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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Method for Shaving a Cable Jacket.
The disclosure is objected to because of the following informalities:
Paragraph [0001] needs to be amended to indicate 17/735,574 is now U.S. Patent 12,355,221 B2.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1 line 2, the phrase “providing cable shaving tool” should be replaced with “providing a cable shaving tool”.
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 1-10 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the blade support" on line 7. There is insufficient antecedent basis for this limitation in the claim. The phrase should be replaced with “the blade support surface”.
With regards to claim 1 line 7, the phrase “at a central axis of the cable shaving tool” is indefinite. Any line that can be drawn through any portion, that can be considered a center of the tool, can be considered a central axis of the tool. Further definition is needed so it is clear which axis is being referenced (i.e. longitudinal axis). Also, the term “at” is unclear as one item can be “at” another item and not engage. The “at” disclosure needs to be replaced with language saying the “longitudinal axis extends through the blade support surface”.
With regards to claim 1 line 15, the phrase “edge is set within the cable” is unclear. The preamble discloses the cable has a jacket and as written, the blade edge is set in the cable in a way unrelated to the jacket which is not supported. The phrase should be replaced with “edge is set within the jacket of the cable”.
With regards to claim 2, the phrase “is in a location having limited access” is indefinite. It is unclear what locations can and cannot be considered to have limited access. Further definition is needed so the limitation is clear.
Claim 4 recites the limitations "the blade" on line 4 and “the portion” on line 12. There is insufficient antecedent basis for these limitations in the claim.
With regards to claim 4, the “blade” disclosure is unclear. It is unclear what structure incorporates the blade. The handle is disclosed as part of the tool but the blade is not. As written, the blade could be any blade that can be under the user’s hand.
With regards to claim 4 line 8, the phrase “a blade edge” is unclear. As written, the blade edge is unrelated to the blade which is not supported. The blade needs to be associated with the blade edge.
With regards to claim 5, the phrase “accessing the cable within an enclosed junction box” is unclear. If the junction box is enclosed, how can the cable be accessed?
With regards to claim 10, the handle length disclosure is unclear. The handle has many different lengths and it is unclear which length is being referenced.
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.
Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mayer (11,167,439) in view of Kobayashi et al. (2020/0049885) and McCasland (5,887,346).
With regards to claims 4 and 6-9, Mayer discloses the invention including a method of shaving a workpiece with a jacket (Fig. 1, column 2 lines 55-56) including accessing the workpiece (Fig. 1), gripping a handle of a cable shaving tool (22), placing a portion of the workpiece (Figs. 1 and 2) within a guide channel of the tool (11) such that the workpiece is in contact with a control surface (surface defining 11 behind the opening 30 in Fig. 9) of the guide channel (Fig. 1), applying a force to the handle (22) such that a blade edge extending into the guide channel (Fig. 9) is set within the jacket to a predetermined depth being defined between the control surface and the blade edge (Fig. 9), drawing the tool along the length of the cable simultaneously with apply the force such that the blade edge shaves the portion of the jacket (Fig. 1), the guide channel has a first end with a cable channel (portion of 11 in front of and including opening 30 in Fig. 9) and a second end with the control surface (surface defining 11 behind the opening 30 in Fig. 9), the blade edge extending within the guide channel between the first and second ends (28, Fig. 9), allowing the portion of the jacket shaved by the blade edge to pass through a clearance area between the first and second ends (17), the portion of the jacket is a midspan portion of the workpiece (Fig. 1), and the portion of the jacket is an end of the workpiece (portion of 18 nearest the end of 14 in Fig. 1).
However, with regards to the claims, Mayer fails to disclose the workpiece is a cable with a jacket.
Kobayashi et al. teach it is known in the art of shaving tools to incorporate a cable with a jacket as the workpiece (title). Lines 1-3 of the abstract of Mayer discloses an intended workpiece and also discloses “or the like” with regards to the workpiece. One skilled in the art would consider a cable with a jacket to be able to represent the “or the like” option. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided Mayer with the cable having a jacket, as taught by Kobayashi et al., because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
However, with regards to the claims 4 and 10, Mayer fails to disclose the gripping the handle such that a user’s hand is over directly over the blade when the handle is held vertically, applying a force to the handle in a direction perpendicular to a length of the workpiece, and the handle has a length that extends in a direction perpendicular to the guide channel.
McCasland teaches it is known in the art of cutters with a guide channel (27), a blade edge extending into the guide channel (17, Fig. 4), and a handle (13) to incorporate gripping the handle such that a user’s hand is over directly over the blade when the handle is held vertically (Fig. 4), applying a force to the handle in a direction perpendicular to a length of the workpiece (Fig. 4), and the handle has a length that extends in a direction perpendicular to the guide channel (Fig. 4). It would have been within one’s technical skill to have made the overall handle extension in any reasonable direction including vertical as the tool of Mayer will still be able to cut/shave as intended. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided Mayer with the handle extension direction, as taught by McCasland, because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
However, with regards to the claim 5, Mayer in view of Kobayashi et al. and McCasland fail to disclose accessing the cable within an enclosed junction box.
It would have been well within one’s technical skill to have utilized the tool of modified Mayer in any reasonable location that would have cables to be cut/shaved including a junction box. Therefore, it would have been an obvious matter of design choice to modify the device of Mayer in view of Kobayashi et al. and McCasland to obtain the invention as specified in claim 5. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Allowable Subject Matter
Claims 1-3 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter: Method claim 1 positively claims all of the limitations of the independent apparatus claim that made the parent case allowable (U.S. Patent 12,355,221 B2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
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, Boyer D Ashley can be reached on (571)272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
14 September 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
Prosecution Insights