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 were received on April 17, 2026. These drawings are approved.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 8, 11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janah et al (Pat Num 2013/0206452, herein referred to as Janah). Janah discloses a cable (Fig 1) that is resistant to partial discharges (Paragraph 10) cause by humidity, high temperatures, and low pressure (Paragraph 6). Specifically, with respect to claim 1, Janah teaches a cable (1, Fig 1) comprising a conductor (2), an insulation system (3) that may have an inner semiconducting layer (not shown) arranged radially outside the conductor (2), wherein the insulation layer (3) would be arranged radially outside the inner semiconducting layer (Paragraph 37, Claim 8) and an outer semiconducting layer (not shown) arranged radially outside the insulation layer (3, Claim 8) and an adhesive layer (5a) arranged between the conductor (2) and the inner semiconducting layer (not shown, Paragraph 37), wherein the adhesive layer (5a) directly contacts an inner surface of the semiconducting layer (not shown) and the outer surface of the conductor (2, Paragraph 37), wherein the adhesive layer (5a) is capable of restricting axial movement of the inner semiconducting layer (not shown) relative to the conductor (2), thereby eliminating or at least reducing shrink back (Paragraph 37, i.e. adhesive plastic is capable of exhibiting such a characteristic, Paragraph 39). With respect to claim 2, Janah discloses that the conductor (2) has an outer surface (Fig 1) that has one or more portions that are free of the adhesive (5a, i.e. adhesive is placed on the inner surface of the semiconducting tape layer (not shown, Paragraph 37) which surrounds the individual conductors and only abuts a portion of the outer surface of the individual conductors of 2, Fig 1). With respect to claim 3, Janah discloses that the adhesive layer (5a) is an electrically insulating material (Paragraph 50) and wherein the inner semiconducting layer (not shown) is arranged radially outside the conductor (2).
With respect to claims 8, 11, and 14, Janah discloses that the adhesive layer (5a) is an adhesive plastic (Paragraph 39).
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.
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.
Claim(s) 4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Janah (Pat Num 2013/0206452) in view of Thompson (Pat Num 4,095,039). Janah discloses a cable (Fig 1) that is resistant to partial discharges (Paragraph 10) cause by humidity, high temperatures, and low pressure (Paragraph 6), as disclosed above with respect to claim 1. Specifically, with respect to claim 4, Janah discloses that the adhesive layer (5a) is insulative (Paragraph 39) and covers the essentially the entire outer surface of the conductor (2, Paragraph 37). With respect to claim 17, Janah discloses that the adhesive layer (5a) is an adhesive plastic (Paragraph 39).
However, Janah doesn’t necessarily disclose the adhesive being semiconducting (claim 4).
Thompson teaches a power cable (Figs 1-3) having greater flexibility (Col 2, lines 15-18), wherein adhesive layers protects the interior components of the cable by preventing any migration of water lengthwise of the cable (Col 3, lines 64-68). Specifically, with respect to claim 4, Thompson teaches a power cable (Fig 2) comprising a conductor (40), an insulation system (42, 44, 46) having an inner semiconducting layer (42) arranged radially outside the conductor (40), an insulation layer (44) arranged radially outside the inner semiconducting layer (42) and an outer semiconducting layer (46) arranged radially outside the insulation layer (44) and an adhesive layer (52) arranged between the conductor (40) and the inner semiconducting layer (42), wherein the adhesive layer (52) directly contacting an inner surface of the inner semiconducting layer (42, Col 3, lines 57-61) and/or the adhesive layer (52) directly contacting an outer surface of the conductor (40, Col 2, lines 65-68), wherein the adhesive layer (52) may be semiconductive (Col 4, lines 7-8) and covers the essentially the entire outer surface of the conductor (40, Fig 2).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the power cable of Janah to comprise the adhesive material being a semiconductive material configuration as taught by Thompson because Thompson teaches that such a configuration provides power cable (Figs 1-3) having greater flexibility (Col 2, lines 15-18), wherein adhesive layers protects the interior components of the cable by preventing any migration of water lengthwise of the cable (Col 3, lines 64-68).
Claim(s) 5-7, 9-10, 12-13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Janah (Pat Num 2013/0206452) in view of Gustafsson et al (WO Pat Num 2020/234391, herein referred to as Gustafsson). Janah discloses a cable (Fig 1) that is resistant to partial discharges (Paragraph 10) cause by humidity, high temperatures, and low pressure (Paragraph 6), as disclosed above with respect to claims 1-3. Specifically, with respect to claims 5-6, 9-10, 12-13, and 18, Janah teaches a cable (1, Fig 1) comprising a conductor (2), an insulation system (3) that may have an inner semiconducting layer (not shown) arranged radially outside the conductor (2), wherein the insulation layer (3) would be arranged radially outside the inner semiconducting layer (Paragraph 37, Claim 8) and an outer semiconducting layer (not shown) arranged radially outside the insulation layer (3, Claim 8) and an adhesive layer (5a) arranged between the conductor (2) and the inner semiconducting layer (not shown, Paragraph 37), wherein the semiconducting layers may be in the form of tapes (Paragraphs 32-33), and wherein adhesive layers (3) may be placed between the insulation layer (3) and the outer surface of the inner semiconducting layer adhering the tape layer to the inner semiconducting layer (Paragraph 37) and/or arranged between the tape layer and the conductor (2) adhering the tape layer to the conductor (2, Paragraph 37).
However, Janah doesn’t necessarily disclose a tape layer arranged between the conductor and the inner semiconducting layer (claims 5-6, 9-10, and 12-13), nor the tape being semiconducting (claims 7 & 18).
Gustafsson teaches a power cable (Figs 1-4) that prevents water from migrating longitudinally in the interstices of the cable (Page 11, lines 20-21). Specifically, with respect to claims 5-6, 9-10, and 12-13, Gustafsson teaches a power cable (Fig 2) comprising a conductor (3), an insulation system (5, 7, 9) having an inner semiconducting layer (5) arranged radially outside the conductor (3), an insulation layer (7) arranged radially outside the inner semiconducting layer (5) and an outer semiconducting layer (9) arranged radially outside the insulation layer (7) and an filling layer (15) arranged between the conductor (3) and the inner semiconducting layer (5), wherein a tape layer (17) is arranged between the conductor (3) and the inner semiconducting layer (5), wherein the filling layer (15) directly contacts an inner surface of the tape layer (17) and/or directly contacting an outer surface of the conductor (3, Page 12, lines 15-19). With respect to claims 7 & 18, Gustafsson teaches that the tape layer (17) may be semiconducting (Page 12, lines 13-15)
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the power cable of Janah to comprise the tape layer configuration as taught by Gustafsson because Gustafsson teaches that such a configuration provides a power cable (Figs 1-4) that prevents water from migrating longitudinally in the interstices of the cable (Page 11, lines 20-21).
Claim(s) 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Janah (Pat Num 2013/0206452) in view of Thompson (Pat Num 4,095,039), as applied to claim 4 above (herein referred to as modified Janah), further in view of Gustafsson (WO Pat Num 2020/234391). Modified Janah discloses a cable (Fig 1) that is resistant to partial discharges (Paragraph 10) cause by humidity, high temperatures, and low pressure (Paragraph 6), as disclosed above with respect to claim 1 & 4. Specifically, with respect to claim 16-17, modified Janah teaches a cable (1, Fig 1) comprising a conductor (2), an insulation system (3) that may have an inner semiconducting layer (not shown) arranged radially outside the conductor (2), wherein the insulation layer (3) would be arranged radially outside the inner semiconducting layer (Paragraph 37, Claim 8) and an outer semiconducting layer (not shown) arranged radially outside the insulation layer (3, Claim 8) and an adhesive layer (5a) arranged between the conductor (2) and the inner semiconducting layer (not shown, Paragraph 37), wherein the semiconducting layers may be in the form of tapes (Paragraphs 32-33), and wherein adhesive layers (3) may be placed between the insulation layer (3) and the outer surface of the inner semiconducting layer adhering the tape layer to the inner semiconducting layer (Paragraph 37) and/or arranged between the tape layer and the conductor (2) adhering the tape layer to the conductor (2, Paragraph 37).
However, modified Janah doesn’t necessarily disclose a tape layer arranged between the conductor and the inner semiconducting layer (claims 15-16).
Gustafsson teaches a power cable (Figs 1-4) that prevents water from migrating longitudinally in the interstices of the cable (Page 11, lines 20-21). Specifically, with respect to claims 16-17, Gustafsson teaches a power cable (Fig 2) comprising a conductor (3), an insulation system (5, 7, 9) having an inner semiconducting layer (5) arranged radially outside the conductor (3), an insulation layer (7) arranged radially outside the inner semiconducting layer (5) and an outer semiconducting layer (9) arranged radially outside the insulation layer (7) and an filling layer (15) arranged between the conductor (3) and the inner semiconducting layer (5), wherein a tape layer (17) is arranged between the conductor (3) and the inner semiconducting layer (5), wherein the filling layer (15) directly contacts an inner surface of the tape layer (17) and/or directly contacting an outer surface of the conductor (3, Page 12, lines 15-19).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the power cable of modified Janah to comprise the tape layer configuration as taught by Gustafsson because Gustafsson teaches that such a configuration provides a power cable (Figs 1-4) that prevents water from migrating longitudinally in the interstices of the cable (Page 11, lines 20-21).
Response to Arguments
Applicant's arguments filed April 17, 2026, have been fully considered but they are not persuasive. Specifically, the applicant argues the following
A) Janah doesn’t teach an adhesive layer that restricts axial movement of the inner semiconducting layer relative to the conductor thereby eliminating or at least reducing shrink back and therefore cannot anticipate claim 1.
B) The rationale to combine Janah with Thompson is insufficient to establish a motivation to combine Janah with Thompson because the cables are fundamentally different in cable architecture and the combination of the two references would affect the performance characteristics of Janah and Thompson.
C) Claim 1 is novel and patentable over Janah, Thompson, and Gustafsson
With respect to argument A, the examiner respectfully traverses. Firstly, the courts have also been consistent that functional language doesn’t differentiate the claimed invention from the prior art, if all of the structural limitations of the claimed invention are disclosed in the prior art references. Specifically, the MPEP teaches:
2114 [R-1] Apparatus and Article Claims — Functional Language
For a discussion of case law which provides guidance in interpreting the functional
portion of means-plus-function limitations see MPEP § 2181 - § 2186.
APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE
FROM THE PRIOR ART
>While features of an apparatus may be recited either structurally or functionally, claims<
directed to >an< apparatus must be distinguished from the prior art in terms of structure
rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,
1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to
function did not defeat the Board’s finding of anticipation of claimed apparatus because
the limitations at issue were found to be inherent in the prior art reference); see also In re
Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re
Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims
cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis
in original).
Based on the above guidelines, the examiner respectfully submits, that all of the structural limitations of the claimed invention are disclosed in the prior art reference and therefore must be capable of performing the same functions and be utilized in the same manner. If some different structure is responsible for performing the function of the claimed invention, then the applicant has to claim the different structure to differentiate the claimed invention from the prior art. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Secondly, Janah clearly teaches an adhesive that is capable of restricting axial movement of the inner semiconducting layer relative to the conductor, thereby eliminating or at least reducing shrink back. Specifically, Janah teaches the adhesive being made of a plastic material (Paragraph 39), wherein the adhesive layer has the function of enabling adhesion between the layers that it connects (Paragraph 37). The applicant has stated that “To eliminate or reduce shrink back, an adhesive must be solidified, providing no friction and having no viscosity (sese Page 11, third paragraph). It is submitted that the adhesive of Janah is cured (i.e. solidified) by heating of the finished cable (See Paragraph 52-56) and therefore would provide no friction or viscosity, thereby eliminating or reducing shrink back. In light of the above comments, the examiner respectfully submits that Janah teaches the power cable as disclosed above with respect to claim 1.
With respect to arguments B & C, the examiner respectfully traverses. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both Janah and Thompson disclose high voltage cables (Paragraph 6 of Janah and Col 1, lines 5-10 of Thompson), comprising multiple layers of semiconducting layers and insulation layers surrounding the internal conductor (Paragraph 50 of Janah and Col 2, lines 55-64 of Thompson), wherein the semiconducting and the insulation layers are attached by the usage of adhesive (Paragraph 37 of Janah and Col 3, lines 57-61 of Thompson). While Janah teaches all the claimed limitations of claim 4, Janah doesn’t necessarily disclose the adhesive being semiconducting. While it is known in the art, that adjacent layers of the cables, especially, high voltage cables comprising semiconducting layers to use semiconducting adhesive to join adjacent layers, the examiner relies on the teaching of Thompson which teaches a high voltage power cable (Figs 1-3) having multiple layers of semiconductive and insulation layers (42, 44, 46) surrounding the interior wire (40), wherein the multiple layers (42, 44, 46) are joined by the usage of adhesive, wherein the adhesive is not only semiconducting but also protects the interior components of the cable by preventing any migration of water lengthwise of the cable (Col 3, lines 64-68).
Clearly, there exist a motivation of protecting the high voltage cable of Janah which is used in environments, such as aero planes (Paragraph 5), which may be exposed to outside influences, such as rain to modify the adhesive to be a semiconducting adhesive in order to bond adjacent layers together and also waterproof the high voltage cable as taught by Thompson in order to protect the interior components from being damaged.
In light of the above stated comments, the examiner respectfully submits that there clearly exist a motivation to modify the high voltage power cable of Janah to comprise the adhesive material being a semiconductive material configuration as taught by Thompson because Thompson teaches that such a configuration provides power cable (Figs 1-3) having greater flexibility (Col 2, lines 15-18), wherein adhesive layers protects the interior components of the cable by preventing any migration of water lengthwise of the cable (Col 3, lines 64-68).
The reasoning for modifying Janah with the Gustafsson is the same as stated above with respect to Thompson as Gustafsson also teaches a high voltage power cable utilizing an additional tape layer along with the plurality of semiconducting layers and insulation layers, again for the purpose of preventing water from migrating longitudinally in the interstices of the cable (Page 11, lines 20-21).
In light of the above stated comments, it is respectfully submitted that the 35 USC 102(a)(1) rejection and the 35 USC 103(a) rejections cited above are proper and just.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
June 25, 2026
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