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 12 June 2026. As directed by the amendment: claims 1 & 3 have been amended, claims 5 & 6 have been cancelled, and no claims have been added. Thus, claims 1-4 & 7-9 are presently pending in this application, with claims 7-9 currently withdrawn as directed to a nonelected invention.
It is noted that, while claims 5 and 6 are indicated as “cancelled”, they still show the previous claim text. 37 CFR 1.121(c)(4)(i) requires that “No claim text shall be presented for any claim in the claim listing with the status of ‘canceled’ or ‘not entered’”. Furthermore, in applicant’s specification amendments, the paragraph numbers beginning with [0011] are incorrect and are off by 10 in each case. I.e., the paragraph indicated at [0011] in the amendment was [0021] in the specification as filed. Applicant also indicates FIG. 3 as a “NEW SHEET” but this is not a new sheet. Moreover, the previous sheet which had FIG. 3 also had FIG. 4, which is now omitted. It is unclear if FIGS. 4-7 are intended to be cancelled or simply are not amended. Clarification is required.
Applicant is advised that subsequent amendments which fail to comply with 37 CFR 1.121 may be deemed non-compliant and denied entry. See MPEP § 714(II).
It is also noted that applicant’s reply fails to address certain issues raised in the previous action and several of the amendments raise questions which were not explained by applicant’s accompanying remarks (see drawings objections section) below.
Applicant is advised that subsequent replies which are not fully responsive may be deemed non-responsive and denied entry. See MPEP § 714.03.
Drawings
The drawings are objected to because of the following issues:
As noted in the response to amendment section above, applicant’s drawing amendment filed 12 June 2026 comprises three sheets: two “replacement sheets” (with figs. 1 & 2, respectively) and one “new” sheet (with fig. 3). However, the application previously contained four sheets, with figs. 1-7. It is unclear if applicant was intended to delete figures 4-7 or if figs. 4-7 were intended to be left as originally filed.
Appropriate correction and/or clarification is required.
Applicant should also ensure that all reference characters mentioned in the description appear in the drawings, and that all reference characters in appearing in the drawings are mentioned in the description [37 CFR 1.84(p)(5)].
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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
A substitute specification (excluding the claims) is required pursuant to 37 CFR 1.125(a) because the number or nature of the amendments render it difficult to consider the application.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
The disclosure is objected to because of the following informalities:
In applicant’s specification amendment, the paragraph numbers beginning with [0011] are incorrect and are off by 10 in each case (e.g. the paragraph indicated at [0011] in the amendment was [0021] in the specification as filed).
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).
Para. 33 (Para. 23 in the amendment), line 1: “cylindrical 130” should read “cylinder 130”.
Para. 33 (Para. 23 in the amendment), lines 5-6: “The flared flange lip transitions 150…” should read “The flared flange lip 150 transitions…”
The amendments to paragraph 33 [23 in the amendment] appear to delete all references to figures 4, 6 & 7 but not figure 5. It is unclear if this was intended.
If figures 4-7 were intended to be deleted, amendment would also be required for the brief descriptions of the drawings, paragraphs 24-31.
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 1-4 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 “a multitude of recesses” and “a multitude of splines”. 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 this context, the term “multitude” in claim 1 is a relative term which renders the claim indefinite. The terms “multitude of recesses” and “multitude of splines” are 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.
Claim 1 further recites that the multitude of recesses are “to aid in extraction”. The term “to aid in extraction” is unclear as the claim does not specify what is to be extracted. As best understood, these recesses 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 further recites that the multitude of splines is “around the cylindrical body and designed to retain insert in service”, which renders the claim indefinite.
First, while a “main body” is recited, it is not established to be “a cylindrical body.
Next, with respect to the limitation of “designed to retain insert in service”, as best understood, this was likely intended to mean that the splines are configured (or intended) to retain the insert within the corresponding tube, conduit, or pipe, but this is not clearly established.
Furthermore, the use of the phrase “designed to retain” 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 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”, however, claim 1 already recites “the flared flange lip containing a multitude of recesses”. As understood, the “recesses” of claim 3 are likely referring to the same “recesses” already established by claim 1, causing the claim to take on an unreasonable degree of uncertainty.
See related 35 U.S.C. 112(d) rejections below.
Claim 4 recites “the inlet flange has recessed features designed to provide interface with a tool or operator to aid in extraction of the protective insert” which raises several issues.
First, the “inlet flange” lacks proper antecedent basis in the claim. As best understood, the “inlet flange” appears to correspond to the “flared flange lip”. As such, these “recessed” features set forth in claim 4 are understood to correspond to the already recited “recesses” of the flared flange lip recited in claim 1, but this is not made clear in the claim.
Claim 4 may have been intended to further define the “recesses” of claim 1 (i.e., as being features designed to provide interface with a tool or operator).
Additionally, the recitation of the recessed features 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.).
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”. However, claim 1 already recites “the flared flange lip containing a multitude of recesses”. As a result, claim 3 is improper for failing to further limit the subject matter 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.
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 1-4 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Campbell (US 6,543,811) in view of Berry (US 5,383,688) and Jacovitz (US 4,539,874).
Regarding claim 1, Campbell discloses (figs. 1-9) a non-permanent protective insert (36; see col. 4, lines 66-67: “Liner 36 is preferably replaced periodically as liner 36 is eroded and/or abraded…”) for use with a tube, a conduit, or a pipe (see figs. 4 & 9), comprising:
a main body, made up of a front end (i.e., left end in figs 4 & 8) and a back end (right end in figs. 4 & 8);
a fluid diverting element (generally, 36m “lip section”, incl. bevels 36e,f) located on the front end with a flared flange lip (incl. “lips” 36c, d); and
an amount of internal hydraulic forms or tapers critical to flow performance (e.g., tapers 36b, 36e, 36f; see col. 4, lines 39-61: angles of 36b, 36e, 36f selected to decrease turbulence at the upstream or downstream end, respectively).
Campbell does not explicitly disclose the additional limitations wherein the flared flange lip contains a multitude of recesses to aid in extraction, or wherein the insert comprises a multitude of splines around the cylindrical body designed to retain the insert in service.
Berry teaches (e.g., figs 7-9, 11) a non-permanent protective insert (10) for use with a tube, a conduit, or a pipe (54), comprising a main body with a flange lip (14) on a front end, and a multitude of splines (20) around the cylindrical body and designed to retain the insert in service (col. 4, lines 26-27: “…fins 20 securely fix the liner within the conduit…”)
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 insert of Campbell to further comprise a multitude of splines around the cylindrical body designed to retain the insert in service, in view of the teachings of Berry, to enable the insert to be inserted and/or removed more easily than would be required for a conventional press-fit and/or to enable the insert to be used with a pipes/conduits/tubes having a wider range of internal diameters relative to a conventional press-fit, etc.
Jacovitz teaches (various embodiments in figs. 1-8) that a circular flange / head of a component may be provided with a multitude of recesses (e.g., 34/36 in figs 3-5, 38/40 in fig. 6) to receive corresponding blades (52/64) of a tool, providing a temporary interlock with the tool.
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 insert of Campbell to further comprise a multitude of recesses to aid in extraction, in view of the teachings of Jacovitz, as the application of a known technique (i.e., providing a multitude of radial recesses in a flanged head of a component, as in Jacovitz) to a known device ready for improvement (i.e., the insert of Campbell, having flanged head) to obtain predictable results (i.e., to enable temporary interlock with a tool for inserting or removing the insert; avoiding the need for the user to separately hold the insert, etc.).
Regarding claim 2, the insert of Campbell, as modified above, reads on the additional limitation 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.
See col. 4, lines 42-46: “Liner 36 is preferably integrally formed from a single piece of high-strength, corrosion and abrasion resistant steel alloy and meets or exceeds API…standards for strength and dimensions”.
Regarding claims 3 & 4, the insert of Campbell, as modified above such that the flared flange lip comprises a multitude of recesses (i.e., in view of Jacovitz, to enable temporary interlock with a tool, etc.), reads on the additional limitations wherein the flared flange lip contains a multitude of recesses (as in claim 3), and wherein the inlet flange (i.e., the flared flange lip, as understood) has recessed features (i.e., the recesses) designed to provide interface with a tool or operator to aid in extraction of the protective insert (as in claim 4).
Response to Arguments
Applicant's remarks filed 12 June 2026 have been fully considered, however, the remarks do not appear to include any arguments which amount to disagreements with the rejections set forth in the previous action.
As set forth in this action, applicant’s amendments have failed to address several issues set forth in the previous action and have raised further issues, including new rejections under 35 U.S.C. 112(b). Applicant’s amendments have also necessitated new grounds of rejection under 35 USC 103, as set forth in this action.
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 the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM ET.
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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.
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/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
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