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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Reopening of Prosecution
In view of the appeal brief filed on 08/18/2025, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
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 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakakura (US 9,994,208 B2).
In regard to claim 1, Nakakura discloses an electrostatic discharge mitigation device (Fig. 4 shows a device capable of mitigating electrostatic discharge) comprising:
an electrically conductive insert (Fig. 4, member 18 is at least an insert to hose 10 and in 5:10-17 discloses 18 can be made of electrically conductive material) configured to be coupled to an electrically conductive tubing segment having an interior conductive stripe (Figs. 2 and 4, conductive tubing segment 10 which has an interior conductive stripe 14) and to an electrically conductive operative component (Fig. 4, the housing B1 defines an operative component having an electrically conductive part 20) so as to transfer static charge from the electrically conductive tubing segment to the electrically conductive operative component (Figs. 2 and 4, electrical conductivity travels from 14 to 20), the electrically conductive insert comprising a collar having a length, an inner surface, an outer surface (Fig. 4, 18 defines a collar that has at least a length in the axial direction and radial direction, an inner bore surface, and an outer surface in contact with tubing 10), and a ridge circumscribing the outer surface of the collar (Fig. 4, at 18b, there are a series of ridges circumscribing the outer surface of the collar in order to have an interference fit with the tubing 10), wherein the ridge has an outer diameter greater than an inner diameter of the electrically conductive tubing segment to which the electrically conductive insert is to be coupled so as to provide a frictional fit between the conductive insert and the electrically conductive tubing segment when the conductive insert is coupled with the electrically conductive tubing segment (Fig. 4, the ridge or ridges at 18b of 18 have an outer diameter greater than an inner diameter of the tubing 10 in order to have a frictional fit in order to grip against an interior of the tubing 10 to prevent unwanted disconnect).
In regard to claim 10, Nakakura discloses a fluid circuit (Fig. 4 shows at least a fluid circuit since there is at least a fluid flow through tubing 10) comprising:
an electrically conductive tubing segment, having an interior conductive stripe;
an electrically conductive operative component; and
an electrically conductive insert coupled to the electrically conductive tubing segment and to the electrically conductive operative component so as to transfer static charge from the electrically conductive tubing segment to the electrically conductive operative component,
wherein the electrically conductive insert includes a collar having a length, an inner surface, an outer surface, and a ridge circumscribing the outer surface of the collar, wherein the ridge has an outer diameter greater than an inner diameter of the electrically conductive tubing segment to which the electrically conductive insert coupled so as to provide a frictional fit between the conductive insert and the electrically conductive tubing segment (See claim 1 above for the same limitations of “an electrically conductive tubing segment…a frictional fit between the conductive insert and the electrically conductive tubing segment”), and
wherein the electrically conductive insert has a leading edge sized to be received within a recess of the electrically conductive operative component (Fig. 4, 18c defines at least a leading edge sized to be received within a recess defined between B13 and the interiorly threaded end of B1).
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nakakura (US 9,994,208 B2) in view of Leys (WO 2017210293 A1).
In regard to claims 16 and 17, Nakakura discloses the collar can be made of conductive material (In 5:4-17 disclose 18 can be made of electrically conductive material).
In the related field of pipe couplings for mitigating electrostatic buildup, Leys teaches a conductive plastic including PFA filled with carbon fiber material (Figs. 2-4 and see page 11, lines 20-25 and page 12, lines 1-20, that discloses at least one fitting can be made of carbon fiber loaded PFA to achieve conductivity in order to ground electrostatic build up).
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 modified the material of the conductive insert of Nakakura to be carbon fiber filled PFA with a reasonable expectation of success in order to have the advantage of a known and reliable conductive material as taught by Leys.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, 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 modified the material of the collar of Nakakura in view Leys to be made of a known material such as polychlorotrifluoroethylene for the advantage of at least hardness and marine application as disclosed at https://fluorocarbon.co.uk/news-and-events/post/11/what-is-polychlorotrifluoroethylene-pctfe.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al. (US 2017/0299097 A1, hereinafter “Fujii”) in view of Szabo et al. (JP 2003185078 A, hereinafter “Szabo”).
In regard to claim 1, Fujii discloses a fluid circuit (Fig. 1 shows a fluid circuit) comprising:
an insert (Fig. 1, sleeve 4 defines an insert) configured to be coupled to a tubing segment (Fig. 1, tubing segment 2) having an interior conductive stripe (Fig. 1, sleeve 4 is capable of connecting to a tubing segment having an interior conductive stripe. See note below.) and to an operative component (Fig. 1, joint body 3 defines an operative component and 4 is coupled to 2 and 3),
wherein the insert includes a collar (Fig. 1, sleeve 4 defines a collar similar to the applicant’s invention) having a length (Fig. 1, 4 has at least an axial length), an inner surface (Fig. 1, inner diameter surface of 4), an outer surface (Fig. 1, outer diameter surface of 4), and a ridge (Fig. 1, portion at 40 defines a ridge) circumscribing the outer surface of the collar (Fig. 1, 40 circumscribes the outer surface of 4), wherein the ridge has an outer diameter greater than an inner diameter of the tubing segment (Fig. 1, outer diameter of 40 is greater than an inner diameter of a non-expanded portion of 2) to which the insert coupled so as to provide a frictional fit between the insert and the tubing segment (Fig. 1, contact between 40 and 2 defines a frictional fit), and
wherein the insert has a leading edge (Fig. 1, leading edge at 32) sized to be received within a recess of the operative component (Fig. 1, recess at 20).
It is noted that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647. See MPEP § 2114. In this case, the recitation “configured to be coupled to an electrically conductive tubing segment having an interior conductive stripe” does not structurally differentiate the claimed insert from the insert of Fujii. The insert of Fujii is structurally capable of receiving an electrically conductive tubing segment having an interior conductive stripe or an electrically conductive tubing segment without an interior conductive stripe.
Fujii does not expressly disclose the tubing segment, the operative component, and the insert are electrically conductive so as to transfer static charge to define an electrostatic discharge mitigation device.
In the related field of pipe couplings, Szabo teaches a pipe coupling and tubing segment can be made of electrically conductive material (Figs. 1 and 5, pipe coupling defined by 20 and 14, and tubing at 39. In paragraphs [0006], [0018], [0036], and [0043] of the English translation disclose 20, 14, and 39 to be made of electrically conductive material such that the pipe coupling can be made of plastic having embedded conductive particles and the tubing can having an electrically conductive inner layer) in order to mitigate electrostatic charges (In paragraphs [0006], [0018], [0036], and [0043] of the English translation teaches having an electrically conductive pathway throughout the tubing and pipe coupling would allow electrostatic dissipation to minimize risk of explosion).
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 modified the material of the tubing segment, the operative component, and the insert of Fujii to include that the operative component and the insert be made of conductive plastic and the tubing to have at least a conductive layer in order to have the advantage of mitigating electrostatic charges and minimize risk of explosion as taught by Szabo.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, 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 modified the material of the tubing segment, the operative component, and the insert of Fujii to be made of a known material such as conductive plastic for the advantage of at least better wear resistance and desired electrical conductivity as disclosed at https://www.hindawi.com/journals/ijps/2018/2302407/.
In regard to claim 4, Fujii and Szabo discloses the fluid circuit of claim 1, and Fujii further discloses wherein the collar comprises a distal end (Fig. 1, end at 31 and 32) including a second leading edge (Fig. 1, end at 31 defines a second leading edge), wherein the leading edge is received within the recess of the electrically conductive operative component (Fig. 1, 32 is received within the recess of 3) and the second leading edge abuts a proximal end of the electrically conductive operative component to form a tongue-in-groove seal (Fig. 1, 31 abuts at a proximal end at 38 of 3 to form the tongue-in-groove seal at 32. See claim 1 above for the reasons to combine Fujii and Szabo.).
In regard to claim 5, Fujii and Szabo discloses the fluid circuit of claim 1, and Fujii further discloses wherein an inner diameter of the collar is equal to an inner diameter of the electrically conductive tubing segment (Fig. 1, an inner diameter of 4 at 26 is equal to an inner diameter of the tubing 2 outside of nut 5. See claim 1 above for the reasons to combine Fujii and Szabo.).
In regard to claims 6-7, Fujii and Szabo discloses the fluid circuit of any one of claims 4-5, wherein the collar comprises a conductive-filled perfluoroalkoxy alkane (In [0055] of Fujii discloses the collar can be made of PFA. See above for claim 1 for the same reasons to combine Fujii and Szabo. As mentioned previously above in claim 1, Szabo teaches filling plastic material with conductive particles, therefore, Fujii in view of Szabo would reasonably suggest adding conductive particles to the PFA material of the collar.).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US 2017/0299097 A1) in view of Szabo (JP 2003185078 A) and further in view of Leys (WO 2017210293 A1).
In regard to claims 8-9, Fujii and Szabo discloses the fluid circuit of claim 7, but do not expressly disclose the PFA is filled with carbon material or carbon fiber or polychlorotrifluoroethylene filled with carbon material.
In the related field of pipe couplings for mitigating electrostatic buildup, Leys teaches a conductive plastic including PFA filled with carbon fiber material (Figs. 2-4 and see page 11, lines 20-25 and page 12, lines 1-20, that discloses the tubing and fittings can be made of carbon fiber loaded PFA to achieve conductivity in order to ground electrostatic build up).
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 modified the conductive particles in the PFA of Fujii in view of Szabo to be carbon fiber with a reasonable expectation of success in order to have the advantage of a known and reliable conductive filler for conductive plastic as taught by Leys.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, 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 modified the material of the collar of Fujii in view of Szabo and Leys to be made of a known material such as polychlorotrifluoroethylene for the advantage of at least hardness and marine application as disclosed at https://fluorocarbon.co.uk/news-and-events/post/11/what-is-polychlorotrifluoroethylene-pctfe.
Claims 1, 4-7, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US 2017/0299097 A1) in view of Szabo (JP 2003185078 A) and further in view of King (US 5,381,834).
In regard to claims 1 and 10, Fujii discloses a fluid circuit (Fig. 1 shows a fluid circuit) comprising:
a tubing segment (Fig. 1, tubing segment 2);
an operative component (Fig. 1, joint body 3 defines an operative component); and
an insert (Fig. 1, sleeve 4 defines an insert) coupled to the tubing segment and to the operative component (Fig. 1, 4 is coupled to 2 and 3),
wherein the insert includes a collar (Fig. 1, sleeve 4 defines a collar similar to the applicant’s invention) having a length (Fig. 1, 4 has at least an axial length), an inner surface (Fig. 1, inner diameter surface of 4), an outer surface (Fig. 1, outer diameter surface of 4), and a ridge (Fig. 1, portion at 40 defines a ridge) circumscribing the outer surface of the collar (Fig. 1, 40 circumscribes the outer surface of 4), wherein the ridge has an outer diameter greater than an inner diameter of the tubing segment (Fig. 1, outer diameter of 40 is greater than an inner diameter of a non-expanded portion of 2) to which the insert coupled so as to provide a frictional fit between the insert and the tubing segment (Fig. 1, contact between 40 and 2 defines a frictional fit), and
wherein the insert has a leading edge (Fig. 1, leading edge at 32) sized to be received within a recess of the operative component (Fig. 1, recess at 20).
Fujii does not expressly disclose the tubing segment, the operative component, and the insert are electrically conductive so as to transfer static charge to define an electrostatic discharge mitigation device; and the tubing segment having an interior conductive stripe.
In the related field of pipe couplings, Szabo teaches a pipe coupling and tubing segment can be made of electrically conductive material (Figs. 1 and 5, pipe coupling defined by 20 and 14, and tubing at 39. In paragraphs [0006], [0018], [0036], and [0043] of the English translation disclose 20, 14, and 39 to be made of electrically conductive material such that the pipe coupling can be made of plastic having embedded conductive particles and the tubing can having an electrically conductive inner layer) in order to mitigate electrostatic charges (In paragraphs [0006], [0018], [0036], and [0043] of the English translation teaches having an electrically conductive pathway throughout the tubing and pipe coupling would allow electrostatic dissipation to minimize risk of explosion).
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 modified the material of the tubing segment, the operative component, and the insert of Fujii to include that the operative component and the insert be made of conductive plastic and the tubing to have at least a conductive layer in order to have the advantage of mitigating electrostatic charges and minimize risk of explosion as taught by Szabo.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, 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 modified the material of the tubing segment, the operative component, and the insert of Fujii to be made of a known material such as carbon filled PFA for the advantage of at least better wear resistance as disclosed at https://www.hindawi.com/journals/ijps/2018/2302407/.
While Fujii in view of Szabo do not expressly disclose a conductive stripe located at the interior of the tubing segment, in the related field of tubing segments with conductive stripes for mitigating electrostatic buildup, King teaches a conductive stripe can be located at both along the exterior of a tubing segment and the interior of the tubing segment (Figs. 2 and 4, conductive stripe 16 and in 6:28-49 discloses the object of the invention of having an interior conductive stripe is for discharging electrostatic buildup).
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 substituted the interior conductive layer of the tubing of Fujii in view of Szabo for at least one conductive stripe with a reasonable expectation of success in order to have the advantage of a known and reliable structure for discharging electrostatic buildup in tubing as taught by King. See MPEP 2143(I)(B) with regard to simple substitution of one known element for another to obtain predictable results.
It is noted, with regard to claim 1 in the spirit of compact prosecution, even if the electrically conductive tubing segment having an interior conductive stripe was positively included, Fujii, Szabo, and Sheridan would disclose all the features of claim 1 as described above.
In regard to claims 4 and 13, Fujii, Szabo, and King disclose the fluid circuit of claims 1 and 10, and Fujii further discloses wherein the collar comprises a distal end (Fig. 1, end at 31 and 32) including a second leading edge (Fig. 1, end at 31 defines a second leading edge), wherein the leading edge is received within the recess of the electrically conductive operative component (Fig. 1, 32 is received within the recess of 3) and the second leading edge abuts a proximal end of the electrically conductive operative component to form a tongue-in-groove seal (Fig. 1, 31 abuts at a proximal end at 38 of 3 to form the tongue-in-groove seal at 32. See claim 10 above for the reasons to combine Fujii, Szabo, and King.).
In regard to claims 5 and 14, Fujii, Szabo, and King disclose the fluid circuit of claims 1 and 10, and Fujii further discloses wherein an inner diameter of the collar is equal to an inner diameter of the electrically conductive tubing segment (Fig. 1, an inner diameter of 4 at 26 is equal to an inner diameter of the tubing 2 outside of nut 5. See claim 10 above for the reasons to combine Fujii, Leys, and Sheridan.).
In regard to claims 6-7, Fujii, Szabo, and King disclose the fluid circuit of any one of claims 4-5, and Fujii and Szabo further disclose wherein the collar comprises a conductive-filled perfluoroalkoxy alkane (In [0055] of Fujii discloses the collar can be made of PFA. See above for claim 1 for the same reasons to combine Fujii and Szabo. As mentioned previously above in claim 1, Szabo teaches filling plastic material with conductive particles, therefore, Fujii in view of Szabo would reasonably suggest adding conductive particles to the PFA material of the collar.).
Claims 8-9 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US 2017/0299097 A1) in view of Szabo (JP 2003185078 A) and King (US 5,381,834) and further in view of Leys (WO 2017210293 A1).
In regard to claims 8-9 and 16, Fujii, Szabo, and King discloses the fluid circuit of claims 7, 10, and 13-14, but do not expressly disclose the PFA is filled with carbon material or carbon fiber or polychlorotrifluoroethylene filled with carbon material.
In the related field of pipe couplings for mitigating electrostatic buildup, Leys teaches a conductive plastic including PFA filled with carbon fiber material (Figs. 2-4 and see page 11, lines 20-25 and page 12, lines 1-20, that discloses at least one fitting can be made of carbon fiber loaded PFA to achieve conductivity in order to ground electrostatic build up).
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 modified the conductive particles in the PFA of Fujii in view of Szabo and King to be carbon fiber with a reasonable expectation of success in order to have the advantage of a known and reliable conductive filler for conductive plastic as taught by Leys.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, 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 modified the material of the collar of Fujii in view of Szabo, King, and Leys to be made of a known material such as polychlorotrifluoroethylene for the advantage of at least hardness and marine application as disclosed at https://fluorocarbon.co.uk/news-and-events/post/11/what-is-polychlorotrifluoroethylene-pctfe.
In regard to claim 17, Fujii, Szabo, King and Leys disclose the fluid circuit of claim 16, wherein the collar comprises perfluoroalkoxy alkane filled with carbon fiber (See above for claims 8-9 and 16 for the same reasons to combine Fujii, Szabo, King and Leys to disclose carbon fiber filled PFA).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Fujii (US 2017/0299097 A1) in view of Szabo (JP 2003185078 A) and King (US 5,381,834) and further in view of Capsius (WO 2019110848 A1).
Fujii, Szabo, and King disclose the fluid circuit of claim 10, but do not expressly disclose an electrically conductive bracket coupled to the electrically conductive operative component wherein the electrically conductive bracket includes a clamp portion and a grounding end wherein the grounding end connects the electrically conductive bracket to ground.
In the related field of electrically grounding pipe joints, Capsius teaches a grounding bracket for pipes (Figs. 2a-2c, grounding bracket 1’ that couples around a fitting) that is easy to install and minimizes vibrations (Paragraphs [0001-0006] discloses the grounding bracket provides the advantage of ease of assembly and minimizes vibrations).
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 modified the conductive fluid circuit of Fujii in view of Szabo and King to include an electrically conductive bracket coupled to the electrically conductive operative component wherein the electrically conductive bracket includes a clamp portion and a grounding end wherein the grounding end connects the electrically conductive bracket to ground with a reasonable expectation of success in order to have the advantage of ease of assembly and minimizing vibrations as taught by Capsius.
Response to Arguments
Applicant's arguments in the appeal brief filed 08/18/2025 have been fully considered with respect to claims 1, 4-10, and 13-17 but are moot because the new ground of rejection does not rely on the same references applied in the prior rejection of record for all teaching or matter specifically challenged in the argument. See the updated rejection above that includes prior arts Nakakura that discloses all the features of claims 1 and 10 and Szabo that teaches all components of a pipe coupling can be made of conductive plastic in contact with an inner conductive layer of a tubing.
Conclusion
The following prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Zimmer et al. (US 7,861,746) discloses at least one interior conductive stripe within a tubing similar to applicant’s invention in order to dissipate electrostatic charges.
Razvi (US 4,107,452) discloses a pipe coupling having conductive components in contact with a conductive interior of a tubing in order to provide a pathway for dissipating electrostatic charges which is similar to applicant’s invention of providing a pathway for mitigating electrostatic charges.
Koike et al. (US 6,442,012 B2) discloses a pipe coupling coated with conductive material on both an inner surface and outer surface of the pipe coupling in order to provide a pathway for dissipating electrostatic charges which is similar to applicant’s invention of providing a pathway for mitigating electrostatic charges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William S. Choi whose telephone number is (571)272-8223. The examiner can normally be reached Mon - Fri 9:30-5:30.
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, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM S. CHOI/Primary Examiner, Art Unit 3679