DETAILED ACTION
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.
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 .
Claim Status
Claims 4 and 20-21 are cancelled. Claims 1-3, 5-19, and 22 are pending.
Response to Amendment
This office action is in response to communication received on 01/26/2026. The response cancelled claims 4 and 20-21; and presented amendment to claim 1, 5-8, 17 and 22. No new matter is introduced.
Response to Arguments
Applicant’s arguments, see pages 6-9, with respect to the rejection(s) of claims 1, 5-8, 17 and 22 under 35 USC § 112 have been fully considered and persuasive. Accordingly, the rejection to the claims is withdrawn.
Applicant's argument with respect to claims 1-19 and 22 have been fully considered but they are not persuasive for the following reasons:
Applicants’ argument regarding “Destructive vs. Non-destructive Testing”
Applicant argues that Schwab is directed to destructive testing of a tubular object and is therefore not relevant to the claimed invention, which allegedly focuses on non-destructive testing of a ring.
The examiner respectfully disagrees with the applicant. Schwab discloses applying controlled pressure to a tubular structure to evaluate its structural characteristics. Whether the test ultimately results in destruction is not a limiting feature of the apparatus itself, but rather a result of operating conditions. The claimed invention does not explicitly exclude destructive testing nor require a purely non-destructive regime. Accordingly, the distinction between destructive and non-destructive testing is considered a difference in degree, not in kind, and does not patentably distinguish over Schwab.
Applicants’ argument regarding Lack of Strain measurement in Schwab
Applicant argues that Schwab is not concerned with strain measurement, and therefore provides no motivation to include sensors as claimed.
The examiner respectfully disagrees with the applicant. The secondary reference Roberts explicitly teaches sensors for measuring deformation/strain of a ring structure. It would have been obvious to one of ordinary skill in the art to incorporate known measurement techniques (Roberts) into Schwab’s pressure-based testing apparatus. Incorporating strain sensors into Schwab’s system would have been an obvious design choice to obtain quantitative deformation data, improving accuracy and diagnostic capability. Such modification aligns with KSR v. Teleflex: combining familiar elements according to known methods to yield predictable results is obvious.
Applicants’ argument regarding Testing a Full Tubular Object vs. a Ring
Applicant argues that Schwab tests an entire tubular object, whereas the claimed invention is directed to a ring cut from a pipe.
The examiner respectfully disagrees with the applicant. A ring is a section of a tubular structure. Modifying Schwab’s apparatus to test a segment (ring) instead of the entire pipe is a routine optimization. Selecting a portion of a known structure (ring vs full pipe) is an obvious matter of design choice, particularly where the function (pressure testing structural integrity) remains unchanged.
Applicants’ argument regarding Annular pressure Member Differences
Applicant argues that Schwab does not disclose an annular pressure member as claimed, particularly with features such as varying thickness or adaptability.
The examiner respectfully disagrees with the applicant. Schwab discloses an expandable pressure shell/member capable of applying outward pressure. Differences in thickness, flexibility, or configuration represents optimization of known parameters, routine engineering variation. Modifying dimensions or material properties (e.g., thickness variation) to improve adaptability is considered obvious to try and within ordinary skill in the art.
Applicants’ argument regarding combination of Schwab and Roberts
Applicant argues that there is no motivation to combine Schwab and Roberts. The examiner respectfully disagrees with the applicant. Both references are in the same field of endeavor, Mechanical testing of pipe/tubular structures. Measurement capability including strain/deformation, (Roberts). Schwab provides pressure application system. One of ordinary skill would have been motivated to combine Schwab and Roberts to achieve improve measurement accuracy and correlation between applied pressure and resulting deformation as this is a predictable use of prior art elements.
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 1-3, and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Schwab (US 20090223301 A1) in view of Roberts et al. hereinafter Roberts (US 20100212405 A1).
With respect to claim 1, Schwab discloses an apparatus for testing a ring (abstract), comprising:
a body (hollow cylinder 2, Fig. 1),
an annular pressure member (pressure shell 5), which is expandable (expansion of the pressure shell 5, para. [0019]) and is connected to a source of pressurized fluid (loading the pressure shell with a pressure, para. [0007], also Fig. 5), and
one or more sensors for measuring deformation of the ring (sensors 26, 27, 28 monitor a possible deformation of the tubular object, para. [0024]) and fluid pressure (pressure measurement apparatus 20, para. [0024]),
wherein the body (2) defines a circular opening (Figs. 3 and 4) for receiving the annular pressure member (5) and the ring (Fig. 5), and the annular pressure member is provided, in use, between an inner surface of the substantially circular opening and an outer circular surface of the ring for applying pressure to the outer circular surface of the ring (see Fig. 4 and Para. [0005]- [0006], [0023]) cut from the pipe (tubular object 10); and wherein the annular pressure member, in cross-section, includes a central portion and enlarged end portions, wherein the enlarged end portions have a greater thickness than the central portion (see Fig. 4 and 5 that illustrate the structure of tubular object 10).
Schwab discloses all the claimed subject matter except the ring is a ring cut from a pipe and one or more sensors include for measuring strain.
Roberts invention related to an apparatus for testing pipes such as those used for forming underwater pipelines discloses the ring is a ring cut from a pipe and one or more sensors include for measuring strain (testing pipes for use in making subsea pipelines, comprising: cutting a ring from one or more pipes of the type used to make the pipeline; forming flat, substantially parallel surfaces on the ends of the ring; providing means for measuring strain and deformation of the ring, para. [0012]- [0014]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Schwab’s annular pressure apparatus by employing the ring configuration thought by Roberts, wherein the ring is cut from a pipe and includes one or more sensors for measuring strain. Roberts teaches that using a ring cut from a pipe of the same type as the structure under test provides a reliable and representative means for measuring strain and deformation in tubular members. Substituting Schwab’s ring with Roberts’s pipe-cut ring would have been a predictable modification that enhances measurement accuracy and ensures material and geometric correspondence between the test ring and the pipe being evaluated. Such a combination would have been motivated by the desire to achieve improved correlation between applied pressure and measured strain, yielding more accurate and meaningful test results, with a reasonable expectation of success.
With respect to claim 2, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses the annular pressure member comprises a closed hollow ring (an expansion of the pressure shell 5, which is provided as a pressure membrane or pressure cuff, para. [0019]).
With respect to claim 3, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses the annular pressure member is formed from stainless steel (the pressure chamber is comprised of a hollow metal cylinder, para. [0009]).
With respect to claim 5, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses the central portion has a width equal to or greater than the length of the ring being tested (see Figs. 1 and 5).
With respect to claim 6, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses a wall of the annular pressure member defines a first surface for engaging the inner surface of the circular opening and a second surface for engaging the outer circular surface of the ring (see Fig. 1 and 2).
With respect to claim 7, Schwab and Roberts disclose the apparatus of claim 6 above. Schwab further discloses the first and second surfaces are parallel to one another (see Fig. 4, item 5).
With respect to claim 8, Schwab and Roberts disclose the apparatus of claim 6 above. Schwab further discloses the first and second surfaces are spaced by a predetermined distance, the predetermined distance is set based on an anticipated collapse pressure associated with the circumferential Poisson shrinkage of the second surface at the onset of failure (see para. [0019], [0023], [0025]).
With respect to claim 9, Schwab and Roberts disclose the apparatus of claim 6 above. Schwab discloses the wall of the annular pressure member defines a first and second surface (see Fig. 4). However, Schwab is silent about the second surface is thinner than the first surface.
It would have been an obvious matter of design choice to make the second surface thinner than the first surface, as claimed, since the difference in wall thickness merely represents a variation in dimension that would have been motivated by routine optimization to achieve desired performance characteristics such as weight reduction, flexibility, or pressure response, without producing any new or unexpected result. Therefore, the claimed difference in thickness would have been obvious to one of ordinary skill in the art as a matter of design choice.
With respect to claim 10, Schwab and Roberts disclose the apparatus of claim 1 above. Roberts further discloses an annular gasket located between the annular pressure member and the ring in use (see Fig. 5, 20).
Accordingly, it would have been obvious to one of ordinary skill in the art to modify Schwab’s apparatus in view of Roberts by adding an annular gasket between the annular pressure member and the ring, as thought by Roberts. The addition of the gasket would predictably improve sealing and pressure uniformity during operation. Such a modification represents a routine design improvement to achieve known benefits with a reasonable expectation of success.
With respect to claim 11, Schwab and Roberts disclose the apparatus of claim 10 above. The combination of Schwab and Roberts is silent about the annular gasket is formed from a resilient material and comprises one or more layers, in a thickness direction, of reinforcing material. However, it would have been obvious to one of ordinary skill in the art to form the annular gasket from a resilient material and to include one or more layers of reinforcing material, as claimed. The selection of material composition and layering for gaskets represents a well-known matter of design choice, routinely optimized to achieve desired flexibility, sealing performance, or durability. Such variations would have been obvious to one of ordinary skill in the art without producing any unexpected results.
With respect to claim 12, Schwab and Roberts disclose the apparatus of claim 11 above. The combination of Schwab and Roberts is silent regarding the layers of reinforcing material are undulating in a circumferential direction. However, it would have been obvious to one of ordinary skill in the art to modify the reinforcing layers to be undulating or wavy around the circumference in order to improve flexibility, distribute stress evenly, and enhance sealing performance-design that are well-known in gasket engineering and routinely optimized without producing unexpected results.
With respect to claim 13, Schwab and Roberts disclose the apparatus of claim 10 above. Schwab further discloses an outer circular surface of the gasket is undulating in a circumferential direction (para. [0030]).
With respect to claim 14, Schwab and Roberts disclose the apparatus of claim 10 above. The combination of Schwab and Roberts is silent about the annular pressure member, in cross-section. comprises a central portion and enlarged end portions. which have a greater thickness than the central portion, and wherein the gasket is configured to fill a void defined by the thinner central portion. However, it would have been obvious to one of ordinary skill in the art to form the annular pressure member with a central portion and enlarged end portions, as claimed, based on common knowledge in the art. It is well known that pressure-retaining components often employ variable thickness-thicker at the ends and thinner at the center-to improve strength, sealing, and stress distribution. Likewise, configuring a gasket to fill a void defined by a thinner section is a routine engineering practice used to ensure uniform pressure and prevent leakage. Therefore, the claimed configuration represents a conventional design approach that would have been obvious to one of ordinary skill in the art without the exercise of inventive skill.
With respect to claim 15, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses the body comprises a clamp (clamping at the end of the test device, para. [0031]).
With respect to claim 16, Schwab and Roberts disclose the apparatus of claim 15 above. Schwab further discloses the clamp comprises two or more curved hinged portions (para. [0031]).
With respect to claim 17, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses the body comprises a plurality of curved anchor blocks that define the inner surface of the circular opening (3 and 4, see Figs. 3 and 4).
With respect to claim 19, Schwab and Roberts disclose the apparatus of claim 1 above. Schwab further discloses a pressurisation system which comprises the source of pressurised fluid, wherein the pressurisation system comprises an accumulator (the pressure is supplied from the storage container 16 through a pump device 17 to the pressure shell 5, para. [0024]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schwab and Roberts as applied to claim 17 above, and further in view of Kirii et al. hereinafter Kirii (US 5361615 A).
With respect to claim 18, Schwab and Roberts disclose the apparatus of claim 17 above. The combination of Schwab and Roberts is silent about each of the anchor blocks comprises at least one load cell, which is arranged to lie between the anchor block and the body for measuring a load on the annular pressure member.
Kirii invention related to an apparatus for measuring a force or load acting on a pressure member for holding a blank or workpiece in a pressing machine discloses each of the anchor blocks comprises at least one load cell, which is arranged to lie between the anchor block and the body for measuring a load on the annular pressure member (see Figs 28, 29 and col. 26 lines 20-62).
Accordingly, it would have been obvious to one of ordinary skill in the art to modify the combination of Schwab and Roberts by incorporating the load cell arrangement taught by Kirii. Kirii teaches positioning a load cell between an anchor block and a pressure member, which provides accurate force monitoring. Incorporating this feature into Schwab’s annular pressure apparatus would have been an obvious improvement to enable direct measurement of the load applied to the pressure member, thereby enhancing precision and control. Such a modification represents the predictable use of a known element for its intended purpose, with a reasonable expectation of success.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Schwab and Roberts and further in view of Roberts et al. hereinafter 576’ (US 20200132576 A1).
With respect to claim 22, claim 22 has similar limitation like claim 1, and rejected in view of Schwab and Roberts above, except:
cutting the ring from the pipe;
fitting the ring into the apparatus; and
applying
576’ discloses a method of testing a ring cut from a pipe using an apparatus (apparatus for testing rings cut, Abstract), the method comprising:
a. cutting the ring from the pipe (cutting a ring from a pipe, para. [0043]);
b. fitting the ring into the apparatus (mounting the ring in a pressure chamber, para. [0049]); and
c. applyingincreasing the pressure outside the ring and measuring the strain and deformation on the ring as the pressure increases, para. [0056]);
Accordingly, it would have been obvious to one of ordinary skill in the art to combine Schwab and Roberts with 576’ to test a ring cut from a pipe by applying pressure and measuring strain, as this would be a predictable way to improve and confirm the accuracy of pipe ring testing results.
Conclusion
THIS ACTION IS MADE FINAL. 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 GEDEON M KIDANU whose telephone number is (571)270-0591. The examiner can normally be reached 8-4.
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/GEDEON M KIDANU/Examiner, Art Unit 2855
/KRISTINA M DEHERRERA/Supervisory Patent Examiner, Art Unit 2855 5/4/26
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