DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 27 March 2026, which papers have been made of record.
Claims 1-13, 15-30, 32-40, and 42-47 are currently presented for examination, of which claims 16-17, 24-30, 32, and 34-39 have been withdrawn from consideration.
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
The information disclosure statement (IDS) submitted on 3 December 2025 was filed after the mailing date of the Office Action on 2 December 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 27 March 2026. These drawings are Accepted.
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 and 46-47 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.
Claim 1 has been amended to include a variant of previous claim 41’s limitation and presently recites “wherein the expanded metal joint does not extend to the first member first end and does not extend to the second member second end” at lines 11-13. The Specification as filed does not appear to fairly provide support for this negative limitation. Applicant’s Response at page 13 states that “an end-to-end joint (e.g. which may take on a variety of end-to-end configurations, but is currently claimed as an overlapping end-to-end joint) is a structural connection where the ends of two pieces of material (.e.g., such as wood, metal, plastic, pipe, etc.) are joined together” does not point to any particular Figure of Applicant’s Specification as filed as representing an end-to-end configuration, itself. Paragraph [0033] teaches only that “the overlap may be face-to-face, end-to-end, but-to-but, or any other overlap” but does not state that Figures 2A, 2B, and 2C illustrate an end-to-end joint rather than one of the other types of joints. Further, claim 1 now recites “the expanded metal joint does not extend to a first member first end and does not extend to the second member second end.” To the best of the examiner’s understanding, replacement Figure 2A is relied upon for allegedly teaching that the expanded metal joint does not extend to the first member first end and to the second member second end. Figure 2A illustrates a pre-expansion joint 240 (see paragraph [0039], not an expanded metal joint, and while the examiner agrees that the drawings appear to show that the pre-expansion joint 240 does not extend to and past the first end (210a) and to and past the second end (220b) in the replacement Figures, Applicant’s Specification as filed teaches that “[t]he drawn figures are not necessarily to scale. Certain features of the disclosure may be shown exaggerated in scale or in somewhat schematic forma nd some details of certain elements may not be shown in the interest of clarity or conciseness” (see paragraph [0008]). Both Figures 2B and 2C appear to illustrate expanded metal joints (250 and 260) which extend to and past the first end of the first member and the second end of the second member.
It appears that Applicant could find support for a limitation such as “a pre-expansion metal joint having a pre-expansion metal joint length, the pre-expansion metal joint positioned such that the pre-expansion metal joint length is located between the distance between the first member first end and the second member second end” or “a pre-expansion metal joint having a pre-expansion metal joint first end and an opposed, second pre-expansion metal joint second end, the pre-expansion metal joint being positioned such that there is a first gap between the pre-expansion metal joint first end and the first member first end and a second gap between the pre-expansion metal joint second end and the second member second end, the length between the first member first end and the second member second end being equal to the sum of the length of the pre-expansion metal joint, the first gap, and the second gap.” The examiner does not suggest that such limitation would be found allowable at this time.
Claim 46 recites “wherein the expanded metal joint comprises a non-conductive metal oxide” at lines 1-2 and claim 47 recites “wherein the expanded metal joint comprises a non-conductive metal oxide” at lines 7-8. The term “non-conductive” is not recited in the Specification as filed. While paragraph [0026] recites “the metal, pre-expansion, is electrically conductive in certain embodiments” there is no specific support found for the negative limitations recited in claims 46 and 47. Because the term “non-conductive” can mean at least “electrically non-conductive” or “thermally non-conductive” Applicant’s claimed language presents limitations not finding support originally finding support in the Specification as originally filed. Applicant’s assertion that “the Application provides examples of certain embodiments of the metal oxides, all of which are electrically non-conductive” does not fairly provide notice to one hypothetically reviewing a hypothetically issued patent from the instant Application as to the boundaries of Applicant’s invention, nor clarify what was possessed by Applicant at the time of filing. Merely asserting that “certain embodiments of the metal oxides” are non-conductive does not rise to the level of evidence that the listed oxides are, in fact, electrically non-conductive. Even if it were, Applicant cannot provide support for the term “non-conductive” where the Specification as originally filed only recites that “the metal, pre-expansion, is electrically conductive in certain embodiments” (see Instant Specification at paragraph [0026]).
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 1-13, 15, 18-23, 33, 40-41, and 43-47 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 1 recites “wherein the expanded metal joint does not extend to the first member first end or the second member second end” at lines 11-13. It appears that there are multiple possible interpretations of the claim limitation. The limitations could mean that the expanded metal joint does not contact or extend to and include or contact both the first member first end and the second member second end; the expanded metal does not approach, not necessarily requiring contacting, both the first member first end and the second member second end; the expanded metal does not contact one of the first member first end end and the second member second end (such that contacting one such end but not both reads on the claim); or that the expanded metal does not approach, not necessarily requiring contacting, at least one of the first member first end and the second member second end. It may also be possible to interpret the claim as allowing an expanded metal joint that extends in a length or axial direction past the first member first end and past the second member second end, such that the expanded metal joint does extend to the respective ends. A review of the Specification does not appear to use the phrasing of the claim, and does not appear to provide sufficient guidance as to how to interpret the claim.
Each of claims 2-13, 15, 18-23, 33, 40-41, and 43-46 depend from claim 1, and therefore are rejected for at least the reasons presented above with respect to claim 1.
Claim 46 recites “wherein the expanded metal joint comprises a non-conductive metal oxide” at lines 1-2 and claim 47 recites “wherein the expanded metal joint comprises a non-conductive metal oxide” at lines 7-8. The term “non-conductive” is not recited. While paragraph [0026] of the present disclosure recites “the metal, pre-expansion, is electrically conductive in certain embodiments” the Specification is not understood to teach metal oxides that are non-conductive. Further, to the best of the examiner’s understanding, there are conductivity can refer to at least electrical conductivity and thermal conductivity. The claims do not clarify which type of non-conductivity is being recited, nor does the Specification appear to provide sufficient clarity regarding the negative limitations in claims 46 and 47.
Response to Arguments
Specification
Applicant’s arguments, see Response, filed 27 March 2026, with respect to Objections to the Specification have been fully considered and are persuasive. The Objection of 2 December 2025 has been withdrawn.
Claim Objections
Applicant’s arguments, see Response, filed 27 March 2026, with respect to Objections of claims 19-21 have been fully considered and are persuasive. The Objection of 2 December 2025 has been withdrawn.
Claim Rejections - 35 USC § 112
Applicant's arguments filed 27 March 2026 have been fully considered but they are not persuasive.
Claims 41, 42, 46, and 47 were previously rejected under 35 USC 112(a) or 25 USC 112, first paragraph as failing to comply with the written description requirement.
Applicant canceled claim 41, and incorporated the subject matter thereof into claim 1.
Claim 1 has been amended to include a variant of previous claim 41’s limitation and presently recites “wherein the expanded metal joint does not extend to the first member first end and does not extend to the second member second end” at lines 11-13. The Specification as filed does not appear to fairly provide support for this negative limitation.
To the best of the examiner’s understanding, replacement Figure 2A is relied upon for allegedly teaching that the expanded metal joint does not extend to the first member first end and to the second member second end. Figure 2A illustrates a pre-expansion joint 240 (see paragraph [0039], not an expanded metal joint, and while the examiner agrees that the drawings appear to show that the pre-expansion joint 240 does not extend to and past the first end (210a) and to and past the second end (220b) in the replacement Figures, Applicant’s Specification as filed teaches that “[t]he drawn figures are not necessarily to scale. Certain features of the disclosure may be shown exaggerated in scale or in somewhat schematic forma nd some details of certain elements may not be shown in the interest of clarity or conciseness” (see paragraph [0008]). Both Figures 2B and 2C appear to illustrate expanded metal joints (250 and 260) which extend to and past the first end of the first member and the second end of the second member. Despite forceful assertions by Applicant, there does not appear to be support for the previous limitation of claim 41 nor the amended limitations of claim 1 in the Specification as originally filed.
Applicant asserts that claim 42 has been amended to address its rejection.
Applicant has stricken the phrase “fluid tight” from the claim.
Regarding claims 46 and 47, Applicant asserts that “those skilled in the art would fully understand and appreciate that metal oxides, by nature, are electrically non-conductive.”
The examiner respectfully disagrees. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant’s assertion that metal oxides are electrically non-conductive is not supported by any evidence of record.
The term “non-conductive” is not recited in the Specification as filed. While paragraph [0026] recites “the metal, pre-expansion, is electrically conductive in certain embodiments” there is no specific support found for the negative limitations recited in claims 46 and 47. The word “conductive” appears to be present only in two paragraphs in the Specification, neither of which recite any metal oxides or oxides (see paragraphs [0014] and [0026]). Further, because the term “non-conductive” can mean at least “electrically non-conductive” or “thermally non-conductive” Applicant’s claimed language presents limitations not finding support originally finding support in the Specification as originally filed. Applicant’s assertion that “the Application provides examples of certain embodiments of the metal oxides, all of which are electrically non-conductive” does not fairly provide notice to one hypothetically reviewing a hypothetically issued patent from the instant Application as to the boundaries of Applicant’s invention, nor clarify what was possessed by Applicant at the time of filing. Merely asserting that “certain embodiments of the metal oxides” are non-conductive does not rise to the level of evidence that any disclosed oxides are, in fact, electrically non-conductive. Even if it were, Applicant cannot provide support for the term “non-conductive” where the Specification as originally filed only recites that “the metal, pre-expansion, is electrically conductive in certain embodiments” (see Instant Specification at paragraph [0026]).
Even the statement from Applicant that “certain embodiments of the metal oxides, all of which are electrically non-conductive” lack evidentiary support. Even Applicant’s phrase “certain embodiments” (Response at page 12) suggests that there are other metal oxides which are not, in fact, electrically non-conductive.
Accordingly, the rejections of claims 46 and 47 are maintained.
Claim Rejections - 35 USC § 103
Applicant’s arguments, see Response, filed 27 March 2026, with respect to the rejection of claims 1-13, 15, 18-23, 33, 40-41, and 43-45 under 35 USC 103 have been fully considered and are persuasive. The Rejection of 2 December 2026 has been withdrawn.
Claims 1-13, 15, 18-23, 33, 40-41, and 43-45 were previously rejected over Duquette.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/D.C.F/Examiner, Art Unit 3726
/THOMAS J HONG/Supervisory Patent Examiner, Art Unit 3729
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