DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The prior objection to the abstract has been overcome by the response filed 12 November 2025, wherein Applicant amended the same to delete references to purported merits and speculative applications.
Claim Rejections - 35 USC § 112
The prior rejections of the claims under 35 U.S.C. §112, first paragraph, have been overcome by the response filed 12 November 2025, wherein Applicant:
Deleted the unsupported limitation from claim 1; and
Clarified the unsupported limitation of claim 14.
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7, 8 and 14-16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scott (GB 2,427,454 A) in view of Wayman et al. (US 4,674,914 A).
CLAIM 1 Scott ‘454 (“Scott”) shows a pipe splitter (11, Figs. 2 and 3), comprising:
a splitter body (22);
one or more splitting blades (39S) coupled to the splitter body (22);
a shaping mandrel (24) in front of the one or more splitting blades (39S), with a cavity (Fig. 3) sized to accommodate one or more interior portions of sheared beads, the cavity exposed on an exterior surface of the pipe splitter (11), wherein the cavity is recessed below an outer diameter of the shaping mandrel (24), and the cavity being located between the shaping mandrel (24) and the one or more splitting blades (39S).
Scott fails to teach a cutting blade. Wayman et al. ‘914 (“Wayman”) shows a pipe splitter (20, Fig. 2) comprising a cutting blade (29) coupled to a splitter body adjacent a cavity (between 20 and 6, Fig. 1A). It would have been obvious for one having ordinary skill in the art, at the time of invention, to modify the splitter body (Scott, 22) with the addition of a cutting blade (Wayman, 29) adjacent the cavity (Scott, Fig. 3), as suggested by Wayman, to shear a polymer bead. The motivation for making the modification would have been to include means for cutting completely through a pipe sidewall with a reasonable expectation of success.
CLAIM 2 Neither Scott nor Wayman discloses eight splitter blades. However, it would have been obvious for one having ordinary skill in the art at the time the invention was made to have provided the prior art pipe splitter (Scott, 11) with eight blades (Scott, 39S), since such a modification would have merely required the duplication of working parts of the prior art device. It has been held that duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In this instance, the motivation for making the modification would have been to facilitate scoring of the pipeline interior at additional locations, thereby easing passage of a replacement pipeline, and to have done so with a reasonable expectation of success.
CLAIM 3 In the combination of Scott and Wayman, the one or more splitting blades (Scott, 39S) includes multiple blades spaced apart in a regular angular spacing.
CLAIM 4 In the combination of Scott and Wayman, the one or more splitting blades (Scott, 39S) includes a plurality of blades intended to provide a cutting depth less than the wall thickness of a pipe to be split (Scott, p. 5, ll. 8-14), but Scott is silent regarding the approximate cutting depth. It would have been an obvious modification for one of ordinary skill in the art at the time of invention to have made the cutting depth approximately 75% of the pipe wall thickness, since it has been held that where the general conditions a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In this instance, the motivation for making the modification would have been to score the pipe to such a depth that relatively little force would be required to separate the scored pipe sections completely.
CLAIM 7 In the combination of Scott and Wayman, the pipe splitter (Scott, 11) further includes an expander (Scott, 20) coupled behind the splitter body (Scott, 22).
CLAIM 8 In the combination of Scott and Wayman, the one or more splitter blades (Scott, 39S) are coupled along a portion of the splitter body (Scott, 22) with a cylindrical cross section.
CLAIM 14 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott and Wayman, as applied above to claim 3.
CLAIM 15 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott and Wayman, as applied above to claim 3.
CLAIM 16 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott and Wayman, as applied above to claim 4.
Claims 5, 6, 17 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scott (GB 2,427,454 A) in view of Wayman et al. (US 4,674,914 A) as applied to claim 4 above, and further in view of Rockower et al. (US 5,098,225 A).
CLAIMS 5 and 6 In the combination of Scott and Wayman, neither prior art reference teaches a primary blade, as claimed. Rockower et al. ‘225 (“Rockower”) discloses a pipe splitter comprising a plurality of splitter blades (16, 22), wherein one blade (22; Fig. 6, col. 6, ll. 32-38) has a primary cutting depth that is deeper than the other blade (16; Fig. 7, col. 6, ll. 3-13). It would have been an obvious modification for one having ordinary skill in the art at the time of invention to have modified the splitter body (Scott, 22) of the prior art pipe splitter (Scott, 11) with the addition of a primary blade (Rockower, 22) having a cutting depth of approximately 90 percent the pipe wall thickness, which is greater than the 75 percent depth of the other blades. The motivation for making the modification would have been to include means for defining a break cut along the pipe interior, the break cut being weaker than all other cuts formed by the blades, and to have done so with a reasonable expectation of success.
CLAIM 17 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott, Wayman and Rockower, as applied above to claim 6.
CLAIM 18 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott, Wayman and Rockower, as applied above to claim 6.
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scott (GB 2,427,454 A) in view of Wayman et al. (US 4,674,914 A) as applied to claim 7 above, and further in view of Tenbusch, II (US 5,482,404 A).
CLAIM 9 In the combination of Scott and Wayman, neither prior art reference teaches an opening in the expander. Tenbusch, II ‘404 (“Tenbusch”) discloses a pipe replacement system comprising an expander (36, Fig. 5) with at least one opening (92), whereby lubricant dispensed to the exterior of the expander and functions to reduce the force required to break pipe sections (10; col. 8, ll. 32-51). It would have been an obvious modification for one having ordinary skill in the art at the time of invention to have modified the expander (Scott, 20) of the prior art pipe splitter (Scott, 11) such that it would have included at least one opening (Tenbusch, 92), as suggested by Tenbusch. The motivation for making the modification would have been to provide for the use of a lubricant (Tenbusch, col. 8, ll. 32-51) during operation of the pipe splitter, and to have done so with a reasonable expectation of success.
Claims 10-12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scott (GB 2,427,454 A) in view of Harris (US 4,706,748 A).
CLAIM 10 Scott ‘454 (“Scott”) shows a pipe splitter (11, Figs. 2 and 3), comprising:
a splitter body (22);
one or more splitting blades (39S) coupled to the splitter body (22);
a shaping mandrel (24) in front of the one or more splitting blades (39S); and
a cavity (Fig. 3) between a front of the splitter body (22) and the shaping mandrel (24), the cavity sized to accommodate one or more interior portions of sheared beads, wherein the cavity is recessed below an outer diameter of the shaping mandrel (24).
Scott fails to teach a forward facing cutting blade. Harris ‘748 (“Harris”) shows a pipe scraper (10) comprising a forward facing cutting blade (27), which is coupled to an expandible body member (20) and positioned adjacent a cavity (29) that lies between a leading portion (17) of a mandrel and the expandible body (20), wherein the forward facing cutting blade is configured to align with the interior of a pipe. It would have been obvious for one having ordinary skill in the art at the time of invention to have modified the forward face (Scott, 21) of the splitter body (Scott, 22), such that it would have included a cutting blade (Harris, 27), as suggested by Harris. The motivation for making the modification would have been to include means for scraping the interior of a pipe prior to engagement by the splitting blades, and to have done so with a reasonable expectation of success.
Regarding claim 11, in the combination of Scott and Harris, the pipe splitter (Scott, 11) further includes an expander (Scott, 20, Fig. 2) coupled behind the splitter body (Scott, 22).
Regarding claim 12, in the combination of Scott and Harris, the one or more splitter blades (Scott, 39S) are coupled along a portion of the splitter body (Scott, 22) with a cylindrical cross section.
Claim 13 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Scott (GB 2,427,454 A) in view of Harris (US 4,706,748 A) as applied to claim 12 above, and further in view of Tenbusch, II (US 5,482,404 A).
CLAIM 13 In the combination of Scott and Harris, neither prior art reference teaches an opening in the expander. Tenbusch, II ‘404 (“Tenbusch”) discloses a pipe replacement system comprising an expander (36, Fig. 5) with at least one opening (92), whereby lubricant dispensed to the exterior of the expander and functions to reduce the force required to break pipe sections (10; col. 8, ll. 32-51). It would have been an obvious modification for one having ordinary skill in the art at the time of invention to have modified the expander (Scott, 20) of the prior art pipe splitter (Scott, 11) such that it would have included at least one opening (Tenbusch, 92), as suggested by Tenbusch. The motivation for making the modification would have been to provide for the use of a lubricant (Tenbusch, col. 8, ll. 32-51) during operation of the pipe splitter, and to have done so with a reasonable expectation of success.
Response to Arguments
The examiner notes Applicant failed to present arguments with respect to prior art in the response filed 12 November 2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stangl et al. (US 4,907,658 A) shows a mole body (17) connected to an element (18) having a forward face including cutting elements (Fig. 2) that function to scrape and shape a borehole.
Torielli (US 5,192,165 A) shows a pipe splitter (Fig. 3) comprising a cavity between a nose portion and splitter body.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA MAYO whose telephone number is (571)272-6992. The examiner can normally be reached Monday through Friday 8:30AM-5:00PM EST.
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/TARA MAYO/Primary Examiner, Art Unit 3671
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15 February 2026