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 .
Information Disclosure Statement
No information disclosure statements filed have been submitted for consideration by the Office.
Applicants must continue to submit prior art references throughout the patent application process. A supplemental IDS must be submitted if prior art is discovered through a foreign patent application or an International Patent Search, or a related application before a prosecution closes.
Election/Restriction
Applicant’s election without traverse of Invention I, encompassing claims 1-16 in the reply filed on July 2, 2026 is acknowledged.
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 1-16 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.
Rejection of claim 1, term “an outer surface said tubular wall” is not clear. It appears to be an outer surface of said tubular wall.
Appropriate action is required.
Rejection of claim 4, the limitation “an outer surface of said tubular wall” lacks antecedent basis. It appears to be the outer surface of said tubular wall because claim 1 discloses same term an outer surface of said tubular wall.
Appropriate action is required.
Rejection of claims 2-3 and 5-16, claims 2-3 and 5-16 are rejected by the same reason applied to rejection of claims 1 or 4 above whichever apply.
Double Patenting
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.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No US12134360.
Rejection of claim 1, US12134360 discloses a protective member for a wire harness and electrical member fixed thereto, comprising: a tubular wall extending lengthwise between opposite open ends about a central axis; and a tubular braided wall having a first region fixed to said tubular wall and a second region detached from said tubular wall, wherein said second region is extendible about said central axis away from one of said opposite open ends of said tubular wall, wherein said first region extends along an outer surface said tubular wall and is fixed to a first portion of said tubular wall, said second region extends along a second portion of said tubular wall, in detached relation therefrom, wherein said second region of said tubular braided wall is axially extendible along said second portion of said tubular wall and axially beyond one of said opposite ends of said tubular wall (see claim 1 of US12134360).
Rejection of claims 2-16, the subject matters of claims 2-16 are covered by claims 2-14 of US12134360.
Note: rejection under USC 102 and 103 below is given to advance prosecution; however, proper amendment is required under specification and USC 112 above to consider rejection under USC 102 and 103 below.
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)(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) 1-3 and 13-16 are rejected under 35 U.S.C. 102(a)(1) or (a)(2)as being anticipated by Clement et al (US20210007251, hereinafter Clement).
Referring to claim 1, Clement discloses a protective member for a wire harness and electrical member fixed thereto (Figs. 3 or See fig. 4 in view of fig. 7 or 9; Para. [0113] regarding a shielding device for a connector and electric cables), comprising:
a tubular wall (protective sleeve 60, Fig. 3 or 4,) extending lengthwise between opposite open ends (left and right ends of protective sleeve 60; hollow connecting textile sleeve 60 ... connecting sleeve 60, Para. [0113], connecting sleeve is …braid, Para. 0068 ) about a central axis (longitudinal axis L1 ); and
a tubular braided wall (connecting sleeve 50, Fig. 3, hollow protective textile sleeve 50 ... protective sleeve 50, Para. [0113]) having a first region fixed to said tubular textile wall ((at region of connecting sleeve 50 at 80 fixed to protective sleeve 60, Fig. 3 or Fig. 4) and a second region (at left end of connecting sleeve 50) detached from said tubular textile wall (protective sleeve 60), wherein said second region (at left end of connecting sleeve 50) is extendible away said tubular textile wall (protective sleeve 60);
wherein said first region extends along an outer surface of said tubular wall and is fixed to a first portion of said tubular wall (see the first region of 50 fixed to a first part of tubular wall 50 at one end along an outer surface of said tubular wall), said second region extends along a second portion of said tubular wall, in detached relation therefrom (see the second region of 50 along second part of the said tubular wall 60), wherein said second region of said tubular braided wall is axially extendible along said second portion of said tubular wall and axially beyond one of said opposite ends of said tubular wall (see end of 50 go beyond entire 60).
Referring to Claim 2, Clement discloses the protective member of claim 1, wherein said first region is fixed to said tubular wall adjacent one of said opposite ends and said second region is axially extendible beyond the other of said opposite ends of said tubular wall (see the first region and portion of 50 beyond 60 as shown in the figures as well as explanation in the rejection of claim 1).
Referring to Claim 3, Clement discloses the protective member of claim 2, wherein said first region (region of connecting sleeve 50 and 60 at 80, Fig. 3 or 4) of said tubular braided wall is fixed against movement relative to said first portion of said tubular wall.
Referring to Claim 13-16, Clement discloses the protective member of claim 1, wherein said tubular wall is a textile wall. wherein said textile wall is a woven wall. wherein said woven wall; wherein said woven wall includes multifilaments and monofilaments. wherein said textile wall is a braided wall. (see paragraphs 0067-0068, 0072, and 0079).
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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Clement and Holt (US4868967, hereinafter Holt).
Referring to Claim 12, Clement discloses the protective member of claim 1, but fails to explicitly disclose wherein said tubular textile wall has an inner layer and an outer layer, said inner layer and said outer layer extending from one of said opposite open ends to the other of said opposite open ends.
Holt is in the art of a double-walled tube suitable for electrical protection (Col. 1, Lns. 13-17) and teaches wherein a tubular textile wall (wall of article 1, Fig. 1 A, the article 1 comprises an outer wall 2 and an inner wall 3, Col. 24, Lns. 7-8, walls may comprise a fabric, for example a braided, or woven or knitted tubular fabric, Col. 7, Lns. 62-65) has an inner layer (at inner wall 3) and an outer layer (at outer wall 2), said inner layer (at inner wall 3) and said outer layer (at outer wall 2) extending from one (left end of article 1) of opposite open ends (left and right ends of article 1) to another (right end of article 1) of said opposite open ends (left and right ends of article 1 ).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify said tubular textile wall of Clement to include wherein said tubular textile wall has an inner layer and an outer layer, said inner layer and said outer layer extending from one of said opposite open ends to the other of said opposite open ends as taught by Holt for the purpose of providing an article with a double-walled tubular structure with layers for insulating and thereby ensure that the article provides electrical properties selected for use in a high voltage environment (Holt, Col. 24, Lns. 7-33).
Pertinent Prior Arts
The prior arts made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent arts in the present case, all of which disclose wire protector assemblies.
Allowable Subject Matter
Claims 4-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Note that terminal disclaimer is required.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PARESH PAGHADAL whose telephone number is (571)272-5251. The examiner can normally be reached 7:00AM-4:00PM, Monday - Thursday.
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, Timothy Thompson can be reached on (571)272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PARESH PAGHADAL/Primary Examiner, Art Unit 2847
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