DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 19 May 2026 has been entered.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
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, the major surface of CLAIMS 1 AND 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 1-13 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 The term “close proximity” is a relative term which renders the claim indefinite. The term “close proximity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
CLAIMS 2-9 are rejected because they depend from CLAIM 1.
CLAIM 10 is rejected similarly to CLAIM 1.
CLAIMS 11-13 are rejected because they depend from CLAIM 10.
Claim Rejections - 35 USC § 103
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.
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.
CLAIMS 1-4, 7, 8 AND 10-12 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).
CLAIMS 1, 10 Scott ‘454 (“Scott”) shows a pipe splitter (11, Figs. 2 and 3), comprising:
a splitter body (21) including a major surface configured to be parallel to an interior of a pipe to be split, and configured to be in close proximity with the interior of the pipe to be split;
one or more splitting blades (39S) coupled to the splitter body (21);
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 (21) 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 a cutting edge of the forward facing cutting blade is parallel 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 of the splitter body (Scott, 21), 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.
CLAIM 2 Neither Scott nor Harris 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 Harris, 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 Harris, 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.
CLAIMS 7, 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, 21).
CLAIMS 8, 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, 21) with a cylindrical cross section.
CLAIMS 5 AND 6 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) as applied to CLAIM 4 above, and further in view of Rockower et al. (US 5,098,225 A).
CLAIMS 5, 6 In the combination of Scott and Harris, 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, 21) 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 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 Harris (US 4,706,748 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 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.
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.
CLAIMS 14-16 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).
CLAIMS 14, 15 The method steps recited therein are inherent to use of the pipe splitter taught by the combination of Scott and Wayman, as set forth below.
Scott ‘454 (“Scott”) shows a pipe splitter (11, Figs. 2 and 3), comprising:
a splitter body (21);
one or more splitting blades (39S) coupled to the splitter body (21), including multiple blades spaced apart in a regular angular spacing, wherein one or more of the plurality of blades includes a maximum cutting depth that is less than the wall thickness of the pipe (“score its interior surface” p. 15, ll. 9-12);
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, 21) 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 16 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.
CLAIMS 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 14 above, and further in view of Rockower et al. (US 5,098,225 A).
CLAIMS 17, 18 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, 21) 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.
Conclusion
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/TARA MAYO/Primary Examiner, Art Unit 3671
/tm/
25 June 2026
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