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 .
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 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.
Status of Claims
Claims 14 – 26 are pending. Claims 1 – 13 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/02/2022 was filed before the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 15 and 16 is objected to because of the following informalities: “the frustrum” should be “the conical frustrum”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a catch urging member in claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14 – 26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation “the end of the pipe having the larger diameter" in line 6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as ““an end of the pipe having the larger diameter".
Claim 14 recites the limitation “the end of the pipe having the smaller diameter" in lines 6 – 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as ““an end of the pipe having the smaller diameter".
Claim 14 recites the limitation “the central axis" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a central axis”.
Claim 14 recites the limitation “a pipe" in line 1 and “a pipe” in line 22. The limitations are vague in that it is unclear if it is the same pipe or different pipes. For the purpose of examination, “a pipe” in line 19 will be examined as “a first pipe” and “a pipe” of line 22 will be examined as “a second pipe”.
Claim 15 recites the limitation “the end" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “an end”.
Claims 15 and 24 recites the limitation “a bore" in line 6, respectively. The limitations are vague in that it is unclear as to what bore is being referenced. For the purpose of examination, the limitation will be examined as a bore of the conical frustrum.
Claim 15 and 24 recites the limitation “the broadest end" in line 7 and 9 respectively . There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a broadest end”.
Claim 5 recites the limitation “the axis of revolution" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “an axis of revolution”.
Claim 6 and 24 recites the limitation “the narrowest end" in line 9 and 8 respectively. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a narrowest end”.
Claim 16 recites the limitation “a bore" in line 3. The limitations are vague in that it is unclear as to what bore is being referenced. For the purpose of examination, the limitation will be examined as a bore of the cylindrical element.
Claims 17 and 20 recite the term “may” in lines 2 respectively. The term “may” renders the claim indefinite as it is unclear of the limitation is require or optional. For the purpose of examination, the limitations following “may” are optional.
Claim 19 recites the limitation “the urging member" in line 5. There is insufficient antecedent basis for this limitation in the claim. Further it is unclear if the claim should actually depend from 14 or from claim 18. For the purpose of examination, the claim will be examined as depending from claim 18.
Claim 20 recites the limitation “the length of the rollers" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a length of the guide rollers”.
Claim 21 recites the limitation “the free end of the bore" in line 3 – 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a free end of the bore”.
Claim 21 recites the limitation “the first internal diameter” in line 4 and “the second internal diameter” in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a first internal diameter and a second internal diameter”.
Claim 22 recites the limitation “the central axis of the assembly” in line 4 – 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a central axis of the assembly”.
Claim 22 recites the limitation “the end of the secondary pipe” in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “an end of the secondary pipe”.
Claim 22 recites the limitation “the outside of the primary and secondary pipe” in line 9 – 10. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “an outside of the primary and secondary pipe”.
Claim 22 recites the limitation “the bore” in line 12. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a bore”.
Claim 22 recites the limitation “the transmission” in line 15. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “a transmission”.
Claim 24 recites the limitation “the open end of the bore" in line 3 – 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be examined as “an open end of the bore”.
Claims 15 – 26 are further rejected as dependents of rejected claim 14.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 14 and 22 – 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murray (GB 1,031,561) as cited by Applicant.
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Regarding Independent Claim 14, Murray teaches a pipe scraper (Fig. 1) comprising: a housing )hollow body, 1) comprising a bore (Fig. 2) having a center axis (Fig. 2) and an open end (Fig. 2) that allows access to the bore (Fig. 2), the bore being shaped to receive into its open end at least a portion of each of two pipes of an assembly of two concentric pipes (Page 2, lines 74 – 81), wherein the assembly of two concentric pipes comprises a pipe having a smaller diameter (Page 2, lines 74 – 81), and a pipe having a larger diameter (Page 2, lines 74 – 81), and the end of the pipe having the larger diameter is separated from the end of the pipe having the smaller diameter by a distance along the central axis of the assembly (Page 2, lines 74 – 90); a first scraper tool assembly (cutter, 11) secured to the housing (1), configured to urge a first scraper tool radially inwards (Fig. 1), and positioned at a first radial distance from the center axis of the bore (Fig. 1), and at a first axial distance from the open end of the bore (Fig. 1); a second scraper tool assembly (bristles, 5) secured to the housing (1), configured to urge a second scraper tool radially inwards (Fig. 1), and positioned at a second radial distance from the center axis of the bore (Fig. 1), and at a second axial distance from the open end of the bore (Fig. 1), wherein the first radial distance is smaller than the second radial distance (Fig. 1), and the first axial distance is larger than the second axial distance (Fig. 1); and a transmission to allow torque to be delivered to the housing to cause rotation of the housing about the center axis of the bore (Page 1, lines 79 – 85); wherein the first scraper tool (11) is configured so that rotation of the housing (1) will cause the first scraper tool (11) to scrape portions of a pipe that are in contact with the first scraper (11) tool (Page 2, lines 41 – 50), and wherein the second scraper tool (5) is configured so that rotation of the housing (1) will cause the second scraper tool (5) to scrape portions of a pipe that are in contact with the second scraper tool (5; Page 2, lines 82 – 125).
Regarding Claim 22, Murray teaches a method of scraping one end of an assembly of a primary pipe and a secondary pipe, wherein the primary pipe is concentric or substantially concentric with the secondary pipe (Page 2, lines 74 – 90), and the primary pipe has a smaller radius than that of the secondary pipe (Page 2, lines 74 – 90), wherein the end of the primary pipe lies in a first plane perpendicular to the central axis of the assembly (Page 2, lines 74 – 90; the pipes are spaced apart linearly thus lie in first and second planes), and the end of the secondary pipe lies in a second plane perpendicular to the central axis of the assembly wherein the first and second planes are separated by a distance and wherein the primary pipe intersects the second plane (Page 2, lines 74 – 90; the pipes are spaced apart linearly thus lie in first and second planes), and the secondary pipe does not intersect the first plane (Page 2, lines 74 – 90; the pipes are spaced apart linearly thus lie in first and second planes and the second plan is linearly displaced from the first, so the second pipe does not lie in the plane of the first pipe), such that at least a portion of the primary pipe can be accessed by a tool (1) moving radially inwards from the outside of the primary and secondary pipes (Fig. 1), including: providing a pipe scraper (1) in accordance with claim 14; inserting the assembly of primary and secondary pipes into the bore of the pipe scraper (1) such that the first scraper tool rests against the outer surface of the primary pipe and such that the second scraper tool rests against the outer surface of the secondary pipe (Page 2, lines 74 – 90); and providing torque to the pipe scraper housing along its central axis via the transmission (Page 1, lines 79 – 85), causing the first and second scraper tools to move with respect to the primary and secondary pipes, thus causing the primary and secondary pipes to be scraped by the first (11) and second scraper tools (5; Page 1, lines 79 – 85 and Page 2, lines 82 - 125).
Regarding Claim 23, Murray teaches the method wherein torque is delivered to the transmission of the pipe scraper using a power tool (Page 1, lines 79 – 85).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 20 – 21 rejected under 35 U.S.C. 103 as being unpatentable over Murray (GB 1,031,561) as cited by Applicant in view of Bleske et al. (U. S. Patent Publication No. 5,600,862).
Regarding Claim 20, Murray teaches the pipe scraper according to claim 14, as discussed above.
Murray does not teach the housing further comprises guide rollers, the guide rollers being components that may freely rotate within cavities in the housing, wherein these cavities are adjacent to and intersect with the bore such that the guide rollers are secured within the cavities and portions of the guide rollers protrude into the bore along the length of the rollers.
Bleske, however, teaches the housing (body, 20) further comprises guide rollers (biasing members, 44 and 46), the guide rollers (Fig. 6) being components that may freely rotate within cavities (Fig. 6) in the housing (20), wherein these cavities (Fig . 6) are adjacent to and intersect with the bore such that the guide rollers are secured within the cavities (Fig. 5) and portions of the guide rollers (44 and 46) protrude into the bore along the length of the rollers (Fig. 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Murray to further include guide rollers, as taught by Bleske, to provide a device that prevents canting of the pipe with respect to the scraper and lead to uneven scraping, or to an improper depth of scrap.
Regarding Claim 20, Murray teaches the pipe scraper according to claim 14, as discussed above.
Murray does not teach the bore of the housing comprises a first section having a first internal diameter, and a second section having a second internal diameter, and wherein the first section is located axially closer to the free end of the bore than the second section, and wherein the first internal diameter is larger than the second internal diameter, and wherein the first scraper tool is located in the first section, and the second scraper tool is located in the second section.
Bleske, however, teaches the bore (bore, 22) of the housing (20) comprises a first section (25) having a first internal diameter (Fig. 4), and a second section (24) having a second internal diameter (Fig. 4), and wherein the first section (25) is located axially closer to the free end of the bore than the second section (Fig. 4), and wherein the first internal diameter (25) is larger than the second internal diameter (24), and wherein the first scraper tool and the second scraper tool is located in the second section (Fig. 4).
Bleske does not teach the two scrapers located in 2 sections, however, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the scraper of Murray to further include the first scraper tool is located in the first section, and the second scraper tool is located in the second section, as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art (MPEP 2144.04)
It would have been further obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Murray to further include the housing comprises a first section having a first internal diameter, and a second section having a second internal diameter, and wherein the first section is located axially closer to the free end of the bore than the second section, and wherein the first internal diameter is larger than the second internal diameter, as taught by Bleske, to provide a device that prevents canting of the pipe with respect to the scraper and lead to uneven scraping, or to an improper depth of scrap.
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 15 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Although Murray teaches a pipe scraper, the reference fails to teach, suggest or make obvious a drive cone and an externally threaded rod, wherein the externally threaded rod is coaxial with and positioned within the bore, and is secured to the housing at the end of the bore that is opposite to the open end, wherein the drive cone comprises a conical frustum that is coaxial with and positioned within the bore, the conical frustum itself having a bore that is internally threaded, and that is at least accessible from the broadest end of the conical frustum, and wherein the internal threads of the drive cone are engaged with the external threads of the externally threaded rod such that the narrowest end of the frustum is nearer the open end of the bore than the broadest end
Claims 16 – 19 and 25 – 26 are further objected to as being dependents of claims 15 and 24.
Conclusion
Art made of record, however, not relied upon for the current rejection is as follows: U. S. Patent No. 9,892,031 B2 to Goodman et al. teaches a tube scraping apparatus comprises a body having a passageway for receiving a piping component; and a first blade and a second blade. The first blade and second blade each: are mounted to the body and shiftable between a first condition and a second condition; and having an engagement portion positioned to engage an outer diameter (OD) surface of the received piping component in at least one condition, the first blade engagement portion comprising a cutting edge for removing material from the OD surface. The second blade engagement portion comprises a partial thread for engaging the piping component to convert a rotation of the piping component relative to the body to an axial movement of the piping component relative to the body.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATINA N HENSON whose telephone number is (571)272-8024. The examiner can normally be reached Monday - Thursday; 5:30am to 3:30pm.
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/KATINA N. HENSON/Primary Examiner, Art Unit 3723