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 .
Election/Restrictions
Applicant's election with traverse of Invention I in the reply filed on August 4, 2026 is acknowledged. The traversal is on the ground(s) that the claims of Invention II and III (specifically, claims 12 and 13) have been amended such that each of claims 1 – 15 are directed towards Invention I. Examiner finds the argument persuasive and agrees that each of claims 1 – 15 are directed towards elected Invention I.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
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:
“pulling device” recited in claims 1, 10, and 13
“coupling unit” recited in claims 1 and 13
“coupling element [of the coupling unit]” recited in claims 3 and 5
“coupling element [of the pulling device]” recited in claims 5 and 12
“connecting element” recited in claim 5
“control and/or regulating unit” recited in claim 7
“receiving unit” recited in claim 11
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.
The limitation “pulling device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“device”).
(B) The generic placeholder is modified by functional language (“pulling” or ‘configured for pulling’ and “configured to retract cables into conduits”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “coupling unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“coupling” or ‘configured for coupling and “configured to detachably couple to the pulling device so as to enable a pulling device change”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “coupling element [of the coupling unit]” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“element”).
(B) The generic placeholder is modified by functional language (“coupling” or ‘configured for coupling’ and “configured to couple with the pulling device or with a coupling element of the pulling device”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “coupling element [of the coupling unit]” will be interpreted so as to comprise ‘a coupling ring,’ as taught by the Specification (paragraph 37), or an equivalent thereof.
The limitation “coupling element [of the pulling device]” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“element”).
(B) The generic placeholder is modified by functional language (“coupling” or ‘configured for coupling’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “connecting element” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“element”).
(B) The generic placeholder is modified by functional language (“connecting” or ‘configured for connecting’ and “configured to arrange the coupling element on the pulling device storage unit and/or the transport unit”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “control and/or regulating unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“configured to at least control the transport unit to execute the coupling mode and/or the coupling unit to establish or release the coupling with the pulling device”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “control and/or regulating unit” will be interpreted so as to comprise ‘a processing unit comprising a memory having an operating program and or a transmission module,’ as taught by the Specification (paragraph 11), or an equivalent thereof.
The limitation “receiving unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“receiving” or ‘configured for receiving and “adapted to deliver and/or receive directly upon unwinding and/or winding of the pulling device, in a coupling mode, the pulling device”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “receiving unit” will be interpreted so as to comprise ‘an external drum,’ as taught by the Specification (paragraph 28), or an equivalent thereof.
Claim Rejections - 35 USC § 112
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 – 15 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.
Claim 7 recites the limitation “the coupling with the pulling device.” There is insufficient antecedent basis for the limitation in the claim.
Claim 10 recites the limitation “at least one pulling device.” It is unclear as to whether Applicant intends the limitation to refer to the ‘pulling device’ previously set forth in claim 1, or whether Applicant intends to set forth a ‘pulling device’ which is separate and independent from the ‘pulling device’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the ‘pulling device’ previously set forth in claim 1.
Claim 13 recites the limitation “a plurality of pulling devices.” It is unclear as to whether Applicant intends to limitation to refer to the ‘at least one pulling device’ previously set forth, or whether Applicant intends to set forth a second set of ‘pulling devices’ which are separate and independent from the ‘at least one pulling device’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “a plurality of the pulling devices.”
As explained above, each of the claim limitations “pulling device,” “coupling unit,” “coupling element [of the pulling device],” and “connecting element” invokes 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 the entire claimed function and to clearly link the structure, material, or acts to the function. Regarding the limitation “pulling device,” Examiner recognizes that the Specification teaches the ‘pulling device’ comprising ‘a pulling means head, a pulling means cable, and a coupling element’ (paragraphs 27 and 50). However, it is further the position of the Examiner that the element “coupling element” also invokes interpretation under 35 U.S.C. 112(f). This is because “coupling element” uses a generic placeholder (“element”), is defined by functional language (“coupling” or ‘configured for coupling’ and “for coupling [the pulling means] to a coupling unit of the cable feeding device,” paragraph 50), and the claim does not define structure for performing the claimed function. However, the Specification does not teach the structure required for the ‘coupling element’ to perform the claimed function. Therefore, the Specification does not teach sufficient structure for the “pulling device” to perform the claimed function. Regarding the limitation “coupling unit,” Examiner recognizes that the Specification teaches the ‘coupling unit’ comprising ‘a coupling element comprising a coupling ring and a connecting element’ (paragraphs 37 – 40). However, it is further the position of the Examiner that the “connecting element” also invokes interpreting under 35 U.S.C. 112(f). This is because “connecting element” uses a generic placeholder (“element”), is defined by functional language (“connecting” or ‘for connecting’ and “configured to be windable” and “for pushing out the pulling means from the pulling means storage unit,” paragraph 16). However, the Specification does not teach the structure required for the ‘connecting element’ to perform the claimed function. Therefore, the Specification also does not teach sufficient structure for the “coupling unit” to perform the claimed function. Regarding the limitation “coupling element [of the pulling device],” the Specification clearly provides antecedent basis for the limitation (paragraph 50). However, the Specification does not teach the structure required for the “’coupling element of the pulling device’ to perform the claimed function. Regarding the limitation “connecting element,” the Specification clearly provides antecedent basis for the limitation and the limitation performing the claimed function (paragraphs 37 – 40). However, the Specification does not teach the structure required for the ‘connecting element’ to perform the claimed function. 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.
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 – 15 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.
As explained above, each of the limitations “pulling device,” “coupling unit,” “coupling element [of the pulling device],” and “connecting element” invoke interpretation under 35 U.S.C. 112(f). As further explained above, the Specification does not teach the structure required for each of the limitations to perform their respective claimed functions. Therefore, the limitations are not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 102
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 – 10 and 12 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Atencio (U.S. Patent Number 6,722,603).
As to claim 1, Atencio teaches a cable feeding device (abstract), comprising: a transport unit, configured to transport a pulling device configured to retract cables into conduit, having a pulling device storage unit configured as a pulling drum (figures 1 – 3, elements 20, 40, and 50 being the ‘transport unit,’ ‘pulling device storage unit,’ and ‘pulling drum’; column 3, lines 12 – 33); and a coupling unit, comprising a coupling element and a connecting element, configured to detachably couple to the pulling device so as to enable a pulling device change (figures 1 and 3, elements 24 and 26 being the ‘coupling unit,’ element 26 being the ‘coupling element,’ and element 24 being the ‘connecting element’; column 12 – 23 and 42 – 50).
As to claim 2, the transport unit of Atencio is configured to provide a coupling mode wherein the coupling unit is provided for access sufficient to allow at least the pulling device change (figures 1 – 3, elements 20, 40, and 50).
As to claim 3, the transport unit of Atencio is configured to provide a coupling mode in which at least one coupling element of the coupling unit configured to couple with the pulling device is arranged outside of a pulling device enclosure formed by the pulling device storage unit (figures 1 – 3, elements 20, 40, 50, and 26).
As to claim 4, the transport unit of Atencio is configured to provide an operation mode (figures 1 – 3, elements 20, 40, and 50); and the coupling element of the coupling unit configured to couple with the pulling device is arranged within the pulling device enclosure formed by the pulling device storage unit in the operation mode (figures 1 – 3, elements 20, 40, 50, and 26).
As to claim 5, Atencio teaches that the coupling unit comprises a coupling element configured to couple with the pulling device (figures 1 – 3 and 11, element 26 being the ‘coupling element’; column 3, lines 43 – 50); and the coupling unit comprises at least one connecting element configured to arrange the coupling element on the pulling device storage unit and the transport unit (figures 1 – 3, element 24 being the ‘connecting element’; column 3, lines 43 – 50).
As to claim 6, Atencio teaches that the connecting element is configured to be windable and is provided for pushing the pulling device out of the pulling device storage unit (figures 1 – 3, elements 24, 20, 40, and 50; column 2, lines 21 – 24 and 31 – 33).
As to claim 7, Atencio teaches a control and/or regulating unit is configured to control the transport unit to execute the coupling mode (figure 9, elements 38 and 62 being the ‘control and/or regulating unit’; column 4, lines 27 – 61 and column 5, lines 5 – 20).
As to claim 8, Atencio teaches that the control and/or regulating unit comprises a communication interface configured to receive a communication signal from an external unit that triggers a communication signal from the coupling mode (figure 9, elements 30 and 64 being the ‘communication interface’ and element 38 and 62 being the ‘external unit’; column 4, line 27 – column 5, line 20).
As to claim 9, Atencio teaches that the control and/or regulating unit is restricted in access (figure 9, elements 38 and 62; column 4, line 27 – column 5, line 20).
As to claim 10, Atencio teaches a cable feeding device according to claim 1 (see rejection of claim 1 above); and a pulling device comprising a pulling means cable and coupling element (figures 10 and 11, elements 28 being the ‘coupling element’ and claim 29 being the ‘pulling means cable’; column 3, lines 43 – 55).
As to claim 12, Atencio teaches that the coupling element of the pulling device is configured to couple to the coupling unit of the cable feeding device (figures 10 and 11, element 28; column 3, lines 43 – 55).
As to claim 13, Atencio teaches that a plurality of the pulling devices (figures 10 and 11, elements 27 – 29; column 3, lines 43 – 55), wherein each of the plurality of pulling devices comprises a respective coupling element configured to couple to the coupling unit of the cable feeding device (figures 10 and 11, elements 27 - 29; column 3, lines 43 – 55), each of the plurality of pulling devices is defined by a respective set of properties (figures 10 and 11, elements 27 - 29; column 3, lines 43 – 55), and each of the respective set of properties are different from the other of the respective set of properties (figures 10 and 11, elements 27 - 29).
As to claim 14, Atencio teaches that each respective set of properties includes a respective property set of flexure rigidity, length, and cross section (figures 10 and 11, elements 27 – 29).
As to claim 15, Atencio taches that the pulling device is configured as a fish tape (figures 1 – 3, element 24 being the ‘fish tape’; column 3, lines 23 – 25); and the coupling unit is configured to directly coupling to the pulling device (figures 1 and 3, elements 24 and 26; column 12 – 23 and 42 – 50).
Claim Rejections - 35 USC § 103
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.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Atencio as applied to claim 10 above, and further in view of Pawar (U.S. Patent Application Publication Number 2019/0326735).
As to claim 10, Atencio teaches that the pulling device being coupled to a cable (figure 10, element 29; column 3, lines 5 – 7). However, Atencio does not teach the cable being attached to a receiving unit. Pawar teaches a system comprising: a cable feeding device (figure 1, element 10 being the ‘cable feeding device’; paragraph 12), and a cable which is coupled between the cable feeding device and a receiving unit (figure 1, element 12 being the ‘cable,’ see below; paragraph 12), wherein the receiving unit comprises an external drum (figure 1, see below).
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It would have been obvious to one skilled in the art to provide the cable of Atencio with the receiving unit of Pawar, because one skilled in the art would have appreciated that use of a receiving unit provides the benefit of ensuring that cable does not become tangled during winding or unwinding of the cable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gonsalves (U.S. Patent Application Publication Number 2019/0292009) teaches a cable feeding device comprising: a transport unit having a pulling device storage unit configured as a pulling drum; and a coupling unit configured to detachably couple to a pulling deice so as to enable a pulling device change.
Swift (U.S. Patent Number 7,150,448) teaches a cable feeding device comprising: a transport unit having a pulling device storage unit configured as a pulling drum; and a coupling unit configured to detachably couple to a pulling deice so as to enable a pulling device change.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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