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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art document(s) submitted by applicant in the Information Disclosure Statement filed on 07/22/2024 have all been considered and made of record (Note the attached copy of form PTO-892).
Inventorship
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 Objections
Claims 3, 5, 7, 9, and 11 are objected to because of the following informalities:
Claims 3 and 7: “the other portion” should instead state “another portion” (Claim 3, line 7 and claim 7, line 4)
Claim 5: “the second mounting portion” should instead state “a second mounting portion” (line 3)
Claim 9: “the package for an optical fiber according claim 1” should instead state “the package for an optical fiber according to claim 1”
Claim 11: “the shaft part” should instead state “the shaft
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
Para. 26: “the shaft part” should instead state “the shaft
Para. 109: “the shaft part” should instead state “the shaft
Appropriate correction is required.
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 1-9 and 11 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, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “configured to mount an optical fiber”, and the claim also recites “the connector of the optical fiber is mounted” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This uncertainty applies to both the optical fiber and the connector. The examiner is interpreting claim 1 to read more broadly as aligns with the preamble, that is:
“a first mounting portion to which the connector of the optical fiber is mounted” is interpreted as “a first mounting portion configured to mount the connector of the optical fiber”
“wherein the plurality of protrusions are configured such that the optical fiber is wound along a part of an outer periphery of each of the plurality of protrusions” is interpreted as “wherein the plurality of protrusions are configured to have the optical fiber wound along a part of an outer periphery of each of the plurality of protrusions”
“the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the base or the optical fiber” is interpreted as “the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the base or is configured to be locked to the optical fiber”
Claims 2-9 and 11 are rejected due to their ultimate dependency on base claim 1.
Regarding claim 4, a similar issue exists:
“the locking portion locks the first mounting portion to the optical fiber by being inserted between a part of the optical fiber…”is interpreted as “the locking portion is configured to lock
Regarding claim 4, the limitation "the other part of the optical fiber" in line 4 is unclear. There is insufficient antecedent basis for this limitation in the claim. Since the other part of the optical fiber is not specified, the examiner is interpreting any other part (“another part”) of the optical fiber as “the other part”.
Regarding claim 8, the limitation “wherein the first mounting portion is integrally molded with the base, and is easily separable” is unclear. What is easily separable? From what is it easily separable? The specification suggests that the claim means the first mounting portion is easily separable from the base (see Para. 36), but the claim itself does not say this and the comma adds some confusion with regards to what is easily separable. Give the broadest reasonable interpretation, the examiner is interpreting the claims as the first mounting being easily separable in any way and with any means (e.g., a plastic first mounting portion may be separable into multiple pieces with a hammer). Further, “easily” is a relative term which renders the claim indefinite. The term “easily” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Note that a manufacturing robot may have an “easier” time separating than a human manufacturer. Also note Para. 37 which discusses an applied force for separating, but does not provide a value or range.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2, the limitation “the locking portion is provided such that the first mounting portion is locked to the outer peripheral edge of the base” fails to further limit claim 1 in the state where the “the locking portion is provided such that the first mounting portion is locked to the outer peripheral edge of the base” (instead of the state where the first mounting portion is locked to the optical fiber, wherein claim 2 would make the structure require both locking to the base and locking to the optical fiber as defined thus constituting a further limitation). Claim 3 is rejected due to dependency on claim 2.
Regarding claim 9, the limitation “the first mounting portion is locked to the outer peripheral edge of the base or the optical fiber wound around the plurality of protrusions” creates the following possibilities (claim 1 limitation choice followed by claim 9 limitation choice):
“the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the base” AND “the first mounting portion is locked to the outer peripheral edge of the base”
“the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the base” AND “the first mounting portion is locked to the optical fiber wound around the plurality of protrusions”
“the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the optical fiber” AND “the first mounting portion is locked to the outer peripheral edge of the base”
“the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the optical fiber” AND “the first mounting portion is locked to the optical fiber wound around the plurality of protrusions” (claim 1 also includes “the optical fiber can be wound along a part of an outer periphery of each of the plurality of protrusions”)
The first scenario and the fourth scenario provide two instances where the limitation of claim 9 fails to further limit the limitation(s) of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haile-Mariam US 20170285286 A1 (hereinafter "Haile-Mariam").
Regarding claim 1, Haile-Mariam discloses a package for an optical fiber configured to house an optical fiber having a connector mounted to at least one end of the optical fiber (assembly 100 for deploying fiber optic cable is interpreted as a package for an optical fiber capable of housing an optical fiber having a connector mounted to at least one end of the optical fiber; see Fig. 8), the package comprising:
a base having a flat surface (the cylindrical drum 130 is interpreted as the base and has a flat surface on top as shown in Fig. 4);
a plurality of protrusions protruding from the flat surface of the base and arranged along an outer periphery of the base (tabs 132 are interpreted as a plurality of protrusions protruding from the flat surface of the interpreted base 130 and arranged along an outer periphery of the interpreted base 130);
a first mounting portion to which the connector of the optical fiber can be mounted (connector holder 142 is interpreted as a first mounting portion to which the connector of the optical fiber is mounted; see Para. 76 where the connector holder can be used to hold a connector); and
a plurality of falling-off prevention portions configured to regulate a position of the optical fiber (tabs 134 are interpreted as a plurality of falling-off prevention portions configured to regulate a position of the optical fiber),
wherein the plurality of protrusions are configured such that the optical fiber can be wound along a part of an outer periphery of each of the plurality of protrusions (tabs 132 are configured such that the optical fiber is wound along the inner part of the outer periphery of each of 132), and
the first mounting portion includes a locking portion provided such that the first mounting portion is locked to an outer peripheral edge of the base or the optical fiber (142 includes retaining prong 200 interpreted as a locking portion provided such that 142 is locked to an outer peripheral edge of the base; 200 can be locked into 142 into the flat top surface of cylindrical drum 130; see Para. 81; see Fig. 8 which shows the locked state).
Regarding claim 2, Haile-Mariam discloses the package for an optical fiber according to claim 1, wherein
the locking portion is provided such that the first mounting portion is locked to the outer peripheral edge of the base,
the first mounting portion includes a first connector fixing portion for fixing the connector (142 includes prongs 196 and housing 194 which together are interpreted as the first connector fixing portion for fixing the connector), and
the first connector fixing portion has a C-shaped cross section (prongs 196 and housing 194 which together are interpreted as the first connector fixing portion having a C-shaped cross section as shown in Fig. 9) and is configured to mount the connector in a space connected to an opening (the combination of 196 and 194 is capable of mounting a connector in its space when installed and thus connected to the opening 140; as shown in Fig. 4 and Fig. 8).
Regarding claim 3, Haile-Mariam discloses the package for an optical fiber according to claim 2, wherein
the first mounting portion (142) includes
two or more locking portions (142 includes two retaining prongs 200; see Fig. 9), and
the first mounting portion further includes the first connector fixing portion for fixing a rear end of the connector (142 further includes prong 196 and housing 194 which together are interpreted as the first connector fixing portion for fixing the rear end of the connector; the rear end is interpreted as the end of the connector closest to prong 200; see Fig. 9 and as used in Fig. 8), and
a second connector fixing portion for fixing another portion of the connector different from the rear end (a different prong 196 is interpreted as the second connector fixing portion for fixing another portion of the connector different from the rear end; see Annotated Fig. 9).
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Annotated Figure 9
Regarding claim 4, Haile-Mariam discloses the package for an optical fiber according to claim 1, wherein
the locking portion (200) locks the first mounting portion to the optical fiber by being inserted
between a part of the optical fiber wound around the plurality of protrusions and another part of the optical fiber (see Annotated Fig. 8-1), or
between the optical fiber and the base (see Annotated Fig. 8-2).
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Annotated Figure 8-1
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Annotated Figure 8-2
Regarding claim 5, Haile-Mariam discloses the package for an optical fiber according to claim 1, further comprising:
a second mounting portion different from the first mounting portion (fan out retaining structure 144 includes a pair of retaining prongs 146; 144 is interpreted as a second mounting portion different from 142),
wherein the second mounting portion is constituted by a pair of gripping portions (146) positioned closer to a center of the base than the plurality of protrusions (146 is closer to the center of 130 than 132), the pair of gripping portions protruding from the flat surface of the base (see Fig. 4) and being arranged to face each other in a first direction that intersects a direction in which the pair of gripping portions protrude from the flat surface of the base (the direction in which 146 faces 146 is interpreted as the first direction and it is perpendicular and thus intersecting the direction in which 146 protrude from the top flat surface of 130).
Regarding claim 6, Haile-Mariam discloses the package for an optical fiber according to claim 1, further comprising:
a rib protruding from the flat surface of the base and provided along the outer peripheral edge of the base (cable guide 148 is interpreted as a rib protruding from the top flat surface of 130 and is provided along the outer peripheral edge of 130 since it is far from the center; see Fig. 4).
Regarding claim 7, Haile-Mariam discloses the package for an optical fiber according to claim 1, wherein a portion corresponding to each of the plurality of protrusions on the outer periphery of the base extends toward an outer side than another portion on the outer periphery of the base (see Annotated Fig. 6).
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Annotated Figure 6
Regarding claim 8, Haile-Mariam discloses the package for an optical fiber according to claim 1, wherein the first mounting portion is easily separable from the base (142 is interpreted as easily separable from 130 since the prongs may be pushed in to help release 142 from 130), but fails to teach that 142 is integrally molded with 130.
The examiner notes that applicant is claiming the product (package for an optical fiber) including the process of making the product (integrally molding the first mounting portion and the base), and therefor claim 8 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thrope, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP §2113.
Regarding claim 9, Haile-Mariam discloses a package product, comprising:
an optical fiber having a connector mounted to at least one end of the optical fiber (see Fig. 8); and
the package for an optical fiber according to claim 1,
wherein
the optical fiber is housed in the package for an optical fiber (see Fig. 8),
the connector is mounted to the first mounting portion (see Fig. 8), and
the first mounting portion is locked to the outer peripheral edge of the base or the optical fiber wound around the plurality of protrusions (142 includes retaining prong 200 interpreted as a locking portion provided such that 142 is locked to an outer peripheral edge of the base; 200 can be locked into 142 into the flat top surface of cylindrical drum 130; see Para. 81; see Fig. 8 which shows the locked state).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haile-Mariam US 20170285286 A1 (hereinafter "Haile-Mariam").
Regarding claim 10, Haile-Mariam discloses an optical fiber lead-out method for leading out an optical fiber having a connector mounted to at least one end of the optical fiber from a package product around which the optical fiber is wound and in which the connector is locked in a vicinity of an outer periphery of a package (see Fig. 8; see Para. 64-67 and 146), the method comprising:
a step of removing the connector of the optical fiber from each of a plurality of the package products (Para. 98 discloses that 104, see Fig. 7, can be stackable in series; since 108 rotates in 104, see Para. 97, then each 104 requires a 108; since a stack implies at least two components stacked on each other, then a plurality of package products is necessarily present; in order to pay out the fiber per Para. 146, the connector must necessarily be removed from each of the plurality of interpreted package products);
a step of stacking the plurality of package products and attaching the stacked package products to a rotatable fixture (in order to have a stack, stacking would have necessarily occurred; see Fig. 26 where package product(s) are attached to a second spool which is interpreted as a rotatable fixture); and
a step of collectively pulling the connectors respectively removed from the plurality of package products attached to the fixture or a part of the optical fibers connected to the connectors (see Para. 64-67 and 146).
Haile-Mariam does not make it clear if collectively pulling the connectors or fibers is ever used.
However, a person having ordinary skill in the art at the time of the effective filing date would have desired to pay out any number of optical fibers or optical connectors that have a same or shared path in order to avoid paying out the same path repeatedly, thus saving time and energy and resulting in increased efficiency. As the only two options are to pay out one fiber/connector or more than one fiber/connector, a person having ordinary skill in the art would have found it obvious to try paying out multiple collectively for the purposes stated above. See MPEP 2143(I)(E).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haile-Mariam US 20170285286 A1 (hereinafter "Haile-Mariam") in view of Kohn et al. in US 20210261370 A1 (hereinafter "Kohn").
Regarding claim 11, Haile-Mariam discloses an optical fiber lead-out method for leading out an optical fiber using a fixture from a package product (see Fig. 8; see Para. 64-67 and 146), the package product being a package product in which an optical fiber having a connector mounted to at least one end of the optical fiber is wound around the package for an optical fiber according to claim 1, and in the package product, the connector being locked to the outer peripheral edge of the base or the optical fiber wound around the plurality of protrusions, wherein
the method comprises:
a step of removing the connector of the optical fiber from each of a plurality of the package products (Para. 98 discloses that 104, see Fig. 7, can be stackable in series; since 108 rotates in 104, see Para. 97, then each 104 requires a 108; since a stack implies at least two components stacked on each other, then a plurality of package products is necessarily present; in order to pay out the fiber per Para. 146, the connector must necessarily be removed from each of the plurality of interpreted package products);
a step of stacking the plurality of package products and attaching the stacked package products to a rotatable fixture (in order to have a stack, stacking would have necessarily occurred; see Fig. 26 where package product(s) are attached to a second spool which is interpreted as a rotatable fixture); and
a step of collectively pulling the connectors respectively removed from the plurality of package products attached to the fixture or a part of the optical fibers connected to the connectors (see Para. 64-67 and 146).
Haile-Mariam does not make it clear if collectively pulling the connectors or fibers is ever used.
However, a person having ordinary skill in the art at the time of the effective filing date would have desired to pay out any number of optical fibers or optical connectors that have a same or shared path in order to avoid paying out the same path repeatedly, thus saving time and energy and resulting in increased efficiency. As the only two options are to pay out one fiber/connector or more than one fiber/connector, a person having ordinary skill in the art would have found it obvious to try paying out multiple collectively for the purposes stated above. See MPEP 2143(I)(E).
Haile-Mariam also teaches that:
the fixture includes
a shaft to which the package is attached (handle 193 is interpreted as the shaft and is attached to assembly 100 which is interpreted as the package),
a support portion provided on the shaft (second spool 183 is interpreted as a support portion for the package 100 and 183 is provided on handle 193 which is interpreted as the shaft) and having a placement surface that allows placement of the package (flange 191 is interpreted as a placement surface that allows placement of the package 100; see Fig. 26),
a gripped portion configured to rotatably support the shaft (operating portion is interpreted as the gripped portion since it may be gripped with a hand and is capable of rotatably supporting 193; see Fig. 26).
However, Haile-Mariam teaches a contact portion provided at an end of the shaft and having a contact surface that comes into contact with the gripped portion (the dark gray unlabeled ring present in Fig. 25 is interpreted as the contact portion provided at an end of 193, which is not the end with 100, and having a contact surface that perpetually comes into contact with the gripped portion), but fails to provide an instance wherein the shaft can be displaced in a rotational direction with respect to the gripped portion since it is unknown whether the part is affixed, integrally molded, or capable of rotating freely about 193.
However, a person having ordinary skill in the art before the effective filing date would have recognized that rotation of the spool and/or the gripped portion about the main shaft increases the ease of handling and comfort of the operator and would have recognized that alternative dispenser handles may be implemented.
Kohn teaches a dispenser with a freely rotating gripped portion (40, see Fig. 2B) and a contact portion (42; see Fig. 2B) provided at the end of a shaft (30; see Fig. 2A) and having a contact surface that comes into contact with the gripped portion (necessarily present surface touching the gripped portion when installed) when the shaft is displaced in a rotational axis direction with respect to the gripped portion (30 may be displaced in a rotational axis direction with respect to 40 while the necessarily present contact surface of 42 remains in contact with 40).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the alternative handle arrangement of Kohn in the fixture of Haile-Mariam for the purpose of providing a shaft that is capable of being displaced in a rotational axis direction with respect to the gripped portion thereby achieving increased operator efficiency and comfort, and one of ordinary skill could have combined the elements by known methods with no change in their respective functions to yield predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at (571) 272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARBY M. THOMASON/ Examiner, Art Unit 2874
/UYEN CHAU N LE/ Supervisory Patent Examiner, Art Unit 2874
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