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 09/24/2025. As directed by the amendment, claims, 1 and 18 have been amended and claims 11-14 and 16-17 have been cancelled. Thus, claim 1-10, and 18-19 are presently pending in this application.
Applicant’s amendments to the claims have overcome the grounds of rejection set forth in the previous action, however, new or otherwise amended grounds of rejection have been applied to the claims in this action, as necessitated by applicant’s amendments.
Response to Arguments
With respect to the applicant’s arguments regarding the newly added limitations wherein the outer coating is configured to encompass the entirety of a liner, the grounds in this action have been revised to include the teachings of Kiest, which teaches a hydrophilic material surrounding the entirety of a liner for use in a pipe.
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 18 and 19 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.
Regarding claim 18, the claim has unclear recitation of the claimed invention as the use of the phrase “fabricating a liner” in line 1 suggests the method claimed will encompass the fabrication of said liner, however, the limitations following only includes coating said liner with a hydrophilic slurry. It is therefore unclear whether the liner in question is premade or the liner with a hydrophilic slurry coating the outside is considered as forming a new liner/assembly. Furthermore, in lines 7-8, the claim states “wherein the hydrophilic slurry forms at least a portion of the outside of the outer coating”. It is unclear whether this limitation is stating an additional layer on the outside of the outer coating that is made further of hydrophilic slurry or if a portion of the outer surface of the outer coating is made of hydrophilic slurry. Claim 19 is rejected by virtue of its dependency on claim 18.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4-8, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiest (US 20190113168).
Regarding claim 1, Kiest teaches: A liner for an interior of an underground pipe, comprising: an outer coating (Shown as the pre-liner formed from hydrophilic material 10, 16 [Para. 48, lines 4-7 and Fig. 13]); a curable layer (Cured-in-place mainline liner impregnated by resin with the pre-liner fitting between mainline liner and main pipe [Para. 41, lines 9-11 and Fig. 13]); the outer coating has hydrophilic materials (pre-liner formed from hydrophilic material 10, 16 [Para. 48, lines 4-7 and Fig. 13]); wherein the hydrophilic materials are configured to expand when exposed to a liquid (The hydrophilic material is used as a sealing that expands when in contact with liquid and fills a damaged portion of the pipe [Para. 13, lines 7-16]); wherein the hydrophilic materials are part of a hydrophilic slurry that forms at least a portion of the outer coating (The hydrophilic material is described as a paste or grout [Para. 13, lines 9-10] which forms the outer coating); wherein the outer coating is configured to encompass the entirety of a circumference of the liner and a length of the liner (The hydrophilic material layer covers the entirety of the liner [Fig. 13]).
Regarding claim 2, Kiest teaches: The liner of claim 1, wherein: the hydrophilic materials include a polymer (The coating which is formed by hydrophilic material can be made from a hydrophilic rubber [Para. 48, lines 5-7]).
Regarding claim 4, Kiest teaches: The liner of claim 1, wherein: the hydrophilic materials include a compressible foam (The hydrophilic materials can be a hydrophilic chemical paste or grout [Para. 13, lines 7-11]).
Regarding claim 5, Kiest teaches: The liner of claim 1, wherein: the hydrophilic materials include a compressible rubber (the hydrophilic material is taught to be a hydrophilic neoprene rubber which is compressible [Para. 44, lines 9-10]).
Regarding claim 6, Kiest teaches: The liner of claim 1, wherein: the curable layer has a resin (Cured-in-place mainline liner impregnated by resin [Para. 41, lines 9-11]).
Regarding claim 7, Kiest teaches: The liner of claim 6, wherein: the resin is subjected to a curing method; wherein the curing layer is hardened (The liner is subjected to a curing which hardens the liner within the pipe [Para. 41, lines 15-18]).
Regarding claim 8, Kiest teaches: The liner of claim 7, wherein: the hydrophilic materials are part of the hydrophilic slurry that forms the outer coating (The hydrophilic material is described as a paste or grout which can be used in the layer coating the mainline liner [Para. 13, lines 9-10]).
Regarding claim 18, Kiest teaches: A method for fabricating a liner for an underground pipe, comprising the steps of: coating an outside of the liner in a hydrophilic slurry (Shown as the pre-liner formed from hydrophilic material 10, 16 [Para. 48, lines 4-7 and Fig. 13] where hydrophilic material layer covers the entirety of the liner [Fig. 13]); wherein the hydrophilic slurry has hydrophilic materials (pre-liner formed from hydrophilic material 10, 16 [Para. 48, lines 4-7 and Fig. 13]); allowing the hydrophilic slurry to adhere to the outside of the liner to form an outer coating of the liner (The pre-liner formed from hydrophilic material is positioned on the outside of the liner and remains in contact with the liner as it cures and hardens [Para. 48, lines 12-17 and Fig. 13]); wherein the hydrophilic slurry forms at least a portion of the outside of the liner outer coating (The hydrophilic material is described as a paste or grout [Para. 13, lines 9-10] which forms the outer coating); wherein the outer coating is configured to encompass the entirety of a circumference of the liner and a length of the liner (The hydrophilic material layer covers the entirety of the liner [Fig. 13]); wherein the hydrophilic materials are configured to expand when exposed to a liquid (The hydrophilic material is used as a sealing that expands when in contact with liquid and fills a damaged portion of the pipe [Para. 13, lines 7-16]).
Regarding claim 19, Kiest teaches: A method of claim 18, wherein: the hydrophilic materials include a compressible rubber (the hydrophilic material is taught to be a hydrophilic neoprene rubber which is compressible [Para. 44, lines 9-10]).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kiest (US 20190113168) in view of Iwasaki-Higbee (US 6416692).
Regarding claims 3, 9, and 10, Kiest teaches the limitations of claims 1 and 8, but fails to teach the hydrophilic materials include a clay and bentonite.
Iwasaki-Higbee teaches: the hydrophilic materials include a bentonite clay (A bentonite clay which is mixed with wax and hydrophilic material to provide a slurry capable of swelling and providing a tight seal [Col. 12, lines 48-49]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute or modify the hydrophilic grout/paste of Kiest with the slurry of Iwasaki-Higbee because utilizing a quantity of the bentonite clay enhances the slurry which enables displacement of groundwater due to a greater density of the slurry (Col. 12, lines 46-51).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kiest (US 20140261833) teaches a liner impregnated with resinous material capable of curing and hardening surrounded by a sleeve impregnated with hydrophilic material which expands when in contact with water (Abstract).
Trapani et. al. (US 20180031167) teaches a pipe liner utilizing hydrophilic material to swell when in contact with water to provide a seal (Para. 53).
Onan (US 5738463) teaches a grout composition which utilizes the defoaming agent, polydimethylsiloxane, which increases the resistance to degradation for hardened grout used in subsurface conduits (Col. 3, lines 5-60, and Col. 6, lines 27-44).
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.
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/JOSHUA D LEARY/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753