (8) and compressible portion (4) as shown in Figure 4 of Gotz:
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, as in claim 1. In claim 1 the phrase, “for coupling the primary coupler to the housing by engagement with the primary slot”, “for gripping a cable”, “for coupling the exterior collar to the rigid portion to allow the cable to rotate within the housing” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 2, Figure 4 of Gotz shows the rigid portion includes notches.
Concerning claim 3, Figure 3 of Gotz shows a first and second housing piece, where they are detachable from one another.
Concerning claim 4, Figure 3 of Gotz shows a first and second exterior collar piece, where they are detachable from one another.
Concerning claim 5, Figures 3-4 of Gotz show the exterior collar piece is tightened around the cable and fixed to the rigid portion. In claim 5, the phrase, ”for tightening the first and second exterior collars…by compressing the compressible portion” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 6, Figures 3-4 of Gotz show the rigid portion(s) allow the exterior collar to be placed around the cable.
Concerning claim 7, Figures 3-4 of Gotz show the compressible portion includes a first compressible portion and a second compressible portion to allow the exterior collar to be placed around the cable.
Concerning claim 8, Gotz discloses the holding means can be made from a rubber material (Claim 4 of Gotz).
Concerning claim 9, Figures 3-4 of Gotz shows an inner diameter of the rigid portion corresponds to an outer diameter of a cable.
Concerning claim 10, Figure 5 of Gotz shows the primary coupler is situated in a middle of the housing.
Concerning claim 16, Figure 1 of Gotz shows a cap defining a hole and a cap connector in the housing coupled to the cap.
Concerning claim 19, Figure 1 of Gotz shows a cable holder with a cable, where it is inherent for the cable to be air cooled.
Claim Objection
6. Claims 11-15, 17-18 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. The closest prior art does not teach or suggest the recited cable holder further including a first secondary coupler situated at a first end of the housing, the first secondary coupler rotatably coupled to the housing at a first interior slot, the first secondary coupler defining a first interior hole for receiving the cable. The closest prior art does not teach or suggest the recited cable holder further including a first cap piece, a second cap piece, a plate defining a plate hole for attaching the mechanical wire, and one or more fasteners to fasten the first cap piece, the second cap piece, and the plate. The closest prior art does not teach or suggest the recited cable holder further including wherein the exterior collar, the rigid portion, and the compressible portion of the primary coupler includes an alignment mechanism to prevent misalignment.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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