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 .
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 1-5, 8-14, 18, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/955,941. Claims 1-15 of copending Application No. 18/955,941 teaches a device and method for peeling a cable specimen comprising a plurality of rollers for holding a cable, a blade, a drive for rotating the cable and advancing the blade.
This is a provisional nonstatutory double patenting rejection.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “a drive unit 21” (page 11) as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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 objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a drive unit” in claims 1-3, 5, 7, 9, 10, 13, and 14, “a motor” of the drive unit in claims 3, 13, and 18, “a worm thread” in claims 5, 15, and 16, a marking device and a mark detecting device in claim 12, and six rollers of claim 17 must be shown 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: the Summary of the Invention of the Specification are objected to because they refer to specific claims 1 and 13 in the Claim section. It is to be noted that during the prosecution, the scope of the claims may change or some claims may be cancelled. Therefore, the specific claims 1 and 13 may not be relevant anymore. Appropriate correction is required.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-19 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.
Regarding claims 1 and 13, it is unclear how the drive unit rotates the cable.
Regarding claim 3, it is unclear where the motor of the drive unit for rotating the cable.
Regarding claims 5, it is unclear how the knife is fixed on the worm thread and how the worm thread moves the knife. It is unclear how the drive unit and the drift unit mechanically connected together.
Regarding claim 7, it is unclear how the drive unit could actuate the drift unit. Furthermore, the language of claim 7 is confusing.
Regarding claims 9 and 10, it is unclear how the drive unit could rotate the collector roll.
Regarding claim 12, it is unclear how a specimen is marked and how the mark is detected.
Regarding claim 14, it is unclear how the drive unit can transfer a force to the drift unit.
Regarding claim 15, it is unclear how the knife is fixed on the worm thread and how the worm thread moves the knife. It is unclear how the drive unit and the drift unit mechanically connected together.
Regarding claim 16, it is unclear how the knife is detachably fixed to the worm thread.
Regarding claim 17, it is unclear how the drift unit 15 are positioned between two sets of three rollers.
Regarding claims 18 and 19, it is unclear how the motor rotates the collector roll.
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.
Claims 1-4, 11, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (6,648,036).
Regarding claim 1, Watanabe teaches a method cable of being used for peeling a cable specimen, which method comprises the steps of
holding the cable specimen by at least three rollers (37, 38, 3) being arranged in a roller plane,
by a drive unit 40, causing rotation of the cable specimen,
by a drift unit (19b), moving a knife 2 along a path towards the rotation axis of the cable specimen, which path is outside the roller plane,
wherein the drive unit and the drift unit communicate with one another.
See Fig. 1.
Regarding claim 2, the drive unit and the drift unit are mounted on a machine frame and connected together with electric cables. Therefore, they are considered “mechanically communicate with one another”.
Regarding claim 3, the motor 40 causes the rotation of the workpiece.
Regarding claim 4, the drift unit (19b) causes the knife 2 moving towards the rotation axis of the workpiece.
Regarding claim 11, the knife can be stopped at any position and thus can be stopped before reaching the core of the cable.
Regarding claim 13, Watanabe teaches a device capable of being used for peeling a cable specimen, wherein the device comprises: at least three rollers (37, 38, 3) for holding the cable specimen which rollers are arranged in a roller plane, a drive 40 unit with a motor for causing rotation of the cable specimen, a drift unit (19b) comprising a knife 2, which drift unit enables moving a knife along a path towards the rotation axis of the cable specimen, which path is outside the roller plane, wherein a device unit (electric cables and controller) enables communication between the drive unit and the drift unit.
See Fig. 1.
Regarding claim 14, when the rollers (37, 38) pushes the workpiece against the knife carriage 7, a pushing force is transferred to the drift unit (19b).
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (6,648,036).
Watanabe teaches the invention substantially as claimed except for six rollers for supporting the cable.
It would have been obvious to one skilled in the art before the effective filling date of the claimed invention to provide six rollers for better supporting the cable since there are more supports around the circumference of the cable.
Allowable Subject Matter
Claims 8 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8 is allowable for setting forth the peeling device comprising a collector roll.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Veneer lathes of general interest are cited in form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG H NGUYEN whose telephone number is (571)272-4510. The examiner can normally be reached M-F: 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHONG H NGUYEN/Examiner, Art Unit 3724
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