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: (i) in figure 1, both the numerical label (10) used in to designate the machine line and the numerical label (14) used to designate either the cooling station or the annealing and cooling station in the specification page 6 for example appears to be pointing to the same feature (i.e., enclosed region shown in figure 1 as a square enclosure); (ii) in figure 1 the numerical label (26) appears to be enclosed within the feature designated by the numerical label (14), however in the specification page 6 for example, both labels are used to designate annealing and cooling station. 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 also objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Claim recite a chiller downstream of said annealing means, however shows an annealer and cooling station as a composite structure designated by the numerical label 26, which appears contrary to said recitation in the claim. Therefore, the chiller must be shown to be disposed downstream of the annealing means as recited in the claim 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.
Specification
The disclosure is objected to because of the following informalities: in the specification page 6, the annealing and cooling station has been designated by the both label “14” and “26” in page 6 of the specification, also see page 10 of the specification for the same designation. Appropriate correction is required.
Claim Interpretation
4. 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.
5. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the
following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional
language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1, lines 2-3 recites the limitation “supply means ……..for providing”.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the recited supply means is described in the specification page 6, line 1 for example as payoff system 12.
Claim 1, line 4 recites the limitation “speed control means ……..for adjusting controlling the speed and velocity”.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the recited speed control means in claim 1 is described in the specification page 5, line 6-10 and page 10 -page 11 for example as the dancer (30).
Claim 8, line 2 recites the limitation “forming means……..for forming”.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the recited means in claim 4 is described in the specification page 6 for example as rollers 18 and 22.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “annealing means……..for annealing” in claim 1, lines 3-4; and “dancer means …….. for adjusting and matching speed” in claims 1, lines 5-6.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,712,501, Marshall) in view of Sharpe et al. (US Pub. No. 2005/0040276). The patentable claim 1, recites substantially all the limitations of the instant claim 1, to include: a plurality of strands along a continuous line comprising supply means at a beginning of said line for providing a plurality of strands that have been work hardened; annealing means downstream of said supply means along said line with said supply means for annealing said strands; a chiller downstream of said annealing means along said line with said annealing means for actively cooling annealed strands output from said annealing means to a predetermined temperature that is approximately equal to ambient temperature that allows the strands to be stranded at said predetermined temperature; a strander downstream of said chiller along said line with said annealing means and said chiller for imparting at least one twist to the annealed and cooled strands; speed control means in line between said chiller and said strander for adjusting and controlling the speed or velocity of the strands moving along said line to be compatible with the take up speed of said strander, said supply means, annealing means, chiller and said strander being arranged in tandem along said line for uninterrupted continuous operation.
The patented claim 1, does not recite a dancer for adjusting and matching speeds or throughputs of the strands. However, Sharpe et al. teaches a known cable forming apparatus for twisting a plurality of strands (4) to produce the cable, the apparatus comprising at least a payoff reel (6, see Sharpe et al. , figure 1 and para [0002]-[0003]) for supplying the plurality of strands (4) a dancer (8, see Sharpe et al., para [0002]) for maintaining constant tension to the plurality of strands by adjusting and matching speeds or throughputs of the strands that is disposed between the upstream payoff reel and a downstream coiling reel (10, see Sharpe et al. , figure 1 and para [0002]-[0003]) . It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the patented claim 1 to include dancer as exemplified by Sharpe et al. and that would provide the benefit of ensuring that at least the constant tension is maintained and as a result a speed of the strands at the output of the payoff is matched to the intake speed of the annealing unit or annealer or downstream device/process unit thereof.
The patented claims 2-10 are substantially identical to the corresponding claims 2-10 of the instant application.
Allowable Subject Matter
8. Claims 1-10 would be allowable if a proper terminal disclaimer is filed to obviate the double patenting rejection presented above.
9. The following is a statement of reasons for the indication of allowable subject matter: none of the cited prior art either considered individually or as combined teach and/or fairly suggest an apparatus for continuous uninterrupted production of twisted or stranded conductors that comprises at least a dancer between a plurality of strand supply means and an annealing unit for adjusting and matching speeds or throughputs of the strands from said supply means and into said annealing unit, speed control means in line between a chiller and a strander for adjusting and controlling the speed or velocity of the strands emanating from the supply means and being taken up by the annealing unit along the line to be compatible with the take up speed of the strander; and other claimed features.
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gentry (US 5,554,826), Varga-Papp (US 4,599,853), Sun et al. (US 6,045,632), Blackmore et al. (US 6,948,304), Nishijima et al. (US 5,118,278), Blackmore et al. (US 6,840,031) and Uchiyama et al. (US 10,468,154) are also cited in PTO-892.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ABOAGYE whose telephone number is (571)272-8165. The examiner can normally be reached 8:30AM-5:00PM.
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, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A/Examiner, Art Unit 1733
/JESSEE R ROE/Primary Examiner, Art Unit 1759
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