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 .
Election/Restrictions
Applicant’s election of Invention I (claims 1-6), drawn to a non-permanent insert, in the reply filed on 28 October 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-9 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Comment on Information Disclosure Statement
Applicant’s Information Disclosure Statement (IDS) filed 03/03/2023 cited US 4,396,049 to Calvert et al., but this appears to be a typographical error as US 4,396,049 is directed to a “Backup Roll Arrangement for Wood Veneer Lathe” which does not appear relevant to the current application.
By contrast, applicant’s specification makes reference to US 4,396,059 to Banner et al. (para. 3, lines 10-11) et al. which does appear relevant (“Insert for a Condenser Tube”) but which is not cited in the IDS. It is noted that in applicant’s “References” section of the specification, paragraph [0015] recites the patent number of Calvert et al. [US 4,396,049] but the name “Banner”.
To ensure clarity of the record, the proper “Banner” reference [US 4,396,059] has been included in the PTO-892 provided with this action.
Drawings
37 CFR 1.84(p)(4) states: “The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because, in many instances, different reference characters have been used to designate the same part in different views.
By way of example, the “splines” are indicated variously at least as “110”, “210”, “310”, “410”, and potentially as “620” and/or “630”.
The insert (generally, or a cylindrical portion thereof) is indicated by at least “130” and “330”, and potentially “250” (see specification objections below).
The “opposing end circumference” is indicated by both “160” and “240”.
It is also unclear if “140”, “150”, “220”, “230”, “320”, “510”, and “610” are each intended to indicated the same feature as one another (i.e., the flared flange lip).
The drawings are further objected to under 37 CFR 1.83(a) because they fail to show “An internal spline perpendicular to the external splines” which “encircles the inside of the insert 250” (para. 33, line 10-11) as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Finally, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, an embodiment showing the flared flange lip with ridges (i.e., as in claims 1, 3 & 5) and, more particularly, with both recesses and ridges (as in claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The specification as a whole is replete with inconsistent terminology, improper reference number placement, inconsistent description of elements across different figures, and otherwise fails to present a cohesive description of applicant’s invention.
The disclosure is objected to because of the following informalities:
Throughout the specification, the reference numbers are frequently placed incorrectly within sentences, raising doubt as to which recited element is intended to correspond to the reference number. By way of example, paragraph 33, lines 1-3 recites “The insert is a smooth cylinder 130 with protruding splines equally spaced 110 that start from the flared circumference flange of the insert 140 and continue down a portion of a length of the insert.” As best understood, “130” likely refers to the “smooth cylinder”, but “110” is positioned following “spaced” rather than “splines” as would be expected if “110” was intended to indicate “splines”. Similarly, it is unclear if “140” is intended to indicate the “insert” generally or is intended to indicate the “flared circumference flange”.
In some instances, the reference number is used entirely apart from what was likely the intended corresponding element (e.g., para. 20, lines 6-8: “This inlet flange is an integral component of the insert design including the features allowing for easy removal 110”; 110 should be indicating the later described splines, not “features allowing for easy removal” generally). See also para. 21: “It is recessed 120 in this embodiment….”; 120 should be indicating particular “recesses”, not that the insert is “recessed” generally).
The above issues are merely selected examples of problems which occur repeatedly throughout the specification. Applicant should carefully review the specification to ensure that each reference number immediately follows the corresponding element as shown in the figures (e.g., “…splines 110…”).
The specification also lacks consistency when describing features across the different figures, causing confusion as to what exactly is intended. By way of example, the same “splines” are referred to by various different numbers (110, 310, 410) and further appear to be referred to as “wall strengthening supports 210” for figure 2. Again, this is merely illustrative of one type of error which occurs throughout the specification.
The specification also variously recites a “flared circumference flange” (140?), a “rim of the flared flange circumference” (having recesses 120), a “flared flange lip” (150?), “curved wall supports” (220; which appears to correspond to the rim of the flared flange), “the flared circumference lip” (230; which appears to correspond to the flared circumference flange 140?), the “flared flange lip circumference” (320 in fig. 3, 510 in fig. 5; which also appears to correspond to the flared circumference flange 140), and a “flared flange lip circumference” (610 in fig. 6, which appears to correspond to the “flared flange lip” 150 in fig. 1). It is unclear how these similarly named elements are supposed to be related to one another and the multiplicity of similar and/or overlapping elements and lack of consistent terminology causes the description to take on an unreasonable degree of uncertainty.
Next, the specification initially recites that “a feature that aids in extraction” is “recessed” in the embodiment shown, but “may also be raised to provide a similar interface” (para. 21). In other words, the feature may be recessed or raised. However, the specification later recites that “in certain embodiments, these recesses may be ridges” (para. 33, lines 4-5) which is confusing.
The term “recess” has a common and accepted definition of “a depressed, hollow, or indented space; also, a hole or opening”, while “ridge” has a common and accepted definition of “any extended protuberance; a projecting line or strip”. It is unclear how a recess can be a ridge in this context. While it is understood that a pair of recesses can form a ridge therebetween (and vice versa), it is not clear that this was intended here. As best understood, this likely was intended to describe an alternate embodiment wherein the recesses are substituted for ridges, or similar.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” In view of the various issues noted above, the specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112.
Finally, as noted in the “Comment on Information Disclosure Statement” section above, paragraph 15 of applicant’s specification (in the References section) appears to have the wrong US Patent Number. The listed number [US 4,396,049] corresponds to an apparently unrelated patent to “Calvert et al.”. As understood, this should instead read “US 4,396,059”, which corresponds to a relevant patent to Banner et al. and was previously recited in applicant’s specification (para. 3, lines 10-11).
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 1-6 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 “a main body, made up of a front end and a back end”. It is unclear in this context if “made up of” is intended to define a closed construction [i.e., consisting of; MPEP § 2111.03(II)] or an open construction [i.e., comprising; MPEP § 2111.03(I)], causing the claim to take on an unreasonable degree of uncertainty.
Claim 1 recites “the flared flange lip containing a multitude of recesses and ridges” which raises several issues.
First, the term “multitude” has a common and accepted definition of “a large number”. In the instant case, however, it is unclear what quantity is required to meet the definition of “multitude” (i.e., as opposed to merely a plurality; more than one, etc.). In other words, the term “multitude” in claim 1 is a relative term which renders the claim indefinite. The term “multitude of recesses and ridges” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (i.e., the requisite quantity), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Next, as best understood in view of the specification, the flared flange lip may be provided with “recesses” (i.e., recesses 120 as shown) or, may be provided with raised ridges (i.e., to provide tool attachment points). In other words, as understood, the specification appears to describe them as alternatives. It is not clear that the flared flange lip is disclosed to have both recesses and ridges in the sense as appears to be claimed here. See discussion for the related specification objection above.
With respect to the claims, 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.
In the instant case, the recitation of the flared flange lip having a multitude of “recesses and ridges” appears to conflict with the disclosure of the recesses and ridges being alternative arrangements, with the inconsistency causing the claim to take on an unreasonable degree of uncertainty. Moreover, claim 3 which depends from claim 1, otherwise recites “a multitude of recesses or ridges” (which is improper for other reasons, described later).
Claim 1 further recites “a multitude of splines, encircling the flared flange lip” which raises several issues.
First, as with “a multitude of recesses and ridges”, the term “multitude” has a common and accepted definition of “a large number” and it is unclear what quantity of splines is required to meet the definition of “multitude of splines” (i.e., as opposed to merely a plurality; more than one, etc.). In other words, the term “multitude” here is a relative term which renders the claim indefinite. The term “multitude of splines” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (i.e., the requisite quantity), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Next, the term “encircle” has a common and accepted definition of “to surround somebody/something completely in a circle”. In the disclosed embodiments as shown in the figures, however, the flared flange lip (as understood) extends radially beyond the splines so the splines, which do encircle the cylindrical portion of the main body, would not necessarily be considered to encircle the flared flange lip as is now claimed, causing the intended scope to take on an unreasonable degree of uncertainty.
Claim 1 recites “the multitude of splines attaching to an inlet flange extending beyond an individual spline which then tapers into the individual spline at a mid-point along the splines to aid in extraction”. This limitation is confusing, difficult to parse, and appears to repeat structures previously recited. The specification, which is also confusing and inconsistent, does not provide clarity. As best understood in view of the figures, the “inlet flange” corresponds to the already recited “flared flange lip”.
It also does not appear that the “inlet flange” as disclosed, which does “extend beyond an individual spline”, would be seen to “taper into the individual spline at a mid-point along the splines”. Rather, as understood, the inlet flange / flared flange lip tapers from the flange to the main cylindrical body, and the splines extend from the tapered portion of the inlet flange / flared flange lip, along the main cylindrical body until they taper to the main cylindrical body at a midpoint, etc.
The term “to aid in extraction” is also unclear as the claim does not specify what is to be extracted. As best understood, these splines aid in enabling the insert to be removed from the tube / conduit / pipe, etc., but this is not made clear in the claim.
Claim 1 recites “an amount of internal hydraulic forms or tapers critical to flow performance” which renders the claim indefinite for several reasons.
First, it is unclear if the term “amount of internal hydraulic forms or tapers” is intended to define a quantity (e.g., one taper, etc.) or a degree (e.g., a degree of taper, etc.). If degree was intended, then it is also unclear how the “amount” of “internal hydraulic forms” would be assessed.
Next, it is unclear how the requirement of the amount being “critical to flow performance” is intended to be assessed, objectively. It is not clear that applicant necessarily intended this to mean that the forms / tapers enable the flow to reach “critical flow” (i.e., choked flow) conditions. Moreover, as would be understood by those skilled in the art, such flow conditions depend not only on the geometry of the taper (nozzle) but also on the system conditions, fluid properties, etc. As such, an amount of internal hydraulic forms or taper which may be critical to flow performance in one usage condition may not necessarily be critical to flow performance in another. Since no objective standard is provided by which to assess whether the “amount of internal hydraulic forms or tapers” is “critical to flow performance” a person skilled in the art would not be reasonably apprised of the metes and bounds of the claimed invention.
Claim 2 recites “wherein the protective insert is made up of a polymer, specifically formulated to withstand a range of system temperatures, a plastic, a metal, a ceramic, or a material specifically formulated to protect against fluid media, temperature, and contaminants of the system being protected” which raises several issues.
First, as previously noted for claim 1, it is unclear if “made up of” in this context is intended to define a closed construction [i.e., consisting of; MPEP § 2111.03(II)] or an open construction [i.e., comprising; MPEP § 2111.03(I)], causing the claim to take on an unreasonable degree of uncertainty.
Next, the recitation of “a polymer, specifically formulated to withstand a range of system temperatures” is indefinite. This limitation appears to require the polymer to have a particular formulation capable of withstanding “a range of system temperatures”, but does not define the required range of system temperatures and does not set forth any objective criteria or standards to be utilized when assessing what would acceptably constitute such a “specifically formulated” polymer, causing the claim to take on an unreasonable degree of uncertainty. The limitation might also be seen as requiring one to assess the intent of a manufacturer as to whether or not the polymer used is “specifically formulated” so as to withstand some unspecified “range of system temperatures” (e.g., as opposed to selecting an otherwise known polymer which is otherwise capable of withstanding such a range of temperatures), which is improper.
Similarly, the recitation of “a material specifically formulated to protect against fluid media, temperature, and contaminants of the system being protected” is also indefinite. This limitation appears to require the “material” to have a particular formulation capable of “protecting against” an unspecified “fluid media”, an unspecified “temperature”, and unspecified “contaminants”, and does not set forth any objective criteria or standards to be utilized when assessing what would acceptably constitute such a “specifically formulated” material, causing the claim to take on an unreasonable degree of uncertainty. Further, as would be understood, a material suitable for protecting against one fluid media or one contaminant, or one temperature, would not necessarily be suitable for protecting against another fluid media, contaminant, or temperature. The limitation might also be seen as requiring one to assess the intent of a manufacturer as to whether or not the material used is “specifically formulated” so as to protect against unspecified “fluid media”, “temperature”, and “contaminants” (e.g., as opposed to selecting an otherwise known material which is otherwise capable of protecting against such fluid media, temperature, and contaminants), which is improper.
Claim 3 recites “wherein the flared flange lip contains a multitude of recesses or ridges”, however, claim 1 already recites “the flared flange lip containing a multitude of recesses and ridges”. As understood, the “recesses” and “ridges” of claim 3 are likely referring to the same “recesses” and “ridges” already established by claim 1. Moreover, claim 3 appears to conflict with claim 1 since claim 1 requires “recesses and ridges” while claim 3 only requires “recesses or ridges” (i.e., “and” vs “or”), causing the claim to take on an unreasonable degree of uncertainty. See related 35 U.S.C. 112(d) rejections below.
Claims 4 & 5 recite “the inlet flange has [recessed / raised] features designed to provide interface with a tool or operator to aid in extraction of the protective insert” which raises several issues.
First, as previously explained for claim 1, the “inlet flange” is understood to correspond to “flared flange lip”. As such, these “recessed” or “raised” features set forth in claims 4 & 5. respectively, are understood to corresponding to the already recited “recesses” and “ridges” of the flared flange lip recited in claim 1, but this is not made clear in the claim.
Claims 4 & 5 may have been intended to further define the “recesses” and “ridges” of claim 1 (i.e., as being features designed to provide interface with a tool or operator).
Additionally, the recitation of the recessed feature or raised feature as being “designed to provide interface” may be seen to improperly require inquiry as to the purpose or intent of the designer rather than as defining the resulting structure itself (e.g., a feature configured to provide interface, etc.).
Claim 6 recites “the inlet flange transitions into a spline or series of splines around the circumference of the inserts which then taper into the main body thereof” which raises several issues.
First, claim 1 already establishes “a multitude of splines” which attach to the inlet flange “which then tapers into the individual spline”. As best understood, the splines of claim 1 are the same splines as recited in claim 6.
Next, the recitation of “inserts” as plural causes the claim to take on an unreasonable degree of uncertainty as the claims are directed to a single “insert”.
Finally, as best understood, the inlet flange does not necessarily “transition” into “a spline or series of splines” as claimed. Rather, as understood from the figures, the inlet flange / flared flange lip tapers from the flange to the main cylindrical body, and the splines, surrounding the main body, extend from the tapered portion of the inlet flange / flared flange lip, along the main body until they taper to the main body.
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites “wherein the flared flange lip contains a multitude of recesses or ridges”. However, claim 1 already recites “the flared flange lip containing a multitude of recesses and ridges”. As “recesses or ridges” in claim 3 is broader than “recesses and ridges” in claim 1, claim 3 appears to be improperly broadening (rather than further limiting) the subject matter of the claim upon which it depends or otherwise fails to include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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 - Thursday, 9:00 AM - 5:00 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone: Kenneth Rinehart can be reached at (571) 272-4881; Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Richard K. Durden/Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753