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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 23, 2026 has been entered.
Response to Amendment
Claims 15 and 20-21 have been amended. Claims 1-14 and 29-56 have been cancelled. Claim 57 has been added. Therefore, claims 15-28 and 57 remain pending in the application. Applicant’s amendments to the Claims, have overcome each and every objection and 112(b) rejection previously set forth in the Final Office Action mailed October 23, 2025.
Claim Objections
Claim 20 is objected to because of the following informalities: "(currently amende)" should read "(currently amended)". 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 15-28 and 57 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.
The term “flat surface” in claims 15 and 57, line 22 is a relative term which renders the claim indefinite. The term “flat surface” 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. For the purpose of examination, claims 15 and 57 will be read as “horizontal surface”.
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 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.
Claim(s) 15-24, 26-28, and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO2020045749A1), hereinafter "Kim", in view of Marx et al. (US3126934A), hereinafter "Marx".
Regarding claim 15, as best understood, Kim teaches a coupling (see Fig 8) for joining pipe elements in end to end relation (Paragraph 1, Examiner notes pipe coupling used to connect two pipes as for joining pipe elements in end to end relation), said coupling (see Fig 8) comprising:
a first segment (Fig 8, first member 11) having first and second ends (see Fig 8, Paragraph 75, Examiner notes flange 16 is integrally formed like a lug at both ends as having first and second ends) oppositely disposed (see Fig 8), said first segment (11) comprising a first connection member (see Fig 8, Examiner notes left flange 16 of first member 11 as comprising a first connection member) and a second connection member (see Fig 8, Examiner notes right flange 16 of first member 11 as a second connection member) positioned (see Fig 8) respectively at each (see Fig 8) of said first (see Fig 8) and second ends (see Fig 8);
a second segment (Fig 8, second member 12) having first and second ends (see Fig 8, Paragraph 75, Examiner notes flange 16 is integrally formed like a lug at both ends as having first and second ends) oppositely disposed (see Fig 8), said second segment (12) comprising a first connection member (see Fig 8, Examiner notes left flange 16 of second member 12 as comprising a first connection member) and a second connection member (see Fig 8, Examiner notes right flange 16 of second member 12 as a second connection member) positioned (see Fig 8) respectively at each (see Fig 8) of said first (see Fig 8) and second ends (see Fig 8);
a first fastener (see Fig 2, nut 60, Paragraph 98) attaching (Paragraph 98) said first end (see Fig 8) of said first segment (11) to said first end (see Fig 8) of said second segment (12);
a second fastener (see Fig 2, bolt 50, Paragraph 98) attaching (Paragraph 98) said second end (see Fig 8) of said first segment (11) to said second end (see Fig 8) of said second segment (12) such that said first (11) and second segments (12) surround a central space (see Fig 8, Paragraph 74) for receiving said pipe elements (Paragraph 1), wherein each said connection member (see Fig 8) of said first (see Fig 8) and second connection members (see Fig 8) of said first segment (11) and said second segment (12) comprises:
a base surface (see Fig 9, Paragraph 81, Examiner notes surfaces between each sawtooth-shaped protrusion 21 as a base surface) integral (see Fig 9) with said respective connection member (see Fig 8) and oriented transversely (see Fig 9) to one (see Fig 9) of said first (60) and second fasteners (50);
a plurality of raised surfaces (Figs 8-9, sawtooth-shaped protrusions 21) extending transversely (see Fig 9) from said base surface (see Fig 9), each said raised surface (21) of said plurality of raised surfaces (21) comprising a plateau (see Fig 9, Examiner notes an upper portion of each sawtooth-shaped protrusion 21 as comprising a plateau), wherein respective plateaus (see Fig 9) of at least a first raised surface (see Fig 9) and a second raised surface (see Fig 9) of said plurality of raised surfaces (21) engage (Paragraph 81) respective portions (Paragraph 81) of said first fastener (60), and wherein each said raised surface (21) of said plurality of raised surfaces (21) is separated from (see Fig 9) at least an adjacent one (see Fig 9) of said plurality of raised surfaces (21) by a channel (see Figs 8-9, Examiner notes grooves between each sawtooth-shaped protrusion 21 as a channel) positioned (see Fig 9) therebetween.
Kim fails to teach each said raised surface of said plurality of raised surfaces comprising a plateau defining a flat surface.
However, Marx teaches it is known to provide each said raised surface (see Figs 3-4) of said plurality of raised surfaces (Figs 3-4, ribs 18) comprising a plateau defining a flat surface (see Fig 4, Col 3, lines 31-66, Examiner notes ribs 18 having sloping side faces and flat top surfaces as comprising a plateau defining a flat surface).
Therefore, as evidenced by Marx, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions of Kim to include each said raised surface of said plurality of raised surfaces comprising a plateau defining a flat surface as taught by Marx. The rationale for supporting this conclusion of obviousness is to facilitate use of a conventional nut while providing frictional resistance to loosening of the nut (Marx, Col 2, lines 28-31).
Regarding claim 16, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 and further teaches wherein said first fastener (60) comprises a threaded nut (see Fig 2, Paragraph 81) engageable (Paragraph 81) with at least one (see Fig 9, Paragraph 81) of said plurality of raised surfaces (21).
Regarding claim 17, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 but fails to teach wherein said first fastener comprises a threaded bolt having a head engageable with at least one of said plurality of raised surfaces.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have wherein said first fastener comprises a threaded bolt having a head engageable with at least one of said plurality of raised surfaces, since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04 (VI)(C). The rationale for supporting this conclusion of obviousness is to facilitate ease of assembly and/or disassembly during installation and/or deinstallation based on application and use requirements, e.g. working in confined spaces.
Regarding claim 18-21, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 but fails to teach wherein each said [claim 18: plateau has a height of 0.060 inches above said base surface; claim 19: plateau has a height ranging from 0.020 inches to 0.1 inches above said base surface; claim 20: flat surface of each said plateau has a minimum surface area of 0.010 square inches; claim 21: flat surface of each said plateau has a surface area ranging from 0.010 square inches to 0.1 square inches].
It would have been an obvious matter of design choice to have modified each said [claim 18: plateau; claim 19: plateau; claim 20: flat surface of each said plateau; claim 21: flat surface of each said plateau] as disclosed by modified Kim to have [claim 18: a height of 0.060 inches above said base surface; claim 19: a height ranging from 0.020 inches to 0.1 inches above said base surface; claim 20: a minimum surface area of 0.010 square inches; claim 21: a surface area ranging from 0.010 square inches to 0.1 square inches], since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. MPEP 2144.04 (IV)(A). The rationale for supporting this conclusion of obviousness is to provide appropriately sized and shaped protrusions to prevent the nut from loosening due to external force and becoming loose (Kim, Paragraph 81) according to application and requirements, i.e. increasing or decreasing friction and prevent slipping based on sizing of pipe couplings and corresponding fasteners.
Regarding claim 22, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 and further teaches wherein at least one (see Fig 9) of said plurality of raised surfaces (21) has a polygonal cross sectional shape (see Fig 9, Paragraph 81, Examiner notes sawtooth-shaped protrusions 21 as has a polygonal cross sectional shape).
Regarding claim 23, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 and further teaches wherein at least one (see Fig 8) of said plurality of raised surfaces (21) has a round cross sectional shape (see Fig 8, Examiner notes sawtooth-shaped protrusions 21 are formed around the bolt hole 18 of flange 16 as has a round cross sectional shape).
Regarding claim 24, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 and further teaches wherein at least one (see Fig 9) of said plurality of raised surfaces (21) is tapered (see Fig 9, Examiner notes sawtooth-shaped protrusions 21 as is tapered), said at least one (see Fig 9) raised surface (21) having a smaller perimeter (see Figs 8-9) at said plateau (see Fig 9) than at said base surface (see Fig 9).
Regarding claims 26-27, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 but fails to teach wherein said [claim 26: first fastener comprises steel; claim 27: plurality of raised surfaces comprises ductile iron].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the first fastener and plurality of raised surfaces to comprise steel and ductile iron, respectively, since 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 engineering design choice. It is also a common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, and potential aesthetics, etc., for the application, intended use, and design considerations for that material. MPEP 2144.07. The rationale for supporting this conclusion of obviousness is to provide known materials according to application and requirements.
Regarding claim 28, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 and further teaches wherein said plurality of raised surfaces (21) are **integrally cast** with said coupling (see Fig 8).
**Examiner notes that even though a product-by-process claim is limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985).
Regarding claim 57, as best understood, Kim teaches a coupling (see Fig 8) for joining pipe elements in end to end relation (Paragraph 1, Examiner notes pipe coupling used to connect two pipes as for joining pipe elements in end to end relation), said coupling (see Fig 8) comprising:
a first segment (Fig 8, first member 11) having first and second ends (see Fig 8, Paragraph 75, Examiner notes flange 16 is integrally formed like a lug at both ends as having first and second ends) oppositely disposed (see Fig 8), said first segment (11) comprising a first connection member (see Fig 8, Examiner notes left flange 16 of first member 11 as comprising a first connection member) and a second connection member (see Fig 8, Examiner notes right flange 16 of first member 11 as a second connection member) positioned (see Fig 8) respectively at each (see Fig 8) of said first (see Fig 8) and second ends (see Fig 8);
a second segment (Fig 8, second member 12) having first and second ends (see Fig 8, Paragraph 75, Examiner notes flange 16 is integrally formed like a lug at both ends as having first and second ends) oppositely disposed (see Fig 8), said second segment (12) comprising a first connection member (see Fig 8, Examiner notes left flange 16 of second member 12 as comprising a first connection member) and a second connection member (see Fig 8, Examiner notes right flange 16 of second member 12 as a second connection member) positioned (see Fig 8) respectively at each (see Fig 8) of said first (see Fig 8) and second ends (see Fig 8);
a first fastener (see Fig 2, nut 60, Paragraph 98) attaching (Paragraph 98) said first end (see Fig 8) of said first segment (11) to said first end (see Fig 8) of said second segment (12);
a second fastener (see Fig 2, bolt 50, Paragraph 98) attaching (Paragraph 98) said second end (see Fig 8) of said first segment (11) to said second end (see Fig 8) of said second segment (12) such that said first (11) and second segments (12) surround a central space (see Fig 8, Paragraph 74) for receiving said pipe elements (Paragraph 1), wherein each said connection member (see Fig 8) of said first (see Fig 8) and second connection members (see Fig 8) of said first segment (11) and said second segment (12) comprises:
a base surface (see Fig 9, Paragraph 81, Examiner notes surfaces between each sawtooth-shaped protrusion 21 as a base surface) integral (see Fig 9) with said respective connection member (see Fig 8) and oriented transversely (see Fig 9) to one (see Fig 9) of said first (60) and second fasteners (50);
a plurality of raised surfaces (Figs 8-9, sawtooth-shaped protrusions 21) extending transversely (see Fig 9) from said base surface (see Fig 9), each said raised surface (21) of said plurality of raised surfaces (21) comprising a plateau (see Fig 9, Examiner notes an upper portion of each sawtooth-shaped protrusion 21 as comprising a plateau), wherein respective plateaus (see Fig 9) of at least a first raised surface (see Fig 9) and a second raised surface (see Fig 9) of said plurality of raised surfaces (21) engage (Paragraph 81) respective portions (Paragraph 81) of a bolt head or a nut (see Fig 2, Paragraph 81) of said first fastener (60), and wherein each said raised surface (21) of said plurality of raised surfaces (21) is separated from (see Fig 9) at least an adjacent one (see Fig 9) of said plurality of raised surfaces (21) by a channel (see Figs 8-9, Examiner notes grooves between each sawtooth-shaped protrusion 21 as a channel) positioned (see Fig 9) therebetween.
Kim fails to teach each said raised surface of said plurality of raised surfaces comprising a plateau defining a flat surface and wherein respective flat surfaces of plateaus of at least a first raised surface and a second raised surface of said plurality of raised surfaces engage portions of a bolt head or a nut of said first fastener.
However, Marx teaches it is known to provide each said raised surface (see Figs 3-4) of said plurality of raised surfaces (Figs 3-4, ribs 18) comprising a plateau defining a flat surface (see Fig 4, Col 3, lines 31-66, Examiner notes ribs 18 having sloping side faces and flat top surfaces as comprising a plateau defining a flat surface) and wherein respective flat surfaces (see Fig 4) of plateaus (see Fig 4) of at least a first raised surface (see Fig 4) and a second raised surface (see Fig 4) of said plurality of raised surfaces (18) engage portions (see Fig 2) of a bolt head or a nut (Fig 2, nut 14) of said first fastener (see Fig 2, Examiner notes nut 14 as said first fastener).
Therefore, as evidenced by Marx, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions of Kim to include each said raised surface of said plurality of raised surfaces comprising a plateau defining a flat surface and wherein respective flat surfaces of plateaus of at least a first raised surface and a second raised surface of said plurality of raised surfaces engage portions of a bolt head or a nut of said first fastener as taught by Marx. The rationale for supporting this conclusion of obviousness is to facilitate use of a conventional nut while providing frictional resistance to loosening of the nut (Marx, Col 2, lines 28-31).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Nagashima (US20170082136A1), hereinafter "Nagashima".
Regarding claim 25, as best understood, modified Kim teaches the coupling (see Fig 8) according to claim 15 but fails to teach wherein said first fastener is softer than said plurality of raised surfaces.
However, Nagashima teaches it is known in the art to provide wherein said first fastener (Fig 4, washer 14) is softer (Paragraph 0034, Nagashima indicates nut 13 is made of a stainless steel and washer 14 is made of a brass, which is softer than stainless steel) than said plurality of raised surfaces (Fig 3, protrusions 20).
Therefore, as evidenced by Nagashima, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first fastener of Kim to be softer than said plurality of raised surfaces as taught by Nagashima. The rationale for supporting this conclusion of obviousness is to facilitate increasing contact area by forming meshed portions resulting in large frictional forces to prevent loosening as well as reducing changes of corrosion cause by the difference in electrical potential between different metals (Nagashima, paragraphs 0038-0039 and 0042-0043).
Response to Arguments
Applicant’s arguments with respect to claim(s) 15 and 57 have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCK WONG whose telephone number is (571)270-1349. The examiner can normally be reached Monday - Friday, 7:30am - 5:00pm (ET).
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/J.W./Examiner, Art Unit 3675 /KRISTINA R FULTON/Supervisory Patent Examiner, Art Unit 3675
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