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 .
Response to Amendment
This office action is responsive to the amendment filed on 11 May 2026. As directed by the amendment: claims 1 & 18 have been amended. Claims 2-3, 6-7 & 9-15 were cancelled by previous amendments. Thus, claims 1, 4-5, 8 & 16-19 are presently pending in this application.
It is noted that applicant’s submission on 11 May 2026 includes a section entitled “Amendments to the Drawings”, which recites “Amendments to the Drawings are attached to this paper and include Replacement Sheets”, however, no amended drawings or replacement sheets were actually provided.
Drawings
Examination Note: as explained above, it appears replacement drawings were inadvertently omitted from applicant’s latest submission. The remarks suggest applicant intended to amend FIG. 7 so that the screw-type extruder would be indicated by “9”, rather than “8”, which was already used to indicate the heat insulation sleeve in fig. 5. Such an amendment, if properly provided, would resolve the issues below. However, no such amended drawing has yet been filed.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “8” has been used to designate both the heat insulation sleeve (fig. 5; paras 56-57) and the screw-type extruder (fig. 7; para 60).
The drawings are further objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description: “9” (“screw-type extruder 9” in amended paragraph 60).
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. 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.
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, 4, 5, 8 & 16-19 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.
The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. [MPEP § 2163(I)(B)].
Claim 1 has been amended to recite “wherein confinement within the extrusion due causes the heat tracing band to be plastically bent from an initial flat configuration into a curved configuration matching the curvature of the outer layer” (lines 13-15).
Applicant’s remarks filed 11 May 2026 point to paragraphs 23 and 63 as providing support, however, these paragraphs do not provide sufficient support for the limitation wherein the heat tracing band is “plastically bent” and, furthermore, do not provide sufficient support for the limitation wherein such plastic bending is due to “confinement within the extrusion die” as is now being claimed.
For context, a solid material will experience reversible “elastic deformation” when subjected to a stress below its elastic limit (yield strength), and will experience irreversible “plastic deformation” when subjected to a stress above its elastic limit (yield strength). After removal of the stress, an elastically deformed material will return to its original shape, while a plastically deformed material will remain at least partially deformed.
Paragraph 23 of applicant’s specification states that the heating and fixing layer “may shrink because of being far away caused by thermal expansion and cold contraction during cooling after molding, and a uniform extrusion force is applied… so that the heat tracing band is bent and deformed, and more tightly attached”.
Paragraph 63 states that “during solidification and cooling... an extrusion force is applied... due to an inward shrinkage trend caused by thermal expansion and cold contraction, so that the...layers are tightly attached together."
Applicant’s remarks propose that “[t]hese descriptions convey that bending is permanent (retained after solidification) and results from plastic-like deformation under the extrusion pressure and shrinkage forces”.
The above portions do generally support the heat tracing band being bent, but by inward shrinkage of the fixing layer during solidification and cooling, rather than due to “confinement within the extrusion die”, per se.
With respect to the recited “extrusion pressure”, it is noted that while the term “extrusion force” is used in the recited portions to describe the force applied to the outer layer and heat tracing band by the fixing layer, this force is attributed to “inward shrinkage…caused by thermal expansion and cold contraction” during “solidification and cooling”, i.e., not necessarily from “extrusion pressure” as may be applied during the actual extrusion step.
The subsequent permanence of the bent configuration is understood to be due to the continued presence of the fixing layer, contracted around the heat tracing band during cooling, rather than as a result of some inherent shape retention by the heat tracing band itself.
"To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) [MPEP § 2163(II)(A)(3)(b)].
While the specification recites that the heat tracing band is “bent and deformed” (by inward shrinkage of the fixing layer), it does not specifically state whether the bending and deformation of the heat tracing band is elastic or plastic deformation. As long as the fixing layer remains disposed around the heat tracing band, the bent configuration would be “permanently retained”, whether the deformation of the heat tracing band itself was elastic or plastic. As such, insofar as the original specification supports the heat tracing band being permanently retained in the bent configuration, plastic deformation of the heat tracing band itself is neither inherent nor implicitly required for such permanent retention of the bent configuration.
A review of the specification as originally filed does not reveal any additional explicit support for the heat tracing band to be “plastically bent” due to “confinement within the extrusion die” as is now being claimed.
Furthermore, the specification appears to caution against application of forces to a local position of a heat tracing band in order to avoid damage (see para. 6, lines 4-6 & para. 63, lines 6-8). In view of applicant’s specification, a person having ordinary skill in the art would likely not have understood the disclosure as intending to “permanently deform” the heat tracing band, but to deform the heat tracing band only to the degree required to conform to the outer layer of the inner water supply pipe, where it can be retained by the fixing layer.
Claims recited in the section heading above but not specifically discussed are rejected due to dependency upon at least one rejected claim
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, 4, 5, 8 & 16-19 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.
As set forth in MPEP § 2173.03, a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.
Regarding claim 1, as discussed in the grounds of rejection under 35 U.S.C. 112(a) above, the claim has been amended to recite “wherein confinement within the extrusion due causes the heat tracing band to be plastically bent from an initial flat configuration into a curved configuration matching the curvature of the outer layer” (lines 13-15). While the specification discloses that the heat tracing band may be bent by inward contraction of the fixing layer during solidification and cooling, the specification does not specifically disclose “plastic” deformation, and does not attribute such deformation to be due to “confinement within the extrusion die” as now claimed, causing the scope of the claims to take on an unreasonable degree of uncertainty.
Claims recited in the section heading above but not specifically discussed are rejected due to dependency upon at least one rejected claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1, 5, 8 & 17-19 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Cold Weather Heated Drinking Water Hoses by Camco Manufacturing, Inc. (e.g., Model Nos. 22900, 22902 & 22903; as disclosed in related NPL references “Cold Weather Heated Drinking Water Hoses” [webpage, 2014 or earlier] on Camco.net and related YouTube video entitled “Heating Drinking Water Hose” [14 Jan 2014]; see PTO-892 provided 04/01/2025; hereafter “Camco”) in view of Heise (US 2003/0079787), Leray et al. (US 2001/0008150 A1; hereafter Leray), Leavines (US 4,152,577), Harvey (US 2,793,280), and McCabe et al. (US 8,344,293; hereafter McCabe).
Examination Note I: The 2014 Camco webpage included a link to the cited 2014 YouTube video, and each cites the same model numbers. Additionally, the webpage contains an image gallery which appears to have originally included an embedded version of the same YouTube video (i.e., the video was intended to be “incorporated” into the webpage), though the embedded video player was not functional in the archived version. Regardless, these contemporaneous references are reasonably seen as collectively forming a joint multi-media disclosure of the same underlying products.
Examination Note II: while not directly cited for this rejection, it is noted that the Camco hose products shown in the cited references above also appear to correspond to a design patent US D720,438 S to Camco Manufacturing, Inc., filed 7 Jan 2014 and issued 30 Dec 2014.
Regarding claim 1, the Camco references disclose a heating anti-freezing hose (e.g., models 22900, 22902, 22903) with a heat tracing band (“Heat Tracing Band” annotated below; described as “Self-regulating Heat Source” in the video and webpage), comprising a heating hose body (as shown; the hose body, generally); wherein the heating hose body comprises the heat tracing band (“Heat Tracing Band” annotated below), an inner water supply pipe (incl. the inner barrier layer, mesh layer, and outer layer), and a fixing layer (“Fixing Layer”, below; i.e., the “all-weather PVC Coating” as in the video and webpage); the inner water supply pipe comprises an inner barrier layer (“Inner Barrier Layer”), a fiber mesh layer (“Mesh Layer”; see below) and an outer layer (“Outer Layer”) which are sequentially laminated from inside to outside; one side of the heat tracing band is attached to an outer side of the outer layer (as shown), the fixing layer is formed as a polymer material over both components, such that the heat tracing band and the outer layer are constrained together by the fixing layer (as shown; see webpage: “Drinking water hose and heater encapsulated in an all-weather PVC coating for durability”); wherein the heat tracing band is initially a flat strip having a width greater than its thickness (as shown);
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wherein the fixing layer mechanically maintains continuous surface contact between the heat tracing band and the outer layer along substantially an entire length of the heating hose body without adhesives, tapes, clamps, or post-installation fastening operations (as shown, the heat tracing band and the outer layer are reasonably shown as maintained in continuous contact along substantially the entire length of the hose, mechanically joined by the fixing layer, at least in the same manner as applicant’s disclosed embodiments, with no adhesives, tapes, clamps, or fastening required to maintain the arrangement).
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Regarding the “fiber mesh layer”, while it may be difficult to discern in the images provided in this action, viewing frames from the original higher-resolution video more readily reveals that the fiber mesh layer is laminated between the “inner barrier layer” (the opaque white layer) and the “outer layer” (the clear layer). This is most evident at the edge of the sectioned portion of the clear layer, which shows the edge of the fiber layer, and also indirectly evident by indents formed in the outer surface of the white layer where the other layers have been removed, the indents matching the mesh pattern of the fiber layer, indicating that the fiber layer was previously overlying the white layer. These features, though perhaps difficult to see in this format, are annotated in a separate figure below.
Regarding the limitations wherein the heat tracing band is fixed by extrusion molding, Camco explains that the disclosed hose “provides safe drinking water in below freezing temperatures by combining a drinking-water-safe hose with a self-regulating heat source encapsulated in an all weather PVC coating…”. When considering the disclosures of Camco, a person of ordinary skill in the art would have reasonably concluded that the fixing layer (i.e., the PVC encapsulation layer), shown as wrapped (i.e., disposed on / positioned around) on the outer side of the heat tracing band and the outer reinforced layer, would also have served to fix the heat tracing band to the inner water supply pipe. See also the teachings of Heise below.
Camco does not explicitly disclose the additional limitations wherein:
the fixing layer is formed by simultaneously feeding the inner water supply pipe and the heat tracing band through a common extrusion die and extruding molten polymer material over both components, followed by cooling and solidification of the molten polymer material, such that the heat tracing band and the outer layer are constrained together within the extrusion die during formation of the fixing layer;
wherein confinement within the extrusion die causes the heat tracing band to be plastically bent from an initial flat configuration into a curved configuration matching a curvature of the outer layer;
wherein the curved configuration of the heat tracing band is retained permanently after extrusion by solidification of the fixing layer without any external clamp or cover, to form the heating hose body as a unitary structure;
wherein at least one end of the heat tracing band extends longitudinally beyond a corresponding end of the heating hose body; and a part of the heat tracing band extending out of the heating hose body is configured to be wound on a water supply connector of a water source or a water receiving end;
wherein the heating anti-freezing hose further comprises a heat insulation sleeve, wherein the heat insulation sleeve, when installed over the water supply connector of the water source and/or the water receiving end, reduces heat loss from a connector region; or
wherein a length of an end portion of the heat tracing band extending beyond of an end portion of the heating hose body is 20 cm to 50 cm.
Heise teaches a heated hose (figs. 1 & 2) and a method of manufacturing the same (fig. 4), the heated hose comprising a heat tracing band (24; see para. 18) fixed by extrusion molding (see fig. 4 & para. 20) and an inner water supply pipe (12); one side of the heat tracing band is attached to an outer side (20) of a water pipe layer (14), wherein the heated hose further comprises a fixing layer (30; see fig. 2; “jacket 30” in para. 19); the fixing layer is formed by simultaneously feeding the inner water supply pipe (12) and the heat tracing band (24) through a common extrusion die (40) and extruding molten polymer material (“feed stock for the jacket 30”) over both components (as shown in figs. 1, 2, 4), followed by cooling and solidification of the molten polymer material (para. 20: “continued movement…conjointly through the die allows the jacket 30 to solidify…”), such that the heat tracing band and the outer layer are constrained together within the extrusion die during formation of the fixing layer (as shown);
Heise explains that the fixing layer is “entrained about the peripheral wall and heating element to maintain the heating element in contact with the peripheral wall” (para. 8). In other words, the heat tracing band is fixed to the hose by the extruded fixing layer.
Heise further explains that the fixing layer holds the heat tracing band against the outer surface of the pipe such that, after application, the fixing layer is “taught” [i.e., “taut”; in tension, as understood], so as to force the heat tracing band into abutment with the outer surface of the pipe, causing a slight deformation to ensure “a substantial contact area between” the heat tracing band and the pipe over the length of the hose (para. 19). Thus, the fixing layer mechanically maintains continuous surface contact between the heat tracing band and the outer layer along substantially an entire length of the heating hose body without adhesives, tapes, clamps, or post-installation fastening operations.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the heating anti-freezing hose of Camco such that the fixing layer is formed by simultaneously feeding the inner water supply pipe and the heat tracing band through a common extrusion die and extruding molten polymer material over both components, followed by cooling and solidification of the molten polymer material, such that the heat tracing band and the outer layer are constrained together within the extrusion die during formation of the fixing layer; whereby the heat tracing band is fixed by said extrusion molding, in view of the teachings of Heise, as the use of a known technique (i.e., extruding a fixing layer over both a heat tracing band and inner water supply pipe through a common extrusion die, as in Heise) to improve a similar device (the heating anti-freezing hose of Camco, having such a fixing layer molded or otherwise disposed over both a heat tracing band and inner water supply pipe) in the same way (e.g., to enable the heat tracing band and water supply pipe to be fixed together and jointly encapsulated in the fixing layer in an efficient single step manner, and which may enable the joining/encapsulation operation be performed in a continuous process vs other molding or joining methods which operate on discrete lengths of hose, etc.; and which may enable the fixing layer to force the heat tracing band into abutment with the outer layer of the inner water supply pipe with sufficient force to cause deformation at the abutment, to ensure a substantial contact area between the heat tracing band and the inner water supply pipe over the length of the hose, as further suggested by Heise).
Regarding the limitations wherein confinement within the extrusion die causes the heat tracing band to be plastically bent from an initial flat configuration into a curved configuration matching a curvature of the outer layer, and wherein the curved configuration of the heat tracing band is retained permanently after extrusion by solidification of the fixing layer without any external clamp or cover, to form the heating hose body as a unitary structure, as noted above, Heise teaches (para. 19) that the water supply pipe and heat tracing band are confined together within the extrusion die when the fixing layer is extruded thereon, said fixing layer configured to force the heat tracing band into abutment with the outer layer of the inner water supply pipe. As the heat tracing band is pliable, this results in a zone of deformation (34 in fig. 2) which ensures “a substantial contact area” between the heat tracing band and the outer side of the water pipe layer “over the length of the conduit”.
While the heat tracing band of Heise is shown to have a round cross-section, the heat tracing band of Camco has an initially flat cross-section such that, when the extruded fixing layer applies inward force to the heat tracing band, to press the heat tracing band against the outer layer of the inner water supply pipe, the resulting arrangement would reasonably read on the additional limitation wherein confinement within the extrusion die causes the [flat] heat tracing band to be bent from an initial flat configuration into a curved configuration matching a curvature of the outer layer, wherein the curved configuration of the heat tracing band is retained permanently after extrusion by solidification of the fixing layer without any external clamp or cover, to form the heating hose body as a unitary structure. However, to promote compact prosecution, the following additional teaching is provided.
Leavines teaches (various embodiments in figs. 1-5) a heated conduit comprising a pipe body (P) and a heat tracing band (11) of the type which conventionally has a “generally flat or semi-flat surface for contacting the surface of the pipe” (col. 3, lines 4-9). Leavines proposes that a cover (10) may be employed to press the heat tracing band down against the surface of the pipe “with sufficient uniformity of pressure and contact that acceptable heat transfer is obtained comparable to that realized when using heat transfer cement”, and suggests that the covers are shaped/sized to ensure that at least 25% of the heat tracing band surface contacts the outer surface of the pipe body (col. 3, lines 10-20; see abstract). As can be seen from figs. 2-5, the heat tracing band is bent from an initial flat configuration (as described) into a curved configuration matching a curvature of the outer surface.
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the heating hose of Camco, as otherwise modified above, such that confinement within the extrusion die (i.e. during the application of the fixing layer under pressure) causes the heat tracing band to be bent from an initial flat configuration into a curved configuration matching a curvature of the outer layer, wherein the curved configuration of the heat tracing band is retained permanently after extrusion by solidification of the fixing layer without any external clamp or cover, to form the heating hose body as a unitary structure (i.e., due to compression of the heat tracing band against the outer layer by the extruded fixing layer), in view of the combined teachings of Heise and Leavines, as a combination of known prior art methods (i.e., using an extruded outer fixing layer to compress and permanently retain a heat tracing band against an outer water pipe layer, as in Heise; and compressing an initially flat heat tracing band against an outer pipe surface using a cover to deform the heat tracing band so as to conform to the outer pipe surface, as in Leavines) according to known methods (i.e., as in each of Heise and Leavines) to obtain predictable results (i.e., the hose of Camco, as otherwise modified, wherein the flat heat tracing band is compressed against the outer layer so as to deform into a curved configuration conforming to the outer layer to maximize contact area, wherein the cover providing the compression is formed as a fixing layer extruded over the outer layer and heat tracing band, permanently retaining the heat tracing band in the curved configuration against the outer layer).
With respect to the limitation wherein the heat tracing band is “plastically bent” from the initial flat configuration, it is first noted that applicant’s original specification does not appear to provide sufficient support for this limitation, resulting in an inconsistency between the specification and claims which causes the claims to take on an unreasonable degree of uncertainty (see 35 U.S.C. 112(a) and (b) rejections in this action). Nevertheless, to promote compact prosecution, the following findings with respect to 35 U.S.C. 103 are provided.
The limitation wherein the heat tracing band is “plastically” bent from an initial flat configuration is a product-by-process limitation. As set forth in MPEP § 2113(I), "[E]ven though product-by-process claims are 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) (citations omitted).
The structure implied by the process steps is considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. In the instant case, however, it does not appear that the heat tracing band being plastically bent (rather than elastically bent) would be expected to impart distinctive structural characteristics to the final product, especially since, in either case, the fixing layer would serve to retain the heat tracing band in the curved configuration after extrusion.
As set forth in MPEP § 2113(II), "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product.
In the instant case, because the fixing layer functions to permanently retain the heat tracing band in the curved configuration after extrusion, the final product (e.g., when viewed in cross-section) would be the same whether the heat tracing band was initially elastically or plastically bent into said curved configuration, and the resulting final product would reasonably be expected to function the same in either case.
While a plastically bent band and an elastically bent band might behave differently when the bending force is removed (e.g., an elastically bent band returning to its initial flat configuration, a plastically bent band maintaining at least some deformation), this would be not be a characteristic relevant for the final product, where the fixing layer permanently retains the bend. Furthermore, this difference would be expected and predictable, rather than a nonobvious difference.
With respect to the limitation wherein solidification of the fixing layer forms “the heating hose body as a unitary structure”, the heating hose body resulting from the above combinations, having a laminated inner water supply pipe and heat tracing band permanently joined together via solidification of the fixing layer extruded thereon, is reasonably seen as being “a unitary structure”. However, to promote compact prosecution, following additional teachings are provided:
Camco discloses that the fixing layer is made from PVC (polyvinyl chloride), but is silent as to the material used for the outer layer. Heise suggests that an inner water supply pipe may be “formed from a suitable material such as PVC, polyethylene, … PEX, ABS, or other suitable material well known in the pipe manufacturing field” (para. 17), and otherwise suggests that the “jacket 30 is formed from a polyethylene…or other suitable material compatible [with] the materials of the cable 24 and wall 14”, thus reasonably suggesting that each of the fixing layer and water pipe layer may be extruded from the same material.
Leray teaches (fig. 1) a water supply hose comprising an inner barrier layer (1), a fiber mesh layer (3; comprising a braided mesh of fibers 4 fixed in a linking layer 2), and an outer layer (5). The background section of Leray suggests that the water supply hose is intended for use in transporting hot (i.e., heated) water and, in particular, drinkable (potable) water (see para. 1 & 2). See also para. 42: “The ingredients used in making up the composition of the hose above appear in the European list of Resolution A96-5 thus authorizing use of the hose under conditions where it comes briefly and repetitively into contact with water”.
Leray teaches that the hose is formed by extruding together the inner layer and linking layer, braiding the fibers around the linking layer to form the fiber mesh layer, and then partially re-melting the linking layer before extruding the outer layer over the fiber mesh layer (see paras. 43-45).
Finally, it is noted that each of the layer of the hose of Leray, including the inner barrier layer, the linking portion of the fiber mesh layer, and the outer layer, is disclosed as being formed from the same material, PVC (polyvinyl chloride; see abstract), with the fibers of the fiber mesh layer being a plastic material fiber such as polyester, polyamide, or aramid (para. 41).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to produce the hose of Camco utilizing PVC (polyvinyl chloride) to form the outer layer, in view of the teachings of Leray, whereby the outer layer and the fixing layer would be made of the same material (i.e., PVC), since Camco discloses that the inner water supply hose of the heated drinking water hose is intended to be safe for drinking water, and Leray teaches a corresponding hose construction utilizing PVC compositions for analogous layers of a water supply hose intended to be particularly suitable for use with heated, drinkable water, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
When the hose of Camco, which has PVC fixing layer, is modified in view of Heise as above such that the fixing layer is formed by extrusion over the outer layer, and is modified in view of Leray as above such that the outer layer is also formed from PVC, the resulting hose formed from such materials and by such a method (i.e., via extruding a molten layer of thermoplastic material [PVC] over a layer of the same thermoplastic material [PVC] within an extrusion die) would reasonably result in the heating hose body being formed “as a unitary structure” after solidification, in at least the same manner as applicant’s disclosed embodiment.
With respect to the limitations wherein at least one end of the heat tracing band extends longitudinally beyond a corresponding end of the heating hose body; a part of the heat tracing band extending out of the heating hose body is configured to be wound on a water supply connector of a water source or a water receiving end, and wherein a length of an end portion of the heat tracing band extending beyond an end portion of the heating hose body is 20 cm to 50 cm, while not explicitly disclosed by Camco, the hose of Camco is intended to be connected between a water supply connector of a water source (at a female configured end) and a water supply connector of a water receiving end (at a male configured end) in use (e.g., as between a fixed water supply hookup and an RV or trailer, as suggested in the video).
Harvey teaches (figs. 1-9) a heating anti-freezing hose (10) comprising a heat tracing arrangement (incl. heat tracing bands 44 & 66 arranged at the ends, and braided heating wires 28 & 30 arranged along the length of the body), wherein one end of a heat tracing band (44 [incl. parallel electrical cores 40, 42] or 66 [incl. parallel electrical cores 62, 64]) extends out of a corresponding end of the heating hose body, or each of two ends of the heat tracing band (i.e., 44 and 66) extend out of a respective one of the two ends of the heating hose body (as shown; see figs. 1, 4 & 6).
Harvey further teaches that the parts of the heat tracing band extending out of the heating hose body are configured to be wound on a water supply connector of a water source or a water receiving end in use. In particular, Harvey explains “the flexible heating wires 40 and 42 of said first pair [are] adapted to be wrapped around the immediately adjacent exposed portion of a pipe connected with said first coupling 12 for heating liquid in the last said pipe” (col. 4, lines 63-67) and “the flexible heating wires 62 and 64 of said second pair being adapted to be wrapped around the immediately adjacent exposed portion of a pipe connected with said second coupling 14 for heating liquid in the last said pipe” (col. 4, line 72 – col. 5, line 1).
See also col. 6, lines 23-45: “When the unit is a water connection for a trailer, the coupling 12 is connected with a faucet or other terminal on a water supply pipe ordinarily having an exposed portion above the ground, and the coupling 14 is connected with a water receiving pipe ordinarily having an exposed portion outside of the trailer. The heating strip 44 which includes the wires 40 and 42 is wrapped around the exposed portion of the water supply pipe and around the faucet. The heating strip 66 which includes the wires 62 and 64 is wrapped around the exposed portion of the water receiving pipe on the trailer. Ordinarily the strip 44 is considerably longer than the strip 66 in order to provide for a relatively long exposed portion of the water supply pipe. The electrical plug 22 is connected with a suitable electrical socket which may be on the trailer.
With an electrical circuit established… the wires 40 and 42 serve to heat or warm the water in the exposed portion of the water supply pipe sufficiently to prevent freezing, and the wires 62 and 64 heat or warm the water in the exposed portion of the water receiving pipe sufficiently to prevent freezing.”.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Camco such that at least one end of the heat tracing band extends longitudinally beyond a corresponding end of the heating hose body; and a part of the heat tracing band extending out of the heating hose body is configured to be wound on a water supply connector of a water source or a water receiving end, in view of the teachings of Harvey, to enable the heat tracing band of the hose to further provide heat to a faucet and an exposed portion of a water supply pipe on one end, and to further provide heat to an exposed portion of a water receiving pipe on the other end, preventing freezing of water in the exposed water supply and receiving pipes, as clearly suggested by Harvey.
With respect to the limitation wherein a length of an end portion of the heat tracing band extending beyond of an end portion of the heating hose body is 20 cm to 50 cm, while Harvey does not recite any specific lengths, Harvey does suggest that the lengths of the exposed portions should be provided with consideration of the required length of the exposed pipe portion to be warmed. See col. 6, lines 33-36: “Ordinarily the strip 44 is considerably longer than the strip 66 in order to provide for a relatively long exposed portion of the water supply pipe”.
As set forth in MPEP § 2144.05(II)(A): “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As further set forth in MPEP § 2144.05(II)(A), it has been generally held that where the difference between the prior art involves only a change in form, proportions, or degree, such a difference is unpatentable, even though changes of the kind may produce better results than prior inventions [citing Smith v. Nichols, 88 U.S. 112, 118-19 (1874) and In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)].
See also MPEP § 2144.04(IV)(A): “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” [citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)].
Applicant’s specification does not appear to set forth any evidence of criticality or unexpected result associated with the claimed range of 20 cm to 50 cm.
As a result, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the lengths of the end portions of the heat tracing bands extending out of the end portion of the heating hose body to be any reasonable length required to provide sufficient length to effectively wrap the corresponding water supply connector of the water source any exposed supply pipe portion on one end, and to provide sufficient length to effectively wrap the water receiving connector and any associated exposed pipe portion on the other end, including embodiments wherein the length may be in the range of 20 cm to 50 cm, as a matter of routine engineering design and/or as a matter of routine optimization, especially considering it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Additionally, such a modification would have been otherwise obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention in further view of the fact that the corresponding limitation wherein “a length of an end portion of the heat tracing band extending out of an end portion of the heating hose body is 20 cm to 50 cm” appears to amount to a mere change in form or proportion and/or a recitation of a relative dimension whereby a device having the claimed relative dimension would not perform differently than the prior art, such differences or recitations of relative dimension being generally held as unpatentable absent evidence of criticality or unexpected results.
Regarding the remaining limitations of the claim, the hose of Camco is disclosed as comprising heat insulation sleeves (i.e., the foam-type sleeves at the connectors on either end), however, Camco does not explicitly disclose heat insulation sleeves configured to be installed over the water supply connector of the water source and/or the water receiving end wound with the heat tracing band.
McCabe teaches (figs. 1 & 4) an anti-freezing heat tracing band (50) wound around a water pipe / equipment joint (100; see col. 6, lines 30-35: “equipment 100 such as, but not limited to, pressure regulators, valves, miscellaneous equipment, plumbing, and the like…”), and a heat insulation sleeve (120; “insulating cover 120”), installed over the joint, reducing heat loss from the heated joint region (col. 7, line 60 – col. 8, line 12: “An insulating cover…to provide a means to retain and direct heat generated by the heat tape unit 50 toward the equipment 100 being protected…The insulating layer 122 is to be in direct contact therewith the equipment 100 and heat tape unit 50….The insulating layer 122 preferably comprises common fiberglass batt… [or] other equivalent pliable material capable of being wrapped tightly around said equipment…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Camco (as otherwise modified above) to further comprise a heat insulation sleeve, wherein the heat insulation sleeve, when installed over the water supply connector of the water source and/or the water receiving end, reduces heat loss from a connector region, in view of the teachings of McCabe, in order to retain and direct heat generated by the heat tracing band toward the water conveying joint being protected, thereby further protecting the connector(s) from freezing and/or to provide a more efficient heating system by reducing the amount of electrical heating required (e.g., as compared to an uninsulated arrangement where the heater-wrapped water connections are otherwise left exposed to the freezing ambient environment).
The above combination would have been otherwise obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as a combination of known prior art elements (i.e., the hose of Camco, as modified in view of Harvey above to include heat tracing band end portions extending from the ends to wrap the supply and receiving end connections; with the heat insulation sleeve of McCabe, configured to cover equipment such as valves and plumbing having a heat tracing band wound thereon) according to known methods (i.e., as in Harvey and McCabe, respectively) to yield predictable results (e.g., as above, to achieve a more efficient heating system since heat loss to the environment is reduced as compared to an uninsulated arrangement, as otherwise well-known in the art) especially considering that, in combination, each element merely performs the same function as it does separately [MPEP § 2143(I)(A)].
Examination Note: to promote compact prosecution, it is noted that providing a heat insulation sleeve with a heated hose to cover the water supply connectors is otherwise known in the art (e.g., see US 3,784,785 to Noland). See also US 4,142,565 to Plunkett, showing a heat insulation sleeve for use covering a water supply connector, generally.
Regarding claim 5, the hoses of Camco read on the additional limitations wherein two ends of the heating hose body are both provided with a hose connector (“Connector”, below); and a joint between the hose connector and the heating hose body is wrapped with a connector sleeve (“Sleeve”, below).
Regarding the hose connectors, Camco describes these as “machined and Nickel-plated fittings”.
Regarding the connector sleeves, as shown, the joints at both ends of the hose include a thin heat-shrink-type sleeve as well as a thicker foam-type insulation sleeve. The video description also recites “Includes insulators on both ends”.
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Regarding claims 8 & 17, the hose of Camco further comprises a power supply plug for powering the heat tracing band (plug clearly shown in the figure provided for the grounds of rejection of claim 5 above; for providing connection to 120 VAC as noted on the webpage; in the video description: “conveniently plugs into any standard 110-120 volt GFI electrical connection”; the use of said power supply plug for connecting to a power source is clearly shown in the cited video, at approx. 45 seconds).
With respect to the limitations wherein the hose further comprises a temperature control switch, and the related limitations wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch; the temperature control switch is configured for controlling powering on and off the heat tracing band according to an environment temperature; and when the temperature is lower than a threshold, the temperature control switch is turned on; it is noted that Camco acknowledges the existence of thermostat controlled hoses (i.e., hoses which use a temperature control switch), but the disclosed embodiments utilize a “self-regulating” heat source which does not require a temperature control switch. See video description: “By using a self-regulating heat source rather than a thermostat, Camco’s heated water hose will keep water flowing even when temperatures reach -40°F. Hoses regulated by a thermostat are prone to fail in freezing temperatures”.
However, as set forth in MPEP § 2123(II), "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In this case, the use of a temperature control switch (i.e., a thermostat) to regulate power to the heat tracing band is clearly a known composition in view of Camco, which is not otherwise patentable despite being described as somewhat inferior to a self-regulating arrangement for the same use.
See also MPEP § 2143.01(V): “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine’" [Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016), quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir. 2006) (citation omitted)][also cited in MPEP § 2141.02(IV)].
Harvey teaches (figs. 1-9) a heating anti-freezing hose (10) comprising a heating arrangement (incl. heat tracing bands 44 & 66 arranged at the ends, and braided heating wires 28 & 30 arranged along the length of the body), and further comprising a temperature control switch (58; “thermostat”) and a power supply plug (22; “electrical plug”), wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch (the cord includes wires 16 & 18; Harvey explains that the wires of the heating arrangement form a series in the following sequence: 28, 40, 42, 30, 62 & 64; the first wire 28 is directly connected to the cord wire 16 extending from the power supply plug; the last wire 64 connects to one terminal 88/92 of the temperature control switch 58; the other cord wire 18 is directly connected to the other terminal 82/84 of the temperature control switch; thus, one end of the power supply interface [i.e., at wire 64] of the heating arrangement is connected with the power supply plug through the temperature control switch; see col. 3, lines 30-35; col. 4, lines 1-34; especially col. 4, lines 30-34: “The electrical connections for the several wires may be varied, but as shown all of the wires are connected in series. The wires are connected in the following sequence: wire 16, wire 28, wire 40, wire 42, wire 30, wire 62, wire 64, thermostat 58, and wire 18”);
wherein the temperature control switch is configured for controlling powering on and off of the heat tracing band according to an environment temperature (col. 5, lines 24-30: “Within the housing chamber is a switch electrically connected to close and open the circuit through the heating wires for the hose. Also within the housing chamber is a thermally responsive means for opening and closing the switch in accordance with increases and decreases in the temperature within the housing chamber”); and
when the temperature is lower than a threshold, the temperature control switch is turned on (see col. 6, lines 1-22 & 46-56; when the temperature is below a threshold, the bimetallic strip 98 closes the circuit [i.e., the switch is on] and when the temperature is above the threshold, the bimetallic strip breaks the circuit [i.e., the switch is off]).
Harvey further discloses that the temperature control switch comprises a set screw (110) to enable the switch to be “calibrated for maintaining any desired temperature within a limited range” (col. 6, lines 54-56).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the heating anti-freezing hose of Camco to further include a temperature control switch, wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch; the temperature control switch is configured for controlling powering on and off of the heat tracing band according to an environment temperature; and when the temperature is lower than a threshold, the temperature control switch is turned on, in view of the teachings of Harvey, to provide a user-adjustable means of setting the desired threshold temperature and/or to provide a heating hose arrangement which does not draw power when the temperature is above the threshold temperature.
As previously noted, “a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” and “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”.
While Camco suggests that thermostatically controlled hoses may be “prone to failure”, thus implying that self-regulating heating hoses are more reliable, there may be instances or applications where a person having ordinary skill in the art would prefer the controllability provided by a thermostatically controlled hose (as is otherwise known in the art) even when weighed against the potentially decreased reliability vs a self-regulating type.
Moreover, as best understood, the self-regulating type is always powered on, even when the temperature is above the threshold temperature, and there may be instances where a person of ordinary skill in the art would prefer the circuit to be broken (and thus the heaters powered off) when the temperature is above the threshold temperature, e.g., for reasons of energy efficiency or perceived safety, etc.
Regarding claim 18, the hose of Camco, as modified in view of Heise, Leray, Leavines, Harvey, and McCabe in the grounds of rejection for claim 1 above, reads on or otherwise renders obvious a preparation method for the heating anti-freezing hose with the heat tracing band fixed by extrusion molding according to claim 1, comprising:
step 1: producing the inner water supply pipe by a water pipe extruder (i.e., as taught by Heise [e.g., para. 17] and/or Leray [paras. 43-45]), wherein the inner water supply pipe comprises the inner barrier layer, the fiber mesh layer and the outer layer which are sequentially laminated from inside to outside (i.e., as in the hose of Camco); and
step 2: combining the inner water supply pipe (i.e., the inner barrier layer, fiber mesh layer, and outer reinforced layer, collectively forming the inner water supply pipe of Camco; analogous to the pipe 12 of Heise in fig. 4) with the heat tracing band (analogous to heat tracing band 24 of Heise in fig. 4) by the water pipe extruder provided with an extrusion mold (corresponding to extrusion die 40 having cavity 44, shown in fig. 4 of Heise), wherein an extrusion channel (i.e., corresponding to cavity 44 of Heise) of the extrusion mold comprises a circular portion and a flat portion which are communicated together; and the flat portion is arranged on one side of the circular portion (i.e., as would have been understood by a person having ordinary skill in the art, the cross-sectional shape of the cavity 44 would correspond to the desired outer cross-sectional shape of the fixing layer produced thereby; as can be seen on the hoses of Camco, the fixing layer comprises a circular portion which covers the surface of the inner water supply pipe and a ‘flat’ portion arranged on one side of the circular portion which covers the surface of the heat tracing band, whereby the extrusion cavity required to form the resulting shape of the Camco hoses would reasonably be expected to comprise a circular portion and a flat portion which are communicated together, with the flat portion arranged on one side of the circular portion);
passing the inner water supply pipe produced in the step 1 through the circular portion of the extrusion channel of the extrusion mold (i.e., the inner water supply pipe is fed through the circular portion of the extrusion channel, as generally shown in fig. 4 of Heise, so as to enable the extruder to form the circular portion of the fixing layer in the annular space between the outer surface of the inner water supply pipe and the inner surface of the extrusion die; see para. 20, lines 1-3 of Heise);
passing the heat tracing band through the flat portion of the extrusion channel of the extrusion mold (i.e., the heat tracing band is fed through the ‘flat’ portion of the extrusion channel, as generally shown in fig. 4 of Heise, so as to enable the extruder to form the flat portion of the heating and fixing layer in the space between the outer surface of the heat tracing band and the inner surface of the extrusion die; see para. 20, lines 1-3 of Heise); and
melting raw material by the water pipe extruder and then transporting the molten material into the extrusion channel of the extrusion mold (see para. 20, lines 3-5: “Feed stock for the jacket 30 is fed from hopper 42 into the extrusion cavity 44 to form the jacket 30”; as would have been understood by a person of ordinary skill in the art, the “feed stock” would conventionally be particles [typically pellets, granules, powders, etc.] of the raw plastic materials to be molded, and “feeding” the material to the extrusion cavity would involve heating / melting the material to feed the plastic material into the extrusion chamber in molten form; such plastic extrusion molding techniques, in general, have been known since the 1930’s and have been in common use since at least the 1940’s), and
solidifying the molten material in the extrusion channel to form the fixing layer (see Heise, para. 20, lines 5-7: “Continued movement of the pipe 12 and cable 24 conjointly through the die allows the jacket 30 to solidify and provide the construction of the conduit 10”);
wherein the passing of the inner water supply pipe and the heat tracing band and the solidifying of the molten material are performed simultaneously (i.e., as explained by Heise above, the pipe [12] and heat tracing band [24] move together through the extrusion channel while the fixing layer [30] begins to solidify), such that the heat tracing band is confined within the extrusion channel (i.e., at least during initial phase of solidification and cooling, as taught by Heise) and bent from an initial flat configuration into a curved configuration conforming to the outer layer (i.e., in view of Heise and Leavines as set forth for claim 1)(see detailed discussion of these limitations in the grounds of rejection for claim 1, not repeated for brevity), and the curved configuration is retained permanently after extrusion by solidification of the fixing layer (as explained for claim 1 above).
Regarding the limitation of producing the inner water supply pipe by a water pipe extruder, as previously noted, Heise teaches (para. 17) that such water pipe layers may be “extruded as a continuous plastic material, while Leray teaches (paras. 43-45) that a hose body may be formed by coextruding an inner and linking layer, forming a fiber mesh layer, and then coextruding an outer layer over the fiber mesh layer (e.g., para. 45: “The material of the outer layer 5 in a substantially liquid state is then coextruded into the reinforcing structure…”).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hose of Camco, as otherwise modified above, such that the inner water supply pipe is produced by a water pipe extruder, in view of the teachings of Heise and/or Leray, as the use of a known technique (i.e., producing an inner water supply pipe by extruding at least one peripheral wall thereof by a water pipe extruder, as in Heise; or by coextruding multiple layers by a water pipe extruder as in Leray) to improve a similar device (the heating anti-freezing hose of Camco, having such an inner water supply pipe) in the same way (e.g., to enable the inner water supply pipe to be efficiently manufactured as part of a continuous process, where it may be cut to length later as needed).
Regarding claim 19, with respect to the limitations wherein, when viewed in a radial cross-section of the heating hose body, the inner barrier layer has a thickness of 1.1 mm; the outer layer has a thickness of 0.8 mm; and the fixing layer has a thickness of 1.5 mm, the published documents of Camco does not explicitly recite the thicknesses of the inner barrier layer, outer layer, or fixing layer, however, as set forth in MPEP § 2144.05(II)(A), it has been generally held that where the difference between the prior art involves only a change in form, proportions, or degree, such a difference is unpatentable, even though changes of the kind may produce better results than prior inventions [citing Smith v. Nichols, 88 U.S. 112, 118-19 (1874) and In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)].
See also MPEP § 2144.04(IV)(A): “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” [citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)].
Nevertheless, to promote compact prosecution, the following additional teachings are provided.
Leray, as previously described, teaches (fig. 1) a water supply hose comprising an inner barrier layer (1), a fiber mesh layer (3; comprising a braided mesh of fibers 4 fixed in a linking layer 2), and an outer layer (5). Leray further teaches (para. 47) that the inner barrier layer (1) may have a thickness in the range of 0.5 mm to 3 mm (encompassing the claimed value of 1.1 mm), and that the outer layer (5) may have a thickness in the range of 0.7 mm to 2 mm (encompassing the claimed value of 0.8 mm).
Regarding the fixing layer, Heise further teaches (para. 19; published claims 4 & 5) that the extruded fixing layer (“jacket”) may have a wall thickness in a range from 1 mm to 10 mm (encompassing the claimed value of 1.5 mm), and may preferably be 2mm (which may be seen as close to the claimed value).
As set forth in MPEP § 2144.05(II)(A): “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant’s specification also does not appear to set forth any evidence of criticality or unexpected result particularly attributable to the use of the specific values as now claimed. See MPEP § 716.02, including 716.02(a), (b), (c) & (d).
As a result, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to form the hose of Camco (as otherwise modified above) to have any reasonable dimensions, including layer thicknesses (viewed in radial cross-section), as may be required for a particular application, including to have an inner barrier layer thickness of 1.1 mm (within the range of 0.5 mm to 3mm taught by Leray), an outer layer of thickness of 0.8 mm (within the range of 0.7 mm to 2 mm taught by Leray); and a fixing layer thickness of 1.5 mm (within the range of 1 mm to 10 mm taught by Heise, and otherwise close to the preferred value of 2 mm) as a matter of routine engineering design and/or as a matter of routine optimization, especially considering it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Additionally, such modifications would have been otherwise obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention in further view of the fact that the corresponding limitations (wherein the inner barrier layer has a thickness of 1.1 mm, the outer layer has a thickness of 0.8 mm, and the fixing layer has a thickness of 1.5 mm) appear to amount to mere changes in form or proportions and/or recitations of a relative dimensions whereby a device having the claimed relative dimensions would not perform differently than the prior art, such differences or recitations of relative dimension being generally held as unpatentable absent evidence of criticality or unexpected results.
Claims 4 & 16 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Camco Hoses in view of Heise, Leray, Leavines, Harvey, and McCabe as applied to claim 1 above, and further in view of Heiligenstein (US 2016/0230372).
Regarding claim 4, Camco includes a stripped / sectioned image of the heat tracing band which includes elements which are reasonably understood or otherwise readily inferred as comprising a shielding mesh (i.e., the metallic braided layer), an insulating layer (i.e., the gray intermediate layer under the metallic braid) and a conductive heating core (i.e., the black layer surrounding the two parallel electric cores) which are sequentially wrapped from outside to inside (as shown); and two electric cores (i.e., the two metallic wires within the black heating core) spaced from one another are both buried inside the conductive heating core (as shown).
Regarding the remaining limitation wherein the heat tracing band comprises a sleeve layer which is sequentially wrapped outside of the shielding mesh layer, it is not immediately clear if the heat tracing band in the hoses of Camco include a separate sleeve layer, but the portion of the fixing layer surrounding the shielding mesh layer may be seen as a sleeve layer which is sequentially wrapped outside of the shielding mesh.
However, to promote compact prosecution, the following additional teaching is provided.
Heiligenstein teaches (fig. 2) a heat tracing band (14) suitable for use heating a pipe (see fig. 5) in a heat trace system (fig. 1); the heat tracing band (14) comprising a sleeve layer (38; “an overcoat over braid (preferably Teflon)”), a shielding mesh (36; “a metallic (e.g., tinned copper) braid”), an insulating layer (34; “a jacket”) and a conductive heating core (32; “a conductive matrix 32 (which is preferably polymeric)”); and two electric cores (30A & 30B; “Buss Wires”) spaced from one another are both buried inside the conductive heating core. See para. 21, lines 1-11.
It is noted that, other than the presence of the sleeve layer, the heat tracing band of Heiligenstein appears to be substantially similar to the heat tracing band used in the hoses of Camco. As such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the hoses of Camco such that the heat tracing band further comprises a sleeve layer wrapped outside of the shielding mesh layer, in view of the teachings of Heiligenstein, as the use of a known technique (i.e., providing a heat tracing band for conduit heating system with such a sleeve layer over the shielding mesh layer, as in Heiligenstein) to improve a similar device (the heat tracing band of the hose of Camco, which appears substantially similar except for the presence of such a sleeve layer) in the same way (e.g., providing additional electrical insulation and/or mechanical protection for the wires of the shielding mesh layer, which may serve to protect the shielding layer and underlying layers of the heat tracing band prior to and during extrusion of the fixing layer about the heat tracing band, and may otherwise provide an additional layer of protection or safety in use, reducing the risk that electrified components of the heat tracing band may be come exposed if the heating and shielding layer should become damaged, etc.).
Alternatively, to further promote compact prosecution in the event that the heat tracing band of the hose of Camco is not seen as comprising one or more other elements of the claim, it would have been otherwise obvious to a person having ordinary skill in the art to modify the hose of Camco such that the heat tracing band comprises a sleeve layer, a shielding mesh, an insulating layer and a conductive heating core which are sequentially wrapped from outside to inside; and two electric cores spaced from one another buried inside the conductive heating core, in view of the teachings of Heiligenstein, as the simple substitution of one known heat tracing band construction (i.e., the heat tracing band of Camco, as depicted) for another (i.e., the heat tracing band of Heiligenstein) to obtain predictable results (e.g., as above, providing a heat tracing band suitable for use heating a conduit, and which further comprises an outer sleeve to provide additional mechanical and/or electrical protection to the heat tracing band both before and during extrusion of the fixing layer thereon, as well as providing an additional layer of protection or safety in use, reducing the risk that electrified components of the heat tracing band may be come exposed if the heating and shielding layer should become damaged, etc.).
Regarding claim 16, the hose of Camco further comprises a power supply plug for powering the heat tracing band (plug clearly shown in the figure provided for the grounds of rejection of claim 5 above; for providing connection to 120 VAC as noted on the webpage; in the video description: “conveniently plugs into any standard 110-120 volt GFI electrical connection”; the use of said power supply plug for connecting to a power source is clearly shown in the cited video, at approx. 45 seconds).
With respect to the limitations wherein the hose further comprises a temperature control switch, and the related limitations wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch; the temperature control switch is configured for controlling powering on and off the heat tracing band according to an environment temperature; and when the temperature is lower than a threshold, the temperature control switch is turned on; it is noted that Camco acknowledges the existence of thermostat controlled hoses (i.e., hoses which use a temperature control switch), but the disclosed embodiments utilize a “self-regulating” heat source which does not require a temperature control switch. See video description: “By using a self-regulating heat source rather than a thermostat, Camco’s heated water hose will keep water flowing even when temperatures reach -40°F. Hoses regulated by a thermostat are prone to fail in freezing temperatures”.
However, as set forth in MPEP § 2123(II), "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In this case, the use of a temperature control switch (i.e., a thermostat) to regulate power to the heat tracing band is clearly a known composition in view of Camco, which is not otherwise patentable despite being described as somewhat inferior to a self-regulating arrangement for the same use.
See also MPEP § 2143.01(V): “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine’" [Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016), quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir. 2006) (citation omitted)][also cited in MPEP § 2141.02(IV)].
Harvey teaches (figs. 1-9) a heating anti-freezing hose (10) comprising a heating arrangement (incl. heat tracing bands 44 & 66 arranged at the ends, and braided heating wires 28 & 30 arranged along the length of the body), and further comprising a temperature control switch (58; “thermostat”) and a power supply plug (22; “electrical plug”), wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch (the cord includes wires 16 & 18; Harvey explains that the wires of the heating arrangement form a series in the following sequence: 28, 40, 42, 30, 62 & 64; the first wire 28 is directly connected to the cord wire 16 extending from the power supply plug; the last wire 64 connects to one terminal 88/92 of the temperature control switch 58; the other cord wire 18 is directly connected to the other terminal 82/84 of the temperature control switch; thus, one end of the power supply interface [i.e., at wire 64] of the heating arrangement is connected with the power supply plug through the temperature control switch; see col. 3, lines 30-35; col. 4, lines 1-34; especially col. 4, lines 30-34: “The electrical connections for the several wires may be varied, but as shown all of the wires are connected in series. The wires are connected in the following sequence: wire 16, wire 28, wire 40, wire 42, wire 30, wire 62, wire 64, thermostat 58, and wire 18”);
wherein the temperature control switch is configured for controlling powering on and off of the heat tracing band according to an environment temperature (col. 5, lines 24-30: “Within the housing chamber is a switch electrically connected to close and open the circuit through the heating wires for the hose. Also within the housing chamber is a thermally responsive means for opening and closing the switch in accordance with increases and decreases in the temperature within the housing chamber”); and
when the temperature is lower than a threshold, the temperature control switch is turned on (see col. 6, lines 1-22 & 46-56; when the temperature is below a threshold, the bimetallic strip 98 closes the circuit [i.e., the switch is on] and when the temperature is above the threshold, the bimetallic strip breaks the circuit [i.e., the switch is off]).
Harvey further discloses that the temperature control switch comprises a set screw (110) to enable the switch to be “calibrated for maintaining any desired temperature within a limited range” (col. 6, lines 54-56).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the heating anti-freezing hose of Camco to further include a temperature control switch, wherein one end of a power supply interface of the heat tracing band is connected with the power supply plug through the temperature control switch; the temperature control switch is configured for controlling powering on and off of the heat tracing band according to an environment temperature; and when the temperature is lower than a threshold, the temperature control switch is turned on, in view of the teachings of Harvey, to provide a user-adjustable means of setting the desired threshold temperature and/or to provide a heating hose arrangement which does not draw power when the temperature is above the threshold temperature.
As previously noted, “a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” and “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”.
While Camco suggests that thermostatically controlled hoses may be “prone to failure”, thus implying that self-regulating heating hoses are more reliable, there may be instances or applications where a person having ordinary skill in the art would prefer the controllability provided by a thermostatically controlled hose (as is otherwise known in the art) even when weighed against the potentially decreased reliability vs a self-regulating type.
Moreover, as best understood, the self-regulating type is always powered on, even when the temperature is above the threshold temperature, and there may be instances where a person of ordinary skill in the art would prefer the circuit to be broken (and thus the heaters powered off) when the temperature is above the threshold temperature, e.g., for reasons of energy efficiency or perceived safety, etc.
Response to Arguments
Applicant's arguments filed 11 May 2026 have been fully considered.
With respect to applicant’s argument that claim 1 now requires the heat tracing band to be plastically bent into a curved configuration, it is first noted that the application as filed does not appear to provide sufficient support for this new limitation. The specification discloses that the heat tracing band is “bent and deformed”, but does not specify if such bending and deformation is elastic or plastic. See detailed discussion in the grounds of rejection under 35 U.S.C. 112(a) in this action.
In response to applicant's arguments against the references (e.g.. Heise and Leavines) individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
However, to promote compact prosecution, the following remarks are provided.
Applicant argues that Heise does not teach how to plastically bend a flat strip into an arc. This argument is not found to be persuasive. Heise teaches extruding a fixing layer over an inner water supply pipe and a heat tracing band to conform the heat tracing band to the outer surface of the inner water supply pipe. Heise was not relied upon (at least in isolation) for teaching the bending of a flat strip into an arc. Camco already has a flat heat tracing band, and Leavines otherwise teaches deforming an initially flat heat tracing band against an outer surface of a pipe to increase contact area.
Similarly, applicant’s argument that Leavines teaches a separate, removable cover that presses a heat tracing band against the pipe is not found to be persuasive. As noted above, Heise already teaches that an extruded fixing layer may be provided to press a heat tracing band against a pipe.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, as set forth in the rejection for claim 1, it is the combination of teachings (e.g., pressing a heat tracing band against a pipe using an extruded fixing layer, as in Heise; conforming a flat heat tracing band to a pipe by compression, as in Leavines, etc.) which renders the claimed limitations obvious.
As set forth in MPEP § 2141.03(I), "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
A person having ordinary skill in the art would have understood that the extruded fixing layer taught by Heise, and the cover of Leavines perform similar functions: compressing the heat tracing band against the inner pipe. While Heise uses a round cable, Leavines teaches bending an initially flat heat tracing band to conform to the pipe surface. The combination described, using an extruded fixing layer (rather than a separate removable cover) to bend the initially flat heat tracing band to conform to the pipe surface is therefore rendered obvious, for the reasons set forth in the corresponding rejections.
With respect to the the heat tracing band being “plastically bent” from the initial flat configuration, as noted above, applicant’s original specification does not appear to provide sufficient support for this limitation.
Setting aside the question of support, as detailed in the appropriate rejections, the limitation wherein the heat tracing band is “plastically” bent from an initial flat configuration is a product-by-process limitation, and it does not appear that the heat tracing band being plastically bent (rather than elastically bent) would be expected to impart distinctive structural characteristics to the final product, especially since, in either case, the fixing layer would serve to retain the heat tracing band in the curved configuration after extrusion.
To be clear, bending a heat tracing band by extruding a fixing layer over the heat tracing band, and solidifying the fixing layer to permanently retain the heat tracing band in the bent configuration does not automatically equate to plastically bending the heat tracing band. Whether a heat tracing band is plastically or elastically deformed is a separate technical question which depends on the material properties, dimensions, and stress applied to the heat tracing band, not merely whether the bend is made permanent by a subsequent fixing layer.
As set forth in MPEP § 2113(II), once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product.
In the instant case, because the fixing layer functions to permanently retain the heat tracing band in the curved configuration after extrusion, the final product (e.g., when viewed in cross-section) would be the same whether the heat tracing band was initially elastically or plastically bent into said curved configuration, and the resulting final product would reasonably be expected to function the same in either case.
While a plastically bent band and an elastically bent band might behave differently when the bending force is removed (e.g., an elastically bent band returning to its initial flat configuration, a plastically bent band maintaining at least some deformation), this would be not be a characteristic relevant for the final product, where the fixing layer permanently retains the bend. Furthermore, this difference would be expected and predictable, rather than a nonobvious difference.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments with respect to the specific length range for the extended heat tracing band are not found to be persuasive.
While Harvey does not recite any specific numerical lengths, the reference is not “completely silent” on the parameter as suggested by applicant. Rather, Harvey does suggest that the lengths of the heat tracing band ends should be provided with consideration of the required length of the exposed pipe portion to be warmed (see col. 6, lines 28-36). Thus, Harvey does not merely compare the length of one heating strip with another, but also suggests to those skilled in the art that each length should be of a length suitable for appropriately wrapping and warming the respective exposed connector. As such, the general conditions are disclosed and it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the lengths of the end portions of the heat tracing bands extending out of the end portion of the heating hose body to be any reasonable length required to provide sufficient length to effectively wrap the corresponding water supply connector of the water source any exposed supply pipe portion on one end, and to provide sufficient length to effectively wrap the water receiving connector and any associated exposed pipe portion on the other end, including embodiments wherein the length may be in the range of 20 cm to 50 cm, as a matter of routine engineering design and/or as a matter of routine optimization, etc.
Regarding alleged “criticality” of the claimed range, applicant’s argument that the specification provides a single working example within the range and “demonstrates reliable anti-freezing performance” is insufficient to demonstrate criticality of the range for achieving an unexpected result.
Applicant fails to demonstrate by sufficient evidence that providing a length in the claimed range would produce some unexpected result, which occurs over the entire claimed range, but which does not occur outside of the claimed range.
As set forth in MPEP § 2144.05(III)(A), applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.").
As set forth in MPEP § 716.02(I), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.").
As set forth in MPEP § 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).[MPEP § 706.02(d)(II)].
With respect to the allegation that Camco “teaches away” from the use of thermostats, where applicant argues that “This is not a mere description… it is a clear warning that thermostats are unsuitable for the very environment in which the hose is used”. This argument is not found to be persuasive.
The term “prone” in this context means “having a tendency; inclined”. The statement by Camco that thermostatic controlled hoses are “prone to fail in freezing temperatures” would not have been reasonably interpreted by a person having ordinary skill in the art to mean that a thermostat-controlled hose would be completely inoperable in freezing temperatures. Applicant’s position fails to consider that a person having ordinary skill in the art would have understood that thermostat controlled hoses for preventing freezing in such conditions were already well-known (see, e.g., Harvey as cited in this action, published 1957, explicitly intended for use in freezing temperatures; US 2007/0036528 A1 to Ferrone; etc.).
As such, the statement of Camco would have been reasonably interpreted as a description of known prior-art thermostat controlled hoses as being inferior to Camco’s proposed self-regulating hose controller with respect to tendency to fail in cold temperatures (i.e., a difference in relative reliability; not a binary difference of operability). In this sense, the citation to MPEP § 2123(II)["A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)] is appropriate, as is the finding that there may be instances or applications where a person having ordinary skill in the art would prefer the controllability provided by a thermostatically controlled hose (as is otherwise known in the art) even when weighed against the potentially decreased reliability vs a self-regulating type.
Conclusion
Applicant's amendment necessitated the new grounds 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 Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM ET.
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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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