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 .
Drawings
The drawings are objected to because:
Figure 4 appears to be a cutaway/sectional view of Figure 3 but does not follow the standards for cutaways/sectional views as set forth in 37CFR1.84
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 101a in paragraph 41, 301a-3 in paragraph 49. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the lever of the drive component (claim 1; as a result of 112(f) interpretation must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the introduction of reference numeral 301a-3 into Figure 10 in the amendment filed 2/10/2026 is considered new matter as the original disclosure does not provide enough support for the part of the device indicated as the lever to be the lever. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed 2/10/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The following amendments are considered new matter:
“[0016]…abottom surface of the top block is fit withan upper surface of a lateral part of an L-shaped lug of the adjustment seat...”
“[0049]… afit with an upper surface of a lateral part of an L-shaped lug 204 of the adjustment seat 201.
These amendments are considered new matter because the term “flush” has a specific definition “perfectly level or aligned, allowing them to fit together without any offset or overhang” to one of ordinary skill and applicant’s amendment broadens the disclosure. Further, as originally set forth the upper surface of the top block (302a) was required to be flush with the bottom of the adjustment seat (201). This would indicate that the top surface of 302A had to be in contact with the bottom surface of 201 as seen in Figure 3. The amendment reverses the requirement.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“feeding component” of claim 1. Discussion of the feeding component can be found in paragraphs 46-48.
112(f) is no longer invoked in claim 6
“drive component” of claim 1. Though the drive component is discussed in the disclosure (paragraphs 49 and 50) it is not discussed in enough detail to determine what applicant had possession of the invention at the time of filing.
“locking component” of claim 1. Though the locking component is discussed in the disclosure (paragraphs 52-54) it is not discussed in enough detail to determine what applicant had possession of the invention at the time of filing.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Neither the “drive component” nor “locking component” of claim 1 have been described in a manner that would reasonably convey applicant had possession of the claimed invention at the time of filing.
With regards to the drive component, the drive component requires a lever (not shown) to engage with the dial (203e) of the feeding component to moving the feeding block. Paragraph 49 indicates this is completed by engaging the dial once every 360-degree turn. However, the drive component additionally includes the support frame 301b (paragraph 50) having stationary cylinders (301b-1; Figure 11) that fit within slots (301a-2) of the rotating ring. These cylinders would appear to prohibit the lever from completing 360 degrees of rotation and engaging with the dial once every turn without additional structure present that allowed the lever to rotate outside of rotation of the rotating ring (301a). Further, as shown in Figure 8, there is no way the drive component could complete a 360 degree turn because the blade 302 is within a slot of the rotating ring 301a with no opportunity to pivot out of the slot as there is no structure disclosed that supports vertical translation of the blade completely out of the rotating ring. Further, the blade 302 cannot pivot 360 degrees with the rotating ring (paragraph 49 indicates the rotating ring completes multiple full rotations for move the blade to eventually allow the feeding block 203a to meet the plate scale 202a) because of the of attachment to 102 via the mounting block 102a (Figure 2).
Regarding the locking component, the disclosure indicates (paragraph 53) translation of the trigger member (303b) in a groove 303a-3 will allow the stop rod to translate to move the clamping triangles 303c. However, the specification never discloses how the trigger member is ever depressed and seems to contradict itself. For example, Figures 3 and 4 clearly show the blade (302) and therefore the locking component (303) are attached to the adjustment member 201 via two feet independent of the movement of the feeding block. However, in Figure 8, the blade (302) is no longer held in place by the feet, which is the opposite of what is shown in Figure 4. Further both the specification and the claims require the top block (302a) of the blade to be “flush” with the bottom of the adjustment seat (201; paragraph 51). Figure 8 appears contrary to this requirement as in order to be flush with a bottom surface of the adjustment seat 201 at all times it would have to be held in place from the bottom due to the force of gravity, i.e. there is no structure in Figure 8 that prevents this. Further, based on Figure 8, no pivoting of 302a can occur due to the size and length of the slot in 301a relative to the blade. Additionally, the only disclosure of the 2nd groove and the locking component and blade is that the trigger lever (303b) aligns (paragraph 17) with the second groove, but not how the interaction occurs and Figure 8 appears to show the slot having the same height throughout its length. As evidenced above in the discussion of how it appears the rotating ring could not make a 360-degree rotation due to the fixed connection of the adjustment member there also does not appear to be away for the device to unclamp after it has been clamped. Lastly, Figure 7 clearly identifies that the pitch of the threads 303a-2 and the rotational groove 303a-3 are completely different. This would prohibit translational movement of the rod 303a because the trigger would not be able to translate vertically in the rotational groove 303a-3 due the threads 303a-2 requiring far more rotational movement to translate the same distance vertically.
Regarding claim 7, the amendment to include the lever is “protusing outwardly radially from the rotary ring” is considered new matter. This specific language could not be found in the original disclosure and applicant did not indicate where this language could be found. Applicant’s indication that Figure 10 identifies a lever is considered new matter.
Regarding claim 9, the amendment made to claim 9 is considered new matter. Please see the discussion above regarding paragraphs 16 and 49 of the specification.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The apparatus as set forth is considered to not meet the enablement requirement.
Regarding the nature of the invention, the invention is directed to a device capable of cutting a sheath from a wire using an apparatus that imparts some form of rotational movement. This can be accomplished in a variety of ways, but each requires specific structural relationships between multiple parts that work together.
Regarding the state of the prior art none of the prior art discloses how the structure missing from the disclosure as set forth in the 112(a) written description section above functions. Instead, the closest prior art teaches the blade being connected with the ring gear and not needing the required lever, for example:
Massa (U.S Patent No. 3,379,080) teaches a ring cutting tool capable of being used with large cables having an installation component (16, 18, 22, and 24) having a base (16/18) and a support (22) positioned in the middle of the base. An adjustment component (70) generally equivalent to applicant’s is included in Massa, along with a ring cutting component (78, 80, and 82) that can translate vertically due to bosses (92). However, the device of Massa includes all of these features within the confines of the rotation ring (124) and uses multiple cutters 78 such that the device need not complete full multiple full rotations as required by paragraph 49 of the disclosure, i.e. the relationship between the feeding component and the drive component required by claim 1.
Chen (U.S Patent No. 7,275,469) teaches an apparatus similar to Massa wherein the cutting blades (12a-12d) are within the bounds of the rotating ring (24), but instead of moving straight into cutting engagement as set forth in Massa instead pivot into into cutting engagement (Figure 1). Like Massa, the blades of Chen do not require the rotating ring to rotate 360 degrees to continue the cutting process.
Sherer et al (U.S Patent No. 3,807,047), hereinafter Sherer discloses a feeding component (231, 94, 95, 103, 104) which causes movement of the blade and locks the blade (101 and 72) as a locking component (via the threaded connection between 101 and 103/104) but the device does not work in the manner as disclosed in the instant application, such as with the requirement of the lever of the drive component.
Regarding the amount of direction provided by the inventor, as evidenced by the written description discussion above, multiple features and functional relationships that are essential to operation of the device are missing from the disclosure.
Regarding the quantity of experimentation needed, based on the disclosure it is unclear whether the device is operable. This alone would make the amount of experimentation undue, for example:
As evidenced by the written description above, there is no way for the rotating ring to complete full rotations as required by paragraph 49 due to the blade (302) being within the slot of the rotating ring (301a). This in turn would not allow the lever (301a-3) to engage the dial 203e multiple times as set forth in paragraph 49.
Further, Figure 8 identifies the blade (302) is found with a slot of the rotating ring (301a) and that the slot is sized and shaped similar to the blade. However, the specification sets forth (paragraph 44) the arc shape of the adjustment seat is not concentric with the rotating ring (301a). If the two are not concentric then, based on Figure 8, the device would not be operable as the non-concentric movement of the blade relative to the rotating ring would cause the system to bind. Further, even if the blade could rotate with the ring the seat 204 as seen in amended Figure 4 would prevent further rotation as the cutting blade will have been pressed downwards by engagement with 203a.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is unclear how the adjustment component can be positioned at the bottom of the support as also discussed with respect to the specification above. See also claim 2 and the mounting block being connected to a bottom surface of the top of the support.
Regarding claims 1 and 4, it is clear based on the figures that the scale component/scale plate is configured to move inside and outside of the adjustment seat. As such it is unclear how the scale component/plate can always be “set inside the adjustment seat” or what the limitation is intended to encompass.
Regarding claim 3, it is unclear how the movable block is slides “in conjunction with the mounting block”. The only structure of the mounting block to provide attachment between the mounting block and the movable block of the adjustment seat is the locking bolts claimed in claim 2. There is no structure (Figure 3) of the movable block 201b that would allow both a physical locking connection required for the bolts as well as a sliding connection as required by claim 3. Therefore, the scope of the claim is unclear.
Regarding claims 4 and 5, it is unclear what “slides in conjunction with the adjustment seat” means in either claim. Based on the figures, the scale plate and the feeding block appear to slide within/relative to the adjustment seat. Generally, “conjunction” or “in conjunction” would mean they were sliding together instead of relative to each other.
Regarding claim 5, it is unclear what “is fixed with a rack” means. This could be taken as the feeding block being fixed in place due to the rack, i.e. prevent sliding altogether, or it could mean that there is a rack gear attached to an end of the sliding block that translates the movement of the feeding component to a sliding motion of the feeding block within the adjustment seat.
Regarding claim 6, as written the two copper sheets must always be in contact with each other which is contrary to the specification. As such it is unclear how the device operates as specified and therefore the scope of the claim is unclear.
Regarding claim 7, it is unclear what the lever is or how it functions as discussed with respect to 112(a) above. Therefor the scope of the claim is unclear.
Regarding claim 10, please the phase “and fitting with” is unclear. Neither component appears to be shaped to “fit” with the other. Further, the phrase “engages in rotational coordination” is unclear as the clamp block’s movement is not in rotational coordination with the rotation of the rotating ring 301a.
The claim limitations discussed in the 112(a) written description section above invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing these entire claimed functions and to clearly link the structures, materials, or acts to the functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claimed subject matter
Claims 1-10 are considered to read over the prior art of record because the prior art of record does not teach the claimed combination of features according to claim 1 as set forth in the discussion above. However, these claims cannot be considered “allowable” at this time due to the rejection(s) under 35 U.S.C. 112 (a) and (b) set forth in this Office Action. Therefore, upon the claims being rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, further consideration of these claims with respect to the prior art will be necessary.
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive.
Drawings
Regarding figure 4 and the requirement for material hatch marks, Figure 4 is listed in the disclose as an “internal view” and is not listed as a “perspective view”. Further, as clearly seen in Figure 3, at least 201 and 201b are of a one-piece construction and both have been cut in Figure 4 to better show 203a and 203b.
Regarding the inclusion of 301a-3 into Figure 10, its inclusion is considered new matter as it cannot be determined whether this was the portion applicant intended as the lever of the drive component at the time of filing as it is believed that the part indicated would still not function as applicant has indicated.
112(a) written description
Regarding applicant’s assertion that 301b-1 would not obstruct the travel path of the lever, Figure 10 does not, nor any other figure, show a lever and/or how the lever is connected to 301a. Applicant appears to be incorporating information not found in the original disclosure to make this assessment.
Regarding applicant’s assertion that the blade 302 travels with 301(a) and rotates 360 degrees, this is not discussed in the original disclosure. Further claim 1, and paragraph 39, requires the cutting blade to be “positioned at the bottom of the adjustment seat” and original paragraph 49 required an upper surface of the top block 302a to be flush with the bottom of the adjustment block 201. Therefore, the original disclosure appears to contradict applicant’s assertion as if/when the cutting blade rotated with the ring 301(a) it would at some point not be located “at the bottom of the adjustment seat” and “flush with the bottom of the adjustment seat 201” which is contrary to the requirements of the original disclosure. For example, a 180-degree rotation would locate the blade below the support surface. Regarding applicant’s reference to Figure 8, examiner understands applicant’s point with respect to the blade potentially not interfering with a lever since 203e (Figure 4) is offset from the lever however Figure 8 does not appear to cure the issues with respect to clearly understanding what applicant had possession of at the time of filing with respect to the lever of the drive component. Lastly, with respect to rotation of the blade 360 degrees. The lips (204; amended Figure 4) would prevent movement of the blade since pushing the blade down via the non-concentric arcuate track 203a would cause 302a to interfere with 204.
Regarding applicant’s discussion of the cam-controlled feedback logic. The discussion provided does not set forth any evidence that indicates vertical movement in 303a-3 would be possible. The threads 303a-2, because of their difference in pitch, and required simultaneous movement, would prevent the device from operating. While differential threading is known, in this circumstance, for example as seen in Figure 7, it does not appear to work. Specially, 303b-1 is required to follow cammed surface 303a-3. Thread 303a-2 and 303a-3 are part of 303a and therefore would both rotate and translate together. Figure 7 indicates to one of ordinary skill that a 180-degree rotation of 303a due to the displacement of 303b-1 within 303a-3 would requires a substantial translatory movement of 303a. Because 303a-2 has a much finer pitch that translatory movement would be impossible without forcing a rotation of greater than 180 degrees. 303b-1 being within 303a-3 would prevent the 303a from rotating as needed to translate as required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sherer (U.S Patent No. 4,185,525), Kwech (U.S Patent No. 4,813,314), Braasch (U.S Patent No. 4,608,755), Ricci (U.S Patent No. 4,944,205), and Locher (U.S Patent No. 5,950,505) teach elements of the claimed invention.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD F LANDRUM whose telephone number is (571)272-5567. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marivelisse Santiago-Cordero can be reached at 571-272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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