DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 April 2026 has been entered.
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 1-5, 7-8, 21-22, 33-37, and 39-44 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.
Power Transmission Unit and Power Transmission Unit Contains Source of Fluid
Independent claims 1 and 33 each recite that the tube expander is a self-contained hand-holdable unit that “contains a power transmission unit enabling single-handed operation of the hand-holdable unit for the jaw to expand the open end portion.” Dependent claims 3 and 35 further recite that “the power transmission unit contains the source of the fluid,” and claims 43 and 44 recite that the power transmission unit has a portion extending at least partially in the handle.
The originally filed claims, filed June 2, 2022, did not recite a “power transmission unit.” For example, originally filed claim 1 recited a head, jaw, tube expander, and cone. Originally filed claim 3 recited that “the tube expander contains a source of a fluid” and that the cone moves based on fluid flowing between the source and the cone. Originally filed claims 4 and 6 separately recited first and second valves and a single-action release actuator. Originally filed claims 9 and 15 separately recited a handle, body, trigger, fluid source, head, jaw, spring, and release actuator. None of the originally filed claims identified any of these components, individually or collectively, as a “power transmission unit.”
The “power transmission unit” terminology was introduced during prosecution. In the claim listing filed April 24, 2025, Applicant amended claim 1 to introduce the expression “power transmission unit” and amended claim 3 to recite that the “power transmission unit contains a source of a fluid.” The later claim listing filed September 3, 2025 recited a “power transmission unit” in claims 1 and 33 and recited that the power transmission unit contains a fluid source in claims 3 and 35. The presently considered claim listing filed April 16, 2026 continues those limitations.
The specification as originally filed similarly does not use the term “power transmission unit” and does not identify a particular component or defined collection of components as such a unit. Instead, the original disclosure describes a particular hydraulic tube-expander arrangement comprising, among other elements: Hydraulic-fluid source (112); Trigger (108); Piston and plunger arrangement (140/141); Fluid paths (113) and (134); Valves (114, 136, and 138); Cavity (126); Piston (130); Cone (118); Expanding jaws (106); and Single-action release actuator (110).
See, for example, the specification as originally filed at paragraphs [0005]–[0016] and [0023]–[0038]. Although these components cooperate to operate the disclosed hydraulic tube expander, the original disclosure does not identify which components constitute a “power transmission unit,” does not identify the structural boundaries of such a unit, and does not disclose that fluid source (112) is contained within such a unit.
The deficiency is not based merely on the absence of the exact phrase “power transmission unit.” Rather, the originally filed disclosure does not reasonably convey possession of the structural genus and component grouping that Applicant now attributes to that term.
In the remarks filed December 17, 2025, Applicant argued that “power transmission unit” has a recognized structural meaning and therefore should not be construed under 35 U.S.C. §112(f). Applicant stated that a transmission or transmission unit is a recognized structural assembly “typically comprising gears, hydraulic or pneumatic circuits, linkages, drives, or electrical circuitry that transfer energy from a source to an output.” See the remarks filed December 17, 2025, page 9, lines 8-16. Applicant further argued that “power transmission unit” is a specific structural classification encompassing “gear trains, hydraulic or pneumatic circuits, linkages, drives, or electrical circuitry.” See the remarks filed December 17, 2025, page 13, lines 1-6. Based on those representations, the Office withdrew its previous application of §112(f). See the Final Office Action mailed January 16, 2026, Response to Arguments.
Even assuming the disclosed hydraulic arrangement constitutes one species of a power-transmission structure, the original disclosure does not identify the components forming the claimed unit, distinguish the unit from the source and output, or disclose the subsequently claimed boundary encompassing the fluid source.
Claims 3 and 35 present an additional written-description deficiency because those claims recite that the “power transmission unit contains the source of the fluid.” Applicant previously characterized a power transmission unit as an assembly that transfers energy “from a source to an output.” See the remarks filed December 17, 2025, page 9, lines 8-16. That characterization treats the source, transmission unit, and output mechanism as distinguishable portions of the system: the unit receives energy from the source and transfers that energy to the output.
Claims 3 and 35 now enlarge the asserted structural boundary of the power transmission unit to include the fluid source itself. The original disclosure does not identify fluid source (112) as part of a power transmission unit, does not identify a larger subassembly containing fluid source (112) as a power transmission unit, and does not otherwise describe a transmission unit whose boundaries encompass both the power source and the structures that transmit power from the source toward the cone and jaws.
The fact that the overall tube expander contains fluid source (112) and the remaining hydraulic components does not demonstrate possession of the newly claimed intermediate grouping. Disclosure that multiple components are contained within the same overall tool does not, without more, demonstrate possession of a separately claimed structural subunit containing those components.
Similarly, claims 43 and 44 recite that the power transmission unit has a portion extending at least partially in the handle. The original disclosure shows fluid source (112) in the handle but does not identify the source as part of a power transmission unit or identify any other particular portion of a power transmission unit as extending into the handle. Whether claims 43 and 44 are satisfied merely because fluid source (112) is in the handle depends on the newly asserted, but originally undisclosed, proposition that the fluid source is itself part of the power transmission unit.
The application as originally filed does not reasonably convey to one of ordinary skill in the art that the inventor possessed: a distinct structural subassembly having the boundaries now attributed to the “power transmission unit”; a power transmission unit containing fluid source (112), as required by claims 3 and 35; or an identified portion of that unit extending into the handle, as required by claims 43 and 44.
Applicant’s subsequently presented claims and prosecution arguments cannot supply written-description support that was absent from the application as originally filed.
Negative Claim Limitation – Without Rotating
Claims 1-5, 7-8, 21-22, 33-37, and 39-44 are rejected under 35 U.S.C. 112(a) because the originally filed disclosure does not reasonably convey to one of ordinary skill in the art that Applicant had possession, as of the filing date, of the presently claimed subject matter requiring that “the jaw expands the open end portion without rotating the tube expander relative to the open end portion.”
The quoted negative limitation was introduced into independent claims 1 and 33 by the amendment filed April 24, 2025. The limitation was not recited in the claims as originally filed on June 2, 2022. The originally filed specification likewise does not expressly disclose maintaining the tube expander against rotation relative to the tube or its open end during expansion.
In the remarks filed April 24, 2025, Applicant asserted that support for the amendments was found at least in paragraphs 7-12, 15, 26-29, 38-39, and Figure 3. These portions of the disclosure describe the structure of the tube expander, the orientation of the head and handle, axial movement of the cone, movement of the jaws, hydraulic operation, and single-handed actuation. They do not disclose that the tube expander is prevented from, or operated without, rotating relative to the open end portion during expansion.
In particular, the description of the cone moving axially toward the jaws and causing the jaws to pivot or expand does not necessarily exclude concurrent rotation or reorientation of the overall tube expander relative to the tube. The disclosed axial and radial movements are compatible with either rotating or nonrotating operation of the overall tool. Figure 3 is a static illustration and does not disclose the angular relationship between the tube expander and the tube throughout the expansion operation.
Applicant’s remarks filed April 24, 2025 rely on the newly added negative limitation to distinguish Wagner, asserting that Wagner does not disclose expanding the tube “without rotating the tube expander relative to the open end portion.” This reliance confirms that the limitation is being treated as a substantive exclusion of an otherwise possible manner of operating or reorienting the tool. The originally filed disclosure, however, neither identifies rotation as a problem nor distinguishes rotating operation from nonrotating operation.
Although written-description support does not require literal use of the same words appearing in the claims, the original disclosure must reasonably convey possession of the claimed exclusion. The mere absence of a description of rotation, coupled with a static drawing and disclosure of axial cone movement, does not reasonably convey possession of the negative operational requirement now claimed.
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 1-5, 7-8, 21-22, 33-37, and 39-44 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.
Power Transmission Unit and Power Transmission Unit Contains Source of Fluid
Independent claims 1 and 33 recite a “power transmission unit enabling single-handed operation of the hand-holdable unit for the jaw to expand the open end portion.” Neither the claims nor the specification provide reasonably clear structural boundaries for the claimed power transmission unit. Consequently, one of ordinary skill in the art cannot determine with reasonable certainty which components constitute the claimed unit and which components are external to the unit.
The specification does not use the term “power transmission unit.” It separately identifies hydraulic-fluid source (112), trigger (108), piston and plunger (140/141), fluid paths (113) and (134), valves (114, 136, and 138), cavity (126), piston (130), cone (118), jaws (106), and release actuator (110). The specification does not identify whether the claimed power transmission unit comprises: Only the structures that transmit hydraulic pressure after the fluid has been pressurized; the trigger-operated pump mechanism; the pump, valves, and fluid paths; the pump, valves, fluid paths, and fluid source; the cone and piston that convert hydraulic pressure into mechanical movement; the complete hydraulic circuit; or substantially the entire tube expander.
Applicant avoided construction of “power transmission unit” under §112(f) by arguing that the term has a recognized structural meaning. In the remarks filed December 17, 2025, Applicant stated that the term denotes an assembly comprising, for example, gears, hydraulic or pneumatic circuits, linkages, drives, or electrical circuitry that transfers energy “from a source to an output.” See the December 17, 2025 remarks at page 9, lines 8-16, and page 13, lines 1-6. Based on those representations, the Office withdrew its previous §112(f) interpretation. See the Final Office Action mailed January 16, 2026.
Those remarks do not resolve the present ambiguity. Instead, the current claims materially depart from the boundary suggested by Applicant’s earlier definition.
Applicant’s definition identifies: a power source; a power transmission unit that receives and transfers energy from the source; and an output mechanism receiving the transmitted energy.
Claims 3 and 35, however, recite that the “power transmission unit contains the source of the fluid.” Thus, the current claims use “power transmission unit” to include the source that Applicant previously described as supplying energy to the transmission unit.
The record therefore supports at least two materially different constructions:
Under Applicant’s December 17, 2025 definition, the fluid source is external to the power transmission unit because the unit transfers energy from the source to an output.
Under claims 3 and 35, the fluid source is contained within and forms part of the power transmission unit.
The claims and specification provide no objective boundary for determining which construction applies or what additional components must be grouped with the fluid source to form the claimed unit.
This uncertainty directly affects the scope of claims 1 and 33. Those claims state only that the unit enables single-handed operation for the jaw to expand the tube. That functional result does not determine the structure or boundaries of the unit. Numerous different components contribute to single-handed operation, including trigger (108), piston/plunger (140/141), valves (136) and (138), fluid paths, piston (130), cone (118), and fluid source (112). The claims do not specify which of those components must be part of the power transmission unit.
The uncertainty also directly affects claims 43 and 44, which require that a portion of the power transmission unit extend at least partially into the handle. If fluid source (112) is part of the power transmission unit, the limitation may be satisfied merely because the source is located in the handle. If the source is external to the power transmission unit under Applicant’s previously asserted source-to-output definition, the location of fluid source (112) does not establish that any portion of the power transmission unit extends into the handle. The claims do not provide an objective basis for choosing between those results.
Although claims 3 and 35 expressly state that the unit contains the fluid source, those claims do not otherwise establish the boundary of the unit. They do not specify whether the unit includes only the source and pump, the entire hydraulic circuit, the piston and cone, or some other grouping of components. The word “contains” therefore does not cure the underlying uncertainty regarding what constitutes the claimed unit.
One of ordinary skill in the art, considering the claim language, specification, and prosecution history, cannot determine with reasonable certainty the structural scope and boundaries of the claimed “power transmission unit.”
Negative Claim Limitation – Without Rotating
Claims 1-5, 7-8, 21-22, 33-37, and 39-44 are rejected under 35 U.S.C. 112(b) as indefinite because the phrase “without rotating the tube expander relative to the open end portion” fails to define the scope of the claimed negative limitation with reasonable certainty.
The claims do not identify the axis, manner, or temporal scope of the prohibited “rotating.” It is therefore unclear whether the limitation prohibits: spinning the tube expander about the longitudinal axis of the tube; pivoting or reorienting the overall tube expander from one angular orientation to another, such as from a vertical orientation to a horizontal orientation; any angular movement of the tube expander during the entire method; or only relative angular movement occurring while the jaws are actively expanding the open end portion.
The originally filed specification does not use or define the disputed language and does not describe an axis or reference orientation against which rotation is to be determined. The disclosed axial movement of the cone and pivoting movement of the jaws do not resolve whether “rotating the tube expander” refers to axial spinning, gross reorientation of the entire tool, or movement of an internal component.
Applicant’s remarks filed April 24, 2025 rely on the negative limitation to distinguish the operation illustrated in Wagner, but the remarks do not define the relevant axis or identify an objective boundary for the prohibited rotation. To the extent Applicant intends to exclude the reorientation of an expander assembly from a first orientation to a different orientation, the claim does not recite pivoting, reorientation, first and second angular orientations, or an axis about which such reorientation occurs. Conversely, the literal claim language may be understood as prohibiting spinning of the expander about the longitudinal axis of the tube, which is a materially different restriction.
Because these competing interpretations produce materially different claim scopes, a person of ordinary skill in the art cannot determine with reasonable certainty what movement is excluded by the phrase “without rotating the tube expander relative to the open end portion.”
Compact Prosecution
The Office requires examiners to practice compact prosecution and should the examiner determine that an amended claim term or phrase renders the claim rejected under 35 U.S.C. 112(a), the examiner should make a rejection based on the written description requirement under 35 U.S.C. 112(a) as well as a rejection(s) in view of prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable on the examiner’s interpretation of the claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 7-8, 22, 33-35, 37, 39-40, and 42-44 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Nigido (US 3,888,102).
Claim 1:
Nigido discloses a method (abstract), comprising:
enabling a user to access a head (14, 16, 18, 20) and a tube expander (10) having a pistol-type orientation including a handle (Nigido’s vertically extending grip portion of swedger device (10) – hereinafter “the handle”), and a body (46), and a trigger (24) where the head (14, 16, 18, 20) hosts a jaw (16), the body (46) extends longitudinally along a first plane and hosts a cone (12), the head (14, 16, 18, 20) is connectable to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12), the handle longitudinally extends from the body (46) along a second plane intersecting the first plane, and the trigger is proximal to the body such that the trigger is pressable from the handle when the user holds the handle in the pistol-type orientation (fig. 1, c1, l63 bridging c2 l28 and c2, ll. 37-44);
enabling a user to connect the head (14, 16, 18, 20) to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12) (fig. 1, c2 ll. 1-28);
enabling a user to insert the jaw (16) into an open end portion of a tube (figs. 4-11, c2, ll. 29-36); and
enabling a user to cause the jaw (16) to move within the open end portion based on the trigger (24) being pressed as the user holds the handle in the pistol-type orientation and the cone (12) moving towards the jaw (16) along the first plane such that the jaw (16) expands the open end portion without rotating the tube expander (10) relative to the open end portion (figs. 4-11, c2, ll. 29-50); Nigido attributes enlargement of pipe (42) to longitudinal movement of ram (12) and resulting radial movement of fingers (38). The enlargement necessarily begins when fingers (38) move radially against the pipe, without rotation being required. Nigido’s subsequent recommendation that the device “should be rotated” is expressly for assuring a rounded enlarged surface, not for causing expansion. The claim does not require a completely uniform or perfectly circular expansion and does not prohibit rotation after expansion has begun.
wherein the tube expander (10) is a hand-holdable unit that is self-contained such that the hand-holdable unit contains a power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) enabling single-handed operation of the hand-holdable unit for the jaw (16) to expand the open end portion (fig. 1, c2, ll. 37-43 and c3, ll. 1-10); Nigido’s pistol-grip configuration, with button (24) positioned on the graspable handle, permits the user to hold the handle and press button (24) with the same hand. The claimed “enabling single-handed operation” is therefore met by the disclosed arrangement.
wherein the hand-holdable unit includes a source of a fluid (the hydraulic fluid necessarily contained within and supplied by the internal hydraulic pump/circuit) and a single-action release actuator (26) separate from the trigger (24), wherein the cone (12) moves away from the jaw (16) based on a single actuation of the single-action release actuator (26) causing the fluid to flow to the source of the fluid (fig. 1, c2, ll. 7-9). The fluid source is necessarily internal because Nigido expressly places the hydraulic pump within swedger (10); the only disclosed external connections are pneumatic input (22) and exhaust (28); no external hydraulic connection is shown or described; and an operative hydraulic pump inherently requires hydraulic working fluid. Therefore, Nigido inherently requires a source of hydraulic working fluid internal to the swedger device.
Actuation of ram-pressure-release lever (26) necessarily relieves the pressure maintaining plunger (30) and ram (12) in their advanced positions. Because Nigido’s hydraulic means are internal to the hand-held device and no external hydraulic discharge is disclosed, the released hydraulic working fluid necessarily returns toward the internal low-pressure supply side of the hydraulic circuit.
Claim 2:
Nigido discloses the method of claim 1, wherein the head (14, 16, 18, 20) is connected to the body (46) by threading (fig. 1, c2, ll. 10-14).
Claim 3:
Nigido discloses the method of claim 1, wherein the power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) contains the source of the fluid (the hydraulic fluid necessarily contained within and supplied by the internal hydraulic pump/circuit), wherein the cone (12) moves towards the jaw (16) based on the fluid flowing within the tube expander between the source of the fluid and the cone (12) (figs. 1-11, c2, ll. 29-57).
Claim 5:
Nigido discloses the method of claim 1, further comprising causing the jaw (16) to move within the open end portion based on the cone (12) moving away from the jaw (16) such that the jaw (16) disengages the open end portion (figs. 1-11, c2, ll. 7-9 and 15-27). Releasing the pressure maintaining ram (12) in its advanced position permits ram (12) to withdraw or become disengaged from fingers (38), whereupon retaining springs (36) bias fingers (38) radially inward and out of engagement with the expanded tube.
Claim 7:
Nigido discloses the method of claim 1, wherein the head (14, 16, 18, 20) includes a tubular portion extending along the first plane, wherein the jaw (16) extends from the tubular portion (fig. 1, c2, ll. 1-28).
Claim 8:
Nigido discloses the method of claim 1, wherein the first plane is perpendicular to the second plane (fig. 1).
Claim 22:
Nigido discloses the method of claim 1, wherein the jaw expands the open end portion in a radial movement (figs. 1-11, c3, l24 bridging c4, l23).
Claim 33:
Nigido discloses a method (abstract), comprising:
accessing a head (14, 16, 18, 20) and a tube expander (10) having a pistol-type orientation including a handle, and a body (46), and a trigger (24) where the head (14, 16, 18, 20) hosts a jaw (16), the body (46) extends longitudinally along a first plane and hosts a cone (12), the head (14, 16, 18, 20) is connectable to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12), the handle longitudinally extends from the body (46) along a second plane intersecting the first plane, and the trigger is proximal to the body such that the trigger is pressable from the handle when the handle is held in the pistol-type orientation (fig. 1, c1, l63 bridging c2 l28 and c2, ll. 37-44);
connecting the head (14, 16, 18, 20) to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12) (fig. 1, c2 ll. 1-28);
inserting the jaw (16) into an open end portion of a tube (42) (figs. 4-11, c2, ll. 29-36); and
causing the jaw (16) to move within the open end portion based on the trigger (24) being pressed as the handle is held in the pistol-type orientation and the cone (12) moving towards the jaw (16) along the first plane such that the jaw (16) expands the open end portion without rotating the tube expander (10) relative to the open end portion (figs. 4-11, c2, ll. 29-50);
wherein the tube expander (10) is a hand-holdable unit that is self-contained such that the hand-holdable unit contains a power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) enabling single-handed operation of the hand-holdable unit for the jaw (16) to expand the open end portion (fig. 1, c2, ll. 37-43 and c3, ll. 1-10);
wherein the hand-holdable unit includes a source of a fluid (the hydraulic fluid necessarily contained within and supplied by the internal hydraulic pump/circuit) and a single-action release actuator (26) separate from the trigger (24), wherein the cone (12) moves away from the jaw (16) based on a single actuation of the single-action release actuator (26) causing the fluid to flow to the source of the fluid (fig. 1, c2, ll. 7-9).
Claim 34:
Nigido discloses the method of claim 33, wherein the head (14, 16, 18, 20) is connected to the body (46) by threading (fig. 1, c2, ll. 10-14).
Claim 35:
Nigido discloses the method of claim 33, wherein the power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) contains the source of the fluid (the supply of hydraulic working fluid necessarily contained within the internal hydraulic pump and hydraulic circuit), wherein the cone (12) moves towards the jaw (16) based on the fluid flowing within the tube expander between the source of the fluid and the cone (12) (figs. 1-11, c2, ll. 29-57).
Claim 37:
Nigido discloses the method of claim 33, further comprising causing the jaw (16) to move within the open end portion based on the cone (12) moving away from the jaw (16) such that the jaw (16) disengages the open end portion (figs. 1-11, c2, ll. 15-21). Releasing the pressure maintaining ram (12) in its advanced position permits ram (12) to withdraw or become disengaged from fingers (38), whereupon retaining springs (36) bias fingers (38) radially inward and out of engagement with the expanded tube.
Claim 39:
Nigido discloses the method of claim 33, wherein the head (14, 16, 18, 20) includes a tubular portion extending along the first plane, wherein the jaw (16) extends from the tubular portion (fig. 1, c2, ll. 1-28).
Claim 40:
Nigido discloses the method of claim 33, wherein the first plane is perpendicular to the second plane (fig. 1).
Claim 42:
Nigido discloses the method of claim 33, wherein the jaw expands the open end portion in a radial movement (figs. 1-11, c3, l24 bridging c4, l23).
Claim 43:
Nigido discloses the method of claim 1, wherein the power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) has a portion at least partially extending in the handle (fig. 1). Button (24) is positioned on the handle and expressly controls air that actuates the hydraulic pump. Button (24) therefore necessarily communicates with an internal valve, passage, linkage, or other pneumatic-control component extending into the handle. Applicant has characterized pneumatic circuits and linkages as components of a power transmission unit. Therefore, at least a portion of Nigido’s power transmission unit extends in the handle as required by claim 43.
Claim 44:
Nigido discloses the method of claim 33, wherein the power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) has a portion at least partially extending in the handle (fig. 1). Button (24) is positioned on the handle and expressly controls air that actuates the hydraulic pump. Button (24) therefore necessarily communicates with an internal valve, passage, linkage, or other pneumatic-control component extending into the handle. Applicant has characterized pneumatic circuits and linkages as components of a power transmission unit. Therefore, at least a portion of Nigido’s power transmission unit extends in the handle as required by claim 44.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
In an alternative, claims 1-3, 5, 7-8, 21-22, 33-35, 37, and 39-44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nigido (US 3,888,102) in view of Barjesteh (US 6,619,099 B2).
Claim 1:
To the extent Nigido is not considered to expressly or inherently disclose an internal source of fluid and a hydraulic return arrangement causing fluid to flow back to that source, Nigido otherwise discloses the method of claim 1 as follows:
Nigido discloses a method (abstract), comprising:
enabling a user to access a head (14, 16, 18, 20) and a tube expander (10) having a pistol-type orientation including a handle, and a body (46), and a trigger (24) where the head (14, 16, 18, 20) hosts a jaw (16), the body (46) extends longitudinally along a first plane and hosts a cone (12), the head (14, 16, 18, 20) is connectable to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12), the handle longitudinally extends from the body (46) along a second plane intersecting the first plane, and the trigger is proximal to the body such that the trigger is pressable from the handle when the user holds the handle in the pistol-type orientation (fig. 1, c1, l63 bridging c2 l28 and c2, ll. 37-44);
enabling a user to connect the head (14, 16, 18, 20) to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12) (fig. 1, c2 ll. 1-28);
enabling a user to insert the jaw (16) into an open end portion of a tube (figs. 4-11, c2, ll. 29-36); and
enabling a user to cause the jaw (16) to move within the open end portion based on the trigger (24) being pressed as the user holds the handle in the pistol-type orientation and the cone (12) moving towards the jaw (16) along the first plane such that the jaw (16) expands the open end portion without rotating the tube expander (10) relative to the open end portion (figs. 4-11, c2, ll. 29-50);
wherein the tube expander (10) is a hand-holdable unit that is self-contained such that the hand-holdable unit contains a power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) enabling single-handed operation of the hand-holdable unit for the jaw (16) to expand the open end portion (fig. 1, c2, ll. 37-43 and c3, ll. 1-10).
Nigido discloses all limitations of claim 1 except, to the extent not expressly or inherently disclosed, an internal source of fluid and a hydraulic return arrangement causing fluid to flow back to that source. Barjesteh expressly discloses oil within the reservoir (54); supply passages (32, 33, 34); pressure chamber (75); hydraulic piston (22); return passages (55, 56, 57); relief valve (62); and return of oil to reservoir (54).
Barjesteh further discloses lever arm (42) as the pump actuator or trigger and relief-valve nub (62) as a separate release actuator. Turning nub (62) opens the relief valve, releases the hydraulic pressure in pressurized cylinder (75), and directs oil through return passages (55), (56), and (57) to reservoir (54). Release of the hydraulic pressure permits piston (22) and expander (15) to return, thereby allowing die elements (104) to return radially inward. Thus, a single operation of release actuator (62) causes fluid to flow back to its source and enables the expander to move away from the die elements.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide Nigido’s internal hydraulic means with an internal hydraulic-fluid reservoir and associated supply and return passages as taught by Barjesteh. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both references concern portable, hand-operated hydraulic tube expanders in which hydraulic pressure moves an axial tapered ram or expander to drive circumferential jaw or die elements radially outward. Providing Nigido’s hydraulic pump with Barjesteh’s known internal reservoir arrangement would ensure a readily available and recirculating supply of hydraulic working fluid for repeatedly advancing and releasing ram (12), while maintaining the portability and compactness of the hand-held tool. The modification would amount to applying Barjesteh’s known hydraulic-fluid supply arrangement to Nigido’s known hydraulic tube expander to obtain the predictable result of a self-contained hydraulic-fluid supply within the hand-holdable unit.
Claim 2:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the head (Nigido, 14, 16, 18, 20) is connected to the body (Nigido, 46) by threading (Nigido, fig. 1, c2, ll. 10-14).
Claim 3:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the power transmission unit (Nigido’s pneumatic-control valve and passages associated with button (24), hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) contains the source of the fluid (Barjesteh, 54), wherein the cone (Nigido, 12) moves towards the jaw (Nigido, 16) based on the fluid flowing within the tube expander between the source of the fluid and the cone (Nigido, 12) (Nigido, figs. 1-11, c2, ll. 29-57 and Barjesteh, figs. 1-5, c4, ll. 5-12 and c4, ll. 20-25).
Claim 5:
Nigido in view of Barjesteh renders obvious the method of claim 1, further comprising causing the jaw (Nigido, 16) to move within the open end portion based on the cone (Nigido, 12) moving away from the jaw (Nigido, 16) such that the jaw (Nigido, 16) disengages the open end portion (Nigido, figs. 1-11, c2, ll. 7-9 and 15-27).
Claim 7:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the head (Nigido, 14, 16, 18, 20) includes a tubular portion extending along the first plane, wherein the jaw (Nigido, 16) extends from the tubular portion (Nigido, fig. 1, c2, ll. 1-28).
Claim 8:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the first plane is perpendicular to the second plane (Nigido, fig. 1).
Claim 21:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the handle contains the source of the fluid (Barjesteh, 54) enabling the cone to move (Barjesteh, figs. 1-5, c4, ll. 5-12 and c4, ll. 20-25). Barjesteh describes apparatus (10) as a portable, manually operated hand tool capable of one-handed operation. Pump body (40) is an elongated graspable portion toward which lever (42) is pressed during pumping and therefore constitutes a handle under BRI. Oil reservoir (54) is expressly located within the rear portion of pump body (40). Barjesteh consequently teaches locating a source of hydraulic fluid within a graspable handle/pump body.
It would have been obvious to position the internal hydraulic-fluid reservoir taught by Barjesteh within Nigido’s available pistol-grip handle to provide a compact fluid supply, favorable weight distribution, and a self-contained portable configuration.
Claim 22:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the jaw expands the open end portion in a radial movement (Nigido, figs. 1-11, c3, l24 bridging c4, l23).
Claim 33:
To the extent Nigido is not considered to expressly or inherently disclose an internal source of fluid and a hydraulic return arrangement causing fluid to flow back to that source, Nigido otherwise discloses the method of claim 33 as follows:
Nigido discloses a method (abstract), comprising:
accessing a head (14, 16, 18, 20) and a tube expander (10) having a pistol-type orientation including a handle, and a body (46), and a trigger (24) where the head (14, 16, 18, 20) hosts a jaw (16), the body (46) extends longitudinally along a first plane and hosts a cone (12), the head (14, 16, 18, 20) is connectable to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12), the handle longitudinally extends from the body (46) along a second plane intersecting the first plane, and the trigger is proximal to the body such that the trigger is pressable from the handle when the user holds the handle in the pistol-type orientation (fig. 1, c1, l63 bridging c2 l28 and c2, ll. 37-44);
connecting the head (14, 16, 18, 20) to the body (46) such that the head (14, 16, 18, 20) encloses the cone (12) (fig. 1, c2 ll. 1-28);
inserting the jaw (16) into an open end portion of a tube (figs. 4-11, c2, ll. 29-36); and
causing the jaw (16) to move within the open end portion based on the trigger (24) being pressed as the handle is held in the pistol-type orientation and the cone (12) moving towards the jaw (16) along the first plane such that the jaw (16) expands the open end portion without rotating the tube expander (10) relative to the open end portion (figs. 4-11, c2, ll. 29-50);
wherein the tube expander (10) is a hand-holdable unit that is self-contained such that the hand-holdable unit contains a power transmission unit (the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) enabling single-handed operation of the hand-holdable unit for the jaw (16) to expand the open end portion (fig. 1, c2, ll. 37-43 and c3, ll. 1-10).
Nigido discloses all limitations of claim 33 except, to the extent not expressly or inherently disclosed, an internal source of fluid and a hydraulic return arrangement causing fluid to flow back to that source. Barjesteh expressly discloses oil within the reservoir (54); supply passages (32, 33, 34); pressure chamber (75); hydraulic piston (22); return passages (55, 56, 57); relief valve (62); and return of oil to reservoir (54).
Barjesteh further discloses lever arm (42) as the pump actuator or trigger and relief-valve nub (62) as a separate release actuator. Turning nub (62) opens the relief valve, releases the hydraulic pressure in pressurized cylinder (75), and directs oil through return passages (55), (56), and (57) to reservoir (54). Release of the hydraulic pressure permits piston (22) and expander (15) to return, thereby allowing die elements (104) to return radially inward. Thus, a single operation of release actuator (62) causes fluid to flow back to its source and enables the expander to move away from the die elements.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide Nigido’s internal hydraulic means with an internal hydraulic-fluid reservoir and associated supply and return passages as taught by Barjesteh. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both references concern portable, hand-operated hydraulic tube expanders in which hydraulic pressure moves an axial tapered ram or expander to drive circumferential jaw or die elements radially outward. Providing Nigido’s hydraulic pump with Barjesteh’s known internal reservoir arrangement would ensure a readily available and recirculating supply of hydraulic working fluid for repeatedly advancing and releasing ram (12), while maintaining the portability and compactness of the hand-held tool. The modification would amount to applying Barjesteh’s known hydraulic-fluid supply arrangement to Nigido’s known hydraulic tube expander to obtain the predictable result of a self-contained hydraulic-fluid supply within the hand-holdable unit.
Claim 34:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the head (Nigido, 14, 16, 18, 20) is connected to the body (Nigido, 46) by threading (Nigido, fig. 1, c2, ll. 10-14).
Claim 35:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the power transmission unit (Nigido’s pneumatic-control valve and passages associated with button (24), hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) contains the source of the fluid (Barjesteh, 54), wherein the cone (Nigido, 12) moves towards the jaw (Nigido, 16) based on the fluid flowing within the tube expander between the source of the fluid and the cone (Nigido, 12) (Nigido, figs. 1-11, c2, ll. 29-57 and Barjesteh, figs. 1-5, c4, ll. 5-12 and c4, ll. 20-25).
Claim 37:
Nigido in view of Barjesteh renders obvious the method of claim 33, further comprising causing the jaw (Nigido, 16) to move within the open end portion based on the cone (Nigido, 12) moving away from the jaw (Nigido, 16) such that the jaw (Nigido, 16) disengages the open end portion (Nigido, figs. 1-11, c2, ll. 7-9 and 15-27).
Claim 39:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the head (Nigido, 14, 16, 18, 20) includes a tubular portion extending along the first plane, wherein the jaw (Nigido, 16) extends from the tubular portion (Nigido, fig. 1, c2, ll. 1-28).
Claim 40:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the first plane is perpendicular to the second plane (Nigido, fig. 1).
Claim 41:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the handle contains the source of the fluid (Barjesteh, 54) enabling the cone to move (Barjesteh, figs. 1-5, c4, ll. 5-12 and c4, ll. 20-25). Barjesteh describes apparatus (10) as a portable, manually operated hand tool capable of one-handed operation. Pump body (40) is an elongated graspable portion toward which lever (42) is pressed during pumping and therefore constitutes a handle under BRI. Oil reservoir (54) is expressly located within the rear portion of pump body (40). Barjesteh consequently teaches locating a source of hydraulic fluid within a graspable handle/pump body.
It would have been obvious to position the internal hydraulic-fluid reservoir taught by Barjesteh within Nigido’s available pistol-grip handle to provide a compact fluid supply, favorable weight distribution, and a self-contained portable configuration.
Claim 42:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the jaw expands the open end portion in a radial movement (Nigido, figs. 1-11, c3, l24 bridging c4, l23).
Claim 43:
Nigido in view of Barjesteh renders obvious the method of claim 1, wherein the power transmission unit (Nigido, the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) has a portion at least partially extending in the handle (Nigido, fig. 1).
Claim 44:
Nigido in view of Barjesteh renders obvious the method of claim 33, wherein the power transmission unit (Nigido, the pneumatic-control valve and passages associated with button (24), the hydraulic pump and hydraulic circuit, plunger (30), and associated force-transmitting components) has a portion at least partially extending in the handle (Nigido, fig. 1).
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nigido in view of Barjesteh as applied to claim 3 above, and further in view of Lefavour et al. (US 2007/0214861 A1).
Claim 4:
Nigido in view of Barjesteh renders obvious the method of claim 3; and Nigido in view of Barjesteh fails to disclose the tube expander includes a first valve positioned between the source of the fluid and the second valve, wherein the second valve causes the fluid to enable the cone to move toward the jaw.
Lefavour discloses a hydraulic drive system comprising hydraulic-fluid reservoir (28), pump inlet check valve (46), piston-pump hole (36), pump outlet check valve (48), ram cylinder (30), and ram (32). Pump inlet check valve (46) is positioned in the fluid-flow path between reservoir (28) and pump outlet check valve (48). Lefavour explains that piston-pump member (44) and pump inlet check valve (46) allow hydraulic fluid to be drawn from reservoir (28) into piston-pump hole (36) and subsequently pushed through pump outlet check valve (48) into ram cylinder (30), thereby moving ram (32) (fig. 6; ¶¶23-24). Pump inlet check valve (46) corresponds to the claimed first valve, and pump outlet check valve (48) corresponds to the claimed second valve that permits pressurized fluid to cause movement of the driven ram.
It would have been obvious to one of ordinary skill in the art to employ Lefavour’s serial pump inlet and outlet check-valve arrangement in the hydraulic pump of the modified Nigido/Barjesteh tube expander. Both Barjesteh and Lefavour employ reciprocating hydraulic pump pistons to draw fluid from an internal reservoir and direct pressurized fluid to a driven piston or ram. Employing an inlet check valve upstream of an outlet check valve would provide controlled one-way flow from the reservoir into the pump chamber and from the pump chamber into the pressure chamber, prevent reverse flow, and maintain hydraulic pressure acting on Nigido’s plunger (30) and ram (12). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because the modification constitutes the use of a known hydraulic-pump arrangement to obtain the predictable result of controlled forward fluid flow for advancing ram (12) and expanding fingers (38).
Claim 36 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nigido in view of Barjesteh as applied to claim 35 above, and further in view of Lefavour et al. (US 2007/0214861 A1).
Claim 36:
Nigido in view of Barjesteh renders obvious the method of claim 35; and Nigido in view of Barjesteh fails to disclose the tube expander includes a first valve positioned between the source of the fluid and the second valve, wherein the second valve causes the fluid to enable the cone to move toward the jaw.
Lefavour discloses a hydraulic drive system comprising hydraulic-fluid reservoir (28), pump inlet check valve (46), piston-pump hole (36), pump outlet check valve (48), ram cylinder (30), and ram (32). Pump inlet check valve (46) is positioned in the fluid-flow path between reservoir (28) and pump outlet check valve (48). Lefavour explains that piston-pump member (44) and pump inlet check valve (46) allow hydraulic fluid to be drawn from reservoir (28) into piston-pump hole (36) and subsequently pushed through pump outlet check valve (48) into ram cylinder (30), thereby moving ram (32) (fig. 6; ¶¶23-24). Pump inlet check valve (46) corresponds to the claimed first valve, and pump outlet check valve (48) corresponds to the claimed second valve that permits pressurized fluid to cause movement of the driven ram.
It would have been obvious to one of ordinary skill in the art to employ Lefavour’s serial pump inlet and outlet check-valve arrangement in the hydraulic pump of the modified Nigido/Barjesteh tube expander. Both Barjesteh and Lefavour employ reciprocating hydraulic pump pistons to draw fluid from an internal reservoir and direct pressurized fluid to a driven piston or ram. Employing an inlet check valve upstream of an outlet check valve would provide controlled one-way flow from the reservoir into the pump chamber and from the pump chamber into the pressure chamber, prevent reverse flow, and maintain hydraulic pressure acting on Nigido’s plunger (30) and ram (12). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because the modification constitutes the use of a known hydraulic-pump arrangement to obtain the predictable result of controlled forward fluid flow for advancing ram (12) and expanding fingers (38).
Response to Arguments
Applicant filed no new arguments with the Request for Continued Examination (RCE) filed 15 May 2026.
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 16 April 2026, with respect to the rejections of claims 1-5, 7-8, 21-22, 33-37 and 39-44 have been fully considered. Applicant’s arguments directed specifically to the teachings of Schramm, Dunn, and the previously applied combinations are moot in view of the new grounds relying on Nigido, Barjesteh, and Lefavour. Applicant’s claim-construction arguments, including its characterization of “power transmission unit” as encompassing hydraulic or pneumatic circuits, linkages, and drives, have been considered and applied consistently in construing the pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Hansenberg et al. (US 9,492,857 B2) discloses a hand-held flaring tool. Geurts (US 2003/0204943 A1) discloses a hand-held pipe end expanding tool. Velte (US 5,046,349) discloses a hand-held expansion tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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/Lee A Holly/Primary Examiner, Art Unit 3726 19 August 2026
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