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 04 March 2026. As directed by the amendment: claims 1, 3, 4, 6-9, 11, 13 & 15 have been amended, claims 10 & 12 have been cancelled, and no claims have been added. Thus, claims 1-9, 11 & 13-15 are presently pending in this application.
Claim Objections
Claims 9 & 15 are objected to because of the following informalities:
Claim 9: “wherein the step of placing said everted liner inside said tube comprising rolling said liner part back…” should read “wherein the step of placing said everted liner inside said tube comprises rolling said liner part back…”
Claim 15: “…a non-everted part having a length which is 25% shorter than the length of the access bore up to a length which is 25% longer than the length of the access bore” appears it should read, e.g., “…a non-everted part having a length which is in a range from 25% shorter than the length of the access bore up to a length which is 25% longer than the length of the access bore” or similar.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9, 11 & 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “attaching a first string to said liner of said free end of said tube-liner assembly for fixating said liner when pressure is applied to said tube” which raises several issues.
First, while the claim establishes “a liner” and “a tube” which, together, constitute “a tube-liner assembly”, and the claim further establishes a “free end” of the tube-liner assembly, the phrase “said liner of said free end of said tube-liner assembly” appears to require a separate liner located at the free end of the tube-liner assembly, which has not been established. This may have been intended to read “attaching a first string to said liner at said free end of said tube-liner assembly” or similar.
With respect to the phrase “for fixating said liner when pressure is applied to said tube”, it is unclear what the liner is required to be fixated to, and it is further unclear how the guide string achieves such a fixation of the liner to such an unspecified component, causing the scope of the claim to take on an unreasonable degree of uncertainty.
Regarding claim 11, this claim also recites “attaching a second string to said liner of said free end of said tube-liner assembly” which, as in claim 1, appears to require a separate liner located at the free end of the tube-liner assembly, which has not been established. This may have been intended to read “attaching a second string to said liner at said free end of said tube-liner assembly” or similar.
Regarding claim 13, the claim recites “The method according to claim 11, comprising an everting part of said tube”. As written, this appears to require the “method” to comprise an everting part of the tube, which does not make sense in context. As best understood, this was likely intended to recite that the tube (as used in the method of claims 1 & 11) further comprises an everting part, but this is not clearly established.
Regarding claim 14, the claim recites “said tube having a non-everted part having a length substantially equal to the length of said access bore”, which renders the claim indefinite. 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.
A plain reading of the claim language would suggest that the length of the non-everted part of the tube is substantially equal to the length of the access bore. However, in the embodiments depicted in applicant’s figures and described in the accompanying specification, the non-everted part of the tube has a first portion which extends from the connection of the inversion drum to the access point of the access bore, a second portion which extends along the length of the access bore down to bore-pipe junction; and a third portion which extends into the sewer pipe (i.e., which may substantially correspond to the length of the liner which extends into the sewer pipe, as the liner overlaps the non-everted portion of the tube).
Thus, it appears that the “length” of the “non-everted part” of the tube in claim 14 may be intended only to apply to the second non-everted portion of the tube, rather than the true total non-everted length of the tube (i.e., excluding the portion outside of the access bore and the portion extending into the sewer pipe, incl. the length overlapped by the liner at the free end, etc.), but this is not clearly established, causing the claim to take on an unreasonable degree of uncertainty.
Furthermore, it is noted that the non-everted length of the tube would change over the course of the method: the non-everted length would be relatively greater prior to placing the everted liner inside the tube (see figs. 2A-2C) and after inverting the tube-liner assembly (fig. 2J), and would be relatively smaller after placing the everted liner inside the tube (figs. 2D-F), and prior to inverting the tube-liner assembly (figs. 2H, 2I); and it is unclear if the limitations of claim 14 related to the non-everted length are intended to apply to the entire method or only during certain stages thereof.
Regarding claim 15, the claim recites “said tube having a non-everted part having a length which is 25% shorter than the length of the access bore up to a length which is 25% longer than the length of the access bore”, which raises several issues.
Claim 14, from which claim 15 depends, already recites “said tube having a non-everted part having a length substantially equal to the length of said access bore”. As such, it is unclear if claim 15 is requiring the tube to have an additional “non-everted part” (i.e., one substantially equal to the length of the access bore as in claim 14, and one which is within +/-25% of the length of the access bore), or if the non-everted part in claim 15 is the same as that of claim 14.
In the latter case, it is unclear the limitations of claim 15 conflict with the claim 14 limitation wherein the length is “substantially equal to” the length of the access bore, or if claim 15 is merely clarifying that “substantially equal” includes +/- 25%.
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 1-9, 11 & 13-15 (as understood) rejected under 35 U.S.C. 103 as being unpatentable over Wood (US 4,778,553) in view of Waring et al. (US 2003/0209823 A1; hereafter Waring) and Warren (US 6,827,526).
Regarding claims 1 & 11, Wood discloses (figs. 1-23; related embodiment in figs. 24-26) a method of relining a sewer pipe (14), said sewer pipe having an area in need of repair (see col. 1, lines 13-16, 48-56; col. 3, lines 64-67; etc.), and an access via an access bore (18), said access bore having an upper end (at 24) and a lower end (at 16a), and an access point (24) at said upper end, and being connected to said sewer pipe at a bore-pipe junction at said lower end (see fig. 1), said method comprising:
providing a liner (28A), for inserting inside said sewer pipe such that said sewer pipe is relined (e.g., figs. 17-23), said liner having an inside surface (i.e., the inside surface intended to face inside once installed; the inside surface when arranged as in figs. 7-11 & 21-23), and an outside surface (i.e., the outside surface as in figs. 7-11; initially covered by film 34) for facing said sewer pipe when said liner is in its intended position in said sewer pipe after said relining (i.e., as in figs. 21-23),
providing a tube (70) for inserting said liner into said sewer pipe (see figs. 15-23),
everting said liner such that said liner is turned inside out and said inside surface constitutes a temporary outside surface (see figs. 11-13, 15 & 16; the liner is substantially everted except for a length 78; see col. 5, lines 58-66: “At this point, the end of the lining sleeve is caused to invert inwardly…. FIG. 12 also shows the position when a substantial portion of the lining tube has been inverted into the inside of the carrier tube 70”),
placing said everted liner inside said tube such that said tube includes said liner (see figs. 12, 13, 15; in the method of Wood, the everting of the liner and the placing of the everted liner inside said tube are performed together) and constitutes a tube-liner assembly (see fig. 13 & 15), said tube-liner assembly having a free end (102; as shown),
moving said tube-liner assembly into said access bore with said free end (102) of said tube-liner assembly first (i.e., as in figs. 17 & 18; see below), and
inverting said tube-liner assembly, including said liner and said tube, when said free end is at said bore-pipe junction (figs. 19-21) such that said liner is placed with said outside surface facing said sewer pipe and covering said area in need of repair.
Regarding the step of “moving said tube-liner assembly into said access bore with said free end of said tube-liner assembly first such that said free end of said tube-liner assembly extends into said sewer pipe”, Wood clearly discloses that the free end (102) of the tube-liner assembly is moved into said access bore with the free end first, and shows the free end placed prior to inversion at least in a location proximate the sewer pipe (14), i.e., at the pipe-bore junction. Wood even explicitly discloses that the free end is held in a folded condition “until it passes the water trap bend 16A). Depending on how one defines the boundary between the sewer pipe and the access bore, the method of Wood may be reasonably seen as disclosing the limitation wherein the step of moving said tube-liner assembly into said access bore with said free end of said tube-liner assembly first is such that said free end of said tube-liner assembly extends into said sewer pipe. However, to promote compact prosecution, the following additional teachings are provided.
While the figures of Wood depict the liner rolled back on the tube substantially the whole initial length of the access bore (i.e., so as to also re-line the access bore), Wood also acknowledges that, in some cases, “it may be that only a section of the pipe needs to be lined, for example a section leading from the opening 16 up to a position short of the water trap bend 16A” (col. 3, lines 64 – col. 4, line 3).
Waring teaches various methods of relining (via liner 72) a sewer pipe (179) having an access via an access bore (180), the access bore connected to the sewer pipe at a bore-pipe junction at a lower end of access bore. In a first embodiment shown in fig. 2, a liner 72 extends from outside the access bore, through the access bore, and into the sewer pipe. For lining the sewer pipe, an initially everted section of liner is provided within an exposed non-everted liner section, whereby inverting the everted liner at the free end causes the liner to extend into the sewer pipe. As would be recognized by those skilled in the art, this is similar to the original arrangement disclosed by Wood.
However, Waring also teaches another embodiment in fig. 18, wherein a flexible tube instead serves as the exterior of the tube-liner assembly for the run through the access bore, with the liner only exposed near the free end where it extends out of the tube and into the sewer pipe to be repaired, with a free end thereof rolled back and secured to the end of the tube (i.e., at 80 / 92).
Waring explains (para. 94) that attaching the free end of the liner “at a location more immediately adjacent to the conduit 179 which is to be repaired” and using a flexible tube for the intervening length “saves the expense of preparation of a length of liner material equal to the length” of the flexible tube “and saves the expense of treating such a section of liner material with the required resin”.
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 method of Wood such that the free end of the liner is attached to the outer side of the tube “at a location more immediately adjacent” to the sewer pipe, in view of the teachings of Waring, so as to save the expense of preparing the additional length of liner which would otherwise be provided along the access bore (as suggested by Waring) particularly in applications where only the sewer pipe requires repair (a scenario which was also acknowledged by Wood).
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.
When modified as above, it would have been further obvious to a person having ordinary skill in the art (and ordinary creativity) before the effective filing date of the claimed invention, when moving said tube-liner assembly into said access bore with said free end of said tube-liner assembly first, to perform this step such that said free end of said tube-liner assembly extends into said sewer pipe, in view of the combined teachings of Wood and Waring, so as to ensure that the liner is properly positioned within the entrance to the sewer pipe for the subsequent inverting step.
Regarding the newly added limitation of claim 1, wherein the method further comprises a step of “attaching a first string to said liner of said free end of said tube-liner assembly for fixating said liner when pressure is applied to said tube”, and the related limitation of claim 11 wherein the method further comprises a step of “attaching a second string to said liner of said free end of said tube-liner assembly for guiding said tube-liner assembly at said bore-pipe junction”, it is first noted that Wood suggests that, in some applications (i.e., when lining a lateral line from the main sewer side rather than the access side), “it may be necessary or desirable to use a directing device for ensuring that the end of the assembly…points directly at the lateral opening” (col. 7, line 67 - col. 8, line 5).
In a related embodiment for lining a main sewer line (fig. 24-26), Woods discloses that a first string 110 (“a pull through tape, rope or cable or the like”) may be provided, attached to the free end of the liner (or tube-liner assembly), for assisting the eversion process and which, as understood, would also aid in guiding the tube-liner assembly at the bore-pipe junction.
Warren is generally directed to methods and devices for relining a sewer pipe.
As can be seen from the embodiments in figs. 1, 3, & 8, Warren teaches that a tube-liner assembly may comprise a plurality of lugs (56) in a region proximate the free end for attachment to a corresponding directing / positioning device, which may take various forms.
For the embodiment shown in fig. 8, Warren explains that “the positioning device is a system of cables including pulleys 124 and cables 126 attached to the launcher 10 and operated to pull and guide the launcher 10 into position within the sewer pipe 44. Note that it is within the contemplation to use any device or configuration to position the launcher as is known to a worker skilled in the art” (col. 6, lines 28-34).
While the tube-liner assembly of Wood does not comprise a launcher like that of Warren, Wood already discloses that directing / positioning devices (such as the tool in figs. 14-18) and strings (such as cable 110 in fig. 25) can be connected directly to the liner at the free end of the tube-liner assembly for guiding the tube-liner assembly.
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.
In view of the above, 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 method of Wood to further comprise a step of attaching a plurality of strings (e.g., cables), including a first string (as in claim 1) and a second string (as in claim 11) to said liner of said free end of said tube-liner assembly for guiding said tube-liner assembly at said bore-pipe junction, in view of the teachings of Warren, to enable the free end of the tube-liner assembly to be remotely directed/positioned from the surface via the strings (i.e., as suggested by Warren), especially considering that Wood already suggests that the tube-liner assembly may be used with a directing/positioning device in some applications (“for ensuring that the end of the assembly… points directly at the lateral opening”), and otherwise discloses attachment of other directing/positioning devices to the liner at the free end of the tube-liner assembly (e.g., the insertion tool).
Finally, as best understood, the first string attached to said liner of said free end of said tube liner assembly, resulting from the above combination, would also reasonably be capable of fixating said liner when pressure is applied to said tube, at least in the same manner as applicant’s disclosed embodiments (e.g., as best understood, when pressure is applied to the tube, tension on the first and second strings would serve to prevent the liner at the free end of the tube-liner assembly from being pushed further into the sewer, thus fixating the liner at the free end of the tube liner assembly so that everted part of the liner and tube can invert and expand into the sewer pipe in need of repair).
As a result, the limitations of claims 1 and 11 are met, or are otherwise rendered obvious.
Regarding claim 2, Wood further discloses the method to comprise a step of folding said tube-liner assembly at said free end such that said tube-liner assembly has a fold (see fig. 16; col. 6, lines 26-30) such that said fold unfolds when said free end reaches down into said sewer pipe at said bore-pipe junction (see figs. 17 & 18; solid line depiction of 102 in fig. 17 indicates folded free end, broken line depiction in fig. 17 indicates unfolded free end once reaching the sewer pipe at the bore-pipe junction, as also shown in fig. 18; see col. 6, lines 30-34 & 41-52).
Regarding claim 3, the method of Wood reads on the additional limitation wherein said tube-liner assembly is placed in said access bore such that said fold unfolds with the free end facing in the direction of said area in need of repair (see figs. 17 & 18; col. 6, lines 41-46).
Regarding claim 4, the method of Wood further comprises providing an insertion tool (see fig. 14) having a tool end (i.e., the end having elements 80, 82,84,92) for pushing said tube-liner assembly inside said access bore (see figs. 14-18; col. 6, lines 8-11).
Regarding claim 5, the method of Wood further comprises pushing said tube-liner assembly in said access bore by means of said insertion tool (see figs. 17-18; col. 6, lines 8-11 & 30-34).
Regarding claim 6, the method of Wood further comprises placing said tool end of said insertion tool at said fold (see figs. 16-18; col. 6, lines 26-30).
Regarding claim 7, the method of Wood reads on the additional limitation wherein the step of placing said everted liner inside said tube comprises said liner (28A) having a liner part (78) extending outside said tube at said free end (see figs. 13 & 15).
Moreover, while the claims do not currently appear to require the liner part to extend outside the tube only at the free end, as modified in view of Waring in the grounds of rejection for claim 1 above such that the free end is attached to the outer side of the tube “at a location more immediately adjacent” to the sewer pipe, the liner part would extend outside of the tube substantially at the free end, rather than along substantially the entire length of the tube (including the free end) as originally shown.
Regarding claim 8, the method of Wood reads on or otherwise renders obvious the additional limitation wherein said liner part has a length of at least 1 cm.
In the original configuration, Wood depicts the liner part (78) as having a length at least equal to the length of the access bore (see fig. 17), and discloses that the lateral sewer pipes (14) may be on the order of 6 to 8 inches in diameter, whereby the maximum length of liner may be 60 linear feet, and the carrier tube may be “of a like length” or slightly longer (col. 5, lines 5-16). As such, in the original embodiment, the liner part is reasonably seen as being any required length up to about 60 inches, which clearly falls within the range of “at least 1 cm”.
Similarly, Waring also discloses that the sewer pipe diameter may vary but could be, in some cases, a nominal diameter of 8 inches (para. 90) or otherwise in the ranges of 6-10 inches or even 12 inches and larger (para. 95). While Waring does not disclose a particular length for the liner part in fig. 18 when the free end thereof is secured to the tube at a position adjacent the sewer pipe, the figure reasonably appears to show the liner part having a length at least on the order of the pipe diameter which, as noted, may be 6-10 inches, which would also fall within the claimed range of “at least 1 cm”.
Furthermore, as set forth in MPEP § 2144.04(III)(A), it has been held that 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 [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)]. See also MPEP § 2144.05(II)(A).
Additionally, applicant’s specification does not appear to set forth any evidence of criticality or unexpected results attributable to use of lengths within the claimed range. Rather, the specification describes these values as merely “preferable” (pg. 5, lines 27-29: “Preferably [the] liner part…has a length of at least 1 cm such as 2 cm or 3 cm or 4 cm or more, such as between 10 and 20 cm”).
In view of the above, when modifying the method of Wood in view of Waring such that the free end of the liner is attached to the outer side of the tube “at a location more immediately adjacent” to the sewer pipe (i.e., as set forth for claim 1), it would have been further obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the liner part to have any reasonable length as may be required for a particular application (i.e., sufficiently long to roll back on the outside of the tube to be secured and to provide an initial outer surface for contacting the inner wall of the sewer pipe during subsequent inversion, etc.), including lengths of at least 1 cm, as a matter of routine engineering design, especially considering that it has been held that 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.
Regarding claim 9, the method of Wood reasonably reads on the additional limitation wherein the step of placing said everted liner inside said tube comprises rolling said liner part back around said tube such that said liner part surrounds said tube on the outside of said tube at said free end (i.e., as shown in figs. 12, 13, 15, the liner part extends out of the end of the tube and rolls back around the tube such that the liner part surrounds said tube on the outside of said tube at the free end, as claimed).
Examination Note: while the method of Wood results in the liner part being rolled back around said tube as claimed, it is recognized that this is achieved by placing the entire liner on the tube and then pulling the opposing end into the liner, which leaves the liner part at the free end “rolled back” around tube; rather than separately rolling the liner part back around the tube after the liner has been inserted. To promote compact prosecution with respect to this limitation, alternative grounds of rejection are provided later in this action.
Regarding claim 13, Wood further discloses that the tube (70), as used in the method above, comprises an everting part of said tube (i.e., the portion of tube 70 which has been everted during the process shown in figs. 11-13).
Regarding claim 14, the method of Wood, as modified above, reads on the additional limitation wherein said tube has a non-everted part having a length substantially equal to the length of said access bore.
In particular, in the original configuration of Wood shown in figs. 17 & 18, the non-everted part of the tube (much of which has the exterior part of the liner overlapped thereon), has a length which extends from the access point down to the bore-pipe junction and, therefore, is seen to substantially equal to the length of said access bore, at least in the same manner as applicant’s disclosed embodiments (see related 35 U.S.C. 112(b) rejections in this action).
Regarding claim 15, with respect to the limitation wherein said tube has a non-everted part having a length which is 25% shorter than the length of the access bore up to a length which is 25% longer than the length of the access bore, (i.e., a length within +/- 25% of the length of the access pipe as best understood; see related 35 U.S.C. 112(b) rejections in this action), it is first noted that applicant’s specification does not appear to set forth any evidence of criticality or unexpected results attributable to use of lengths within the claimed range.
Next, as would be recognized by a person having ordinary skill in the art, the non-everted part of the tube as used in Wood, and the corresponding flexible tube of Waring, must have sufficient length to extend from the access point down to the bore-pipe junction.
Similarly, a person having ordinary skill in the art (and ordinary creativity) before the effective filing date of the claimed invention would have recognized that providing a length which too long (i.e., which extends excessively far out of the access point) may be undesirable in many cases (e.g., requires excess material, may result in more cumbersome handling, etc.).
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).
Moreover, it has been held that where the difference between the prior art and a claimed invention involves only a change of form, proportions, or degree, such a difference is unpatentable, even though changes of the kind may produce better results than prior inventions [Smith v. Nichols, 88 U.S. 112, 118-19 (1874); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)]. In the instant case, the only difference between the prior art and the claimed invention, if any, would be the relative lengths of the non-everted part of the tube and the access bore (i.e., a change of form and/or proportion).
In view of the above, 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 method of Wood such that the non-everted part of the tube has a length which is 25% shorter than the length of the access bore up to a length which is 25% longer than the length of the access bore (i.e., a length within +/- 25% of the length of the access pipe as best understood) as a matter of routine optimization (i.e., providing a length which is sufficiently long to reach the bore-pipe junction, but not so long as to excessively extend above the access point), since 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 and/or as a matter of routine engineering design (for corresponding reasons), especially considering that such changes of form or proportions have been held as unpatentable even though such changes may produce better results than prior inventions.
Claim 9 (as understood) is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Wood in view of Waring and Warren as applied to claim 8 above, and further in view of Driver et al. (US 5,044,405; hereafter Driver).
Regarding claim 9, as previously described, the method of Wood is reasonably seen as reading on the additional limitation wherein the step of placing said everted liner inside said tube comprises rolling said liner part back around said tube such that said liner part surrounds said tube on the outside of said tube at said free end (i.e., as shown in figs. 12, 13, 15). However, while the method of Wood results in the liner part being rolled back around said tube as claimed, it is recognized that this is achieved by placing the entire liner on the tube and then pulling the opposing end into the liner, which leaves the liner part at the free end “rolled back” around tube, rather than separately rolling the liner part back around the tube after the liner has been inserted.
To promote compact prosecution with respect to this limitation, the following alternative grounds of rejection are provided.
Driver is generally directed to methods and corresponding devices for relining pipes (see fig. 1).
In figs. 2-4, Driver teaches a method of securing a flexible tube element (29) within a surrounding element (i.e., a carrier B) by inserting the tube into the carrier, and rolling back a free end of the tube around the carrier such that a tube part (29a) surrounds the carrier at the free end (col. 5, lines 22-30:“…as shown in FIG. 4, the jetter hose 24 is pulled to the left, thus drawing the tube 29 into the interior of the carrier B until only a portion 29a of the tube 29 extends forwardly from the exposed end of the leading end member 12. That portion 29a is then cuffed back over the exterior of the leading end member 12 and there secured in any appropriate manner, as by means of the band 36.”).
In figs. 8-13, Driver further teaches a method of securing an everted liner (A) within the tube (29) comprising placing said everted liner inside the tube such that the liner has a liner part (38) which extends outside of the tube at the free end (fig. 12), wherein the liner part is subsequently rolled back around said tube such that said liner part (38) surrounds the tube on the outside of the tube (i.e., at 29a) at the free end (col. 6, lines 30-38: “Next the jetter hose 24 is pulled to the left, which results in the tube 29 re-entering the carrier B, pulling along with it the lining A, which takes up a position inside the tube 29. That continues until, as shown in FIG. 12, essentially only the sleeve 38 remains outside the carrier B. Next, as shown in FIG. 13, the sleeve 38 is bent back over the leading end of the leading end member 12 and is there secured in position, as by being banded thereto, as at 46.”)
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 method of Wood such that the step of placing the everted liner inside said tube comprises rolling said liner part back around said tube such that said liner part surrounds said tube on the outside of said tube at said free end, in view of the teachings of Driver, as the simple substitution of one known technique of securing an everted liner within a tube (i.e. the original technique of Wood, wherein the liner is first placed outside the tube and then everted as it is pulled into the tube, leaving a liner part rolled around at the free end) for another (i.e., the technique of Driver, wherein the liner is inserted into the tube in an everted state so as to leave a liner part extending from the tube, wherein the liner part is then rolled back around the outside of the tube at the free end) to obtain predictable results (e.g., enabling the use of pre-everted liners and/or usable when it is desired to initially evert the liner separately from the tube; and which may otherwise reduce wear / stress on the liner as the liner need only evert with the tube into the final configuration once in the sewer pipe, rather than requiring an initial eversion during insertion into the tube and then a re-eversion again once in the sewer pipe).
Response to Arguments
Applicant's arguments filed 04 March 2026 have been fully considered.
As a preliminary note, in response to applicant's arguments against the references 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).
With respect to applicant’s arguments concerning the amendment to claim 1, it is first noted that the amendment raises several issues of indefiniteness under 35 U.S.C. 112(b). In particular, it is unclear what is meant by “said liner of said free end of said tube-liner assembly”, and it is also unclear what this first string is intended to “fixate” said liner relative to. It is also unclear how such fixation to the unspecified component is to be accomplished by the first string.
Applicant argues that the method of relining of Wood describes relining an access bore from ground level, past a water trap and down to the main sewer pipe, and thus does not describe relining a main sewer pipe as claimed in claim 1. This argument is not found to be persuasive for several reasons.
First, applicant’s interpretation of the entire lined pipe of Wood as being the “access bore” is not a reasonable interpretation of the reference. The method of Wood depicted in figs 1-23 describes relining a lateral sewer pipe (14) which is accessed via an access bore 18 (cleanout pipe).
It is also noted that the claim does not specifically require the sewer pipe to be a “main sewer pipe”. Indeed, applicant’s own specification suggests that “The sewer pipe may be a main sewer pipe, a lateral sewer pipe or any other type of sewer pipes and conduits” (pg. 4, lines 27-28).
Moreover, Wood suggests that “In the operation of lining the lateral pipe 14 it may be that only a section of the pipe needs to be lined, for example a section leading from the opening 16 up to a position short of the water trap bend 16A” (col. 3, lines 64-67), and explicitly states that “FIGS. 1 to 23 shows specific application of the invention, but it is to be pointed out that the invention has wider application and can be used for the lining of pre-set lengths of any pipeline or passageway” (col. 7, lines 26-29), with examples shown in figs. 24-26 showing a relining of a main sewer pipe.
Applicant argues that the rope of Wood is “attached to the opposite end of the free end of the tube-liner assembly” and that “the rope described in Wood is used to assist the air pressure in the eversion process”. This argument is not found to be persuasive. As explained in the amended grounds of rejection in this action, Wood suggests that, in some applications (i.e., when lining a lateral line from the main sewer side rather than the access side), “it may be necessary or desirable to use a directing device for ensuring that the end of the assembly…points directly at the lateral opening” (col. 7, line 67 - col. 8, line 5) and already discloses that directing / positioning devices (such as the tool in figs. 14-18) can be connected directly to the liner at the free end of the tube-liner assembly for guiding the tube-liner assembly, and further discloses that a string 110 (“a pull through tape, rope or cable or the like”) may be provided, attached to the liner (or tube-liner assembly), for assisting the eversion process which, as understood, would also aid in guiding the tube-liner assembly at the bore-pipe junction.
As further explained, Warren teaches the use of a “positioning device” comprising “a system of cables including pulleys 124 and cables 126” attached to a launcher 10 and “operated to pull and guide the launcher 10 into position within the sewer pipe 44. Note that it is within the contemplation to use any device or configuration to position the launcher as is known to a worker skilled in the art” (col. 6, lines 28-34).
Thus, as set forth in the grounds of rejection, 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 method of Wood to further comprise a step of attaching a plurality of strings (e.g., cables), including a first string (as in claim 1) and a second string (as in claim 11) to said liner of said free end of said tube-liner assembly for guiding said tube-liner assembly at said bore-pipe junction, in view of the teachings of Warren, to enable the free end of the tube-liner assembly to be remotely directed/positioned from the surface via the strings (i.e., as suggested by Warren), especially considering that Wood already suggests that the tube-liner assembly may be used with a directing/positioning device in some applications (“for ensuring that the end of the assembly… points directly at the lateral opening”), and otherwise discloses attachment of other directing/positioning devices to the liner at the free end of the tube-liner assembly (e.g., the insertion tool).
Finally, as best understood, the first string attached to said liner of said free end of said tube liner assembly, resulting from the above combination, would also reasonably be capable of fixating said liner when pressure is applied to said tube, at least in the same manner as applicant’s disclosed embodiments (e.g., as best understood, when pressure is applied to the tube, tension on the first and second strings would serve to prevent the liner at the free end of the tube-liner assembly from being pushed further into the sewer, thus fixating the liner at the free end of the tube liner assembly so that everted part of the liner and tube can invert and expand into the sewer pipe in need of repair).
Applicant argues that “Wood requires another manhole or bore access pipe in order to utilize the rope 110 of Wood”. This argument is not found to be persuasive. The embodiment shown in figs. 1-23 shows a relining operation performed from a single access bore, using an insertion tool to initially position / direct the free end of the tube-liner assembly while, as explained above, Warren teaches a system of strings (cables) attached near the free end of a tube-liner assembly may similarly be used to position / directed a free end of a tube-liner assembly via a single access bore.
Applicant argues that using the method of Wood to reline a main sewer pipe via an access bore would result in blocking the main sewer pipe as the relining is “performed on both sides of the corner”. This argument is not found to be persuasive. Wood explicitly discloses that ““In the operation of lining the lateral pipe 14 it may be that only a section of the pipe needs to be lined, for example a section leading from the opening 16 up to a position short of the water trap bend 16A” (col. 3, lines 64-67), that the method “can be used for the lining of pre-set lengths of any pipeline or passageway” (col. 7, lines 26-29) and, explicitly discloses examples wherein a main pipeline is lined.
With respect to the argument that Wood discloses fixing the liner at the access bore, as noted above, Wood explicitly states that it is not necessary to reline the access bore, as the method may be used to line only the lateral sewer pipe from the main sewer opening up to a point short of the access access bore, and that the method can be used for the lining of pre-set lengths of any pipeline or passageway. Moreover, Waring teaches that a liner need not extend on the outside of the tube-liner assembly along the length of the access bore, as attaching the free end of the liner “at a location more immediately adjacent to the conduit 179 which is to be repaired” and using a flexible tube for the intervening length “saves the expense of preparation of a length of liner material equal to the length” of the flexible tube “and saves the expense of treating such a section of liner material with the required resin”.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated any new or amended 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.
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/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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