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
In response to the amendment filed on 04/20/2026, claim 1 has been amended, and new claims 5-6 are added. Claims 1-6 are pending and claims 1-6 are under examination.
Response to Arguments
Applicant’s arguments, see pages 6-7, filed 4/20/2026, with respect to the rejections of claims 1-4 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Vrame and Eilert in light of MPEP 2144.04(V)(B).
Applicant argues on page 6-7 that the transition coupling claimed by both prior references Vrame and Eilert are made from multiple parts having different forms of connecting ends, allowing for engage separate conduit sections, not overcoming the claimed “unitary” transition coupling element.
Respectfully, upon new grounds of rejection, the Applicant’s argument is not found to be compelling as in the manner of obvious engineering choice, as stated in MPEP 2144.04(V)(B), it is known and obvious to use an element made up of a plurality of pieces and change it to be of an element made up of a singular piece.
Applicant also argues on page 6-7 that the instant claimed application contains a central cylindrical portion of the transition coupling has an outer diameter that is the same as the outside diameter of the conduit section. Applicant points out that in the prior reference Vrame, the outer diameter of the center of the cylindrical portion appears to be made in a polygonal shape, not matching the diameter of the conduit section.
Respectfully, upon new grounds of rejection, the Applicant’s argument is not found to be compelling as the prior art reference Vrame discloses FIG. 1 which depicts several portions of the transition coupling. In annotated FIGS. 1 & 3 below, the central cylindrical portion is not mapped to element 20, but the cylindrical portion directly between element 20 and the tapered end portion of the entire transition coupling 10. Said cylindrical portion is extending in the radial direction, features a tubular structure, and vertically overlaps conduit section 12 embedded in the concrete.
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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 is rejected for being indefinite as it recites the limitation “the outside of an entirety of the transition coupling extending above the central cylindrical portion” in lines 22-23. The limitation “central cylindrical portion” renders the scope of the claim unclear because it is ambiguous whether the feature “central cylindrical portion” is interpreted as:
A center point located in the center of the coupling body, both in the radial and axial direction
A center axis that extends in the axial direction of the coupling
A center plane that extends in the radial direction of the coupling
As such, it is not clear how the claimed limitation is intended to be interpreted. More specifically, it is unclear to which direction “outside” is considered as there are three potential “outside” directions with respect to the three interpretation for “central cylindrical portion”. Thus, for the purpose of this office action, the claim has been examined, as best understood, to encompass any of the 3 potential reasonable interpretations noted above. For the same reason, dependent claims 2-6 therefor are rejected as well by virtue of its dependency and recitation of the limiting language.
Claim 6 is rejected as it recites the limitation “the conduit section embedded in the slab to the conduit section embedded in the slab” in line 4. For the set of amended claims, only one of the two conduit sections is claimed to be embedded in a slab, as recited in claim 1 line 7 which claim 6 is dependent upon. Thus, the limitation renders the scope of the claim unclear because it is ambiguous if the two conduit sections are both embedded in a slab. Moreover, if only one of the conduits sections is embedded into a slab, it is unclear how the conduit section can be glued to itself.
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.
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Vrame et al (U.S. Patent Application Publication 20200287366 A1) hereinafter Vrame, and further in view of Eilert et al (U.S. Patent 10001231 B2) hereinafter Eilert.
Regarding claim 1, Vrame discloses a method (Title: Conduit Coupling Assembly) of assembling conduit sections (conduit coupling assembly, ¶16), comprising the steps of:
providing a cylindrical conduit section having an interior surface defining an inside diameter, and an exterior surface defining an outside diameter (conduit 12 in FIG. 3, step 1, ¶16; conduit 12 has an inside and outside surface defining inside and outside diameters).
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one of the conduit sections embedded in a slab (FIG. 3 depicts one of the conduit sections 12 embedded into concrete slab C),
forming a tapered interior end section on the interior surface of each of said conduit sections, wherein each tapered end section tapers outwardly toward a respective end of said conduit section (FIG. 3, step 3, ¶20, “the present method next contemplates cutting the conduit 12 at an inside surface thereof to form a connection region 14, which is preferably tapered inwardly in a direction away from the conduit opening”);
providing a transition coupling having a tubular configuration with a length (transition coupling 16, ¶21), said transition coupling having an interior surface extending the length (¶16, “Associated electrical wiring or the like can be arranged to extend from within the conduit in the concrete slab, and through the coupling assembly and the associated liquid-tight tubing”, FIG. 3 step 4 depicts the transition coupling having a length fitting the reamed surface of the conduit opening) thereof having an inside diameter dimension corresponding to said inside diameters of said conduit sections (FIG. 4 step 4, ¶21, “the inside diameter of the transition coupling 16, as shown in phantom line 18, is the same as the inside diameter of conduit 12 to facilitate the smooth passage of wiring through the assembled components”),
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said transition coupling having a tapered configuration tapering inwardly toward the respective end of the transition coupling (FIG. 3 step 4, ¶21, “the exterior of the transition coupling is provided with a tapered surface which is complementary to the tapered, connection region 14 of the conduit 12”), and a central cylindrical portion between said end portions having an outside diameter the same as said outside diameters of said conduit sections (annotated FIG. 3 step 4 below, the highlighted portion of the transition coupling (central cylindrical portion) has an outer diameter that is the same as the conduit 12); and
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joining said conduit section to the end portions of said transition coupling by respectively positioning said tapered end portion of said transition coupling in said tapered interior end sections of said conduit section (FIG. 3 step 4, ¶21, “the conduit coupling assembly 10 illustrated joining to the conduit 12”),
the outside of an entirety of the transition coupling extending above the central cylindrical portion (as depicted in FIG. 3 below and explained how this limitation is interpreted in supra section claim rejections 35 USC § 112, the transition coupling has a portion extending beyond the radial directional central cylindrical portion) has a diameter (outer diameter of tapered outer surface of coupling 10) less than the outside diameter of the cylindrical conduit section joined to the end portion of the transition coupling extending above the slab (outer diameter of outer surface of conduit 12) where the transition coupling extending above the central cylindrical portion and the cylindrical conduit section joined to the end portion of the transition coupling extending above the slab vertically overlap (FIG. 3 depicts conduit 12 overlapping coupling 10).
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However, Vrame fails to disclose a step of providing first and second cylindrical conduit sections wherein said inside diameters of said conduit sections are the same, and said outside diameters of said conduit sections are the same. Vrame also fails to disclose said transition comprising a pair of opposite end portions and joining said conduit sections to each other by joining the opposite end portions of said transition coupling to each of said conduit section, whereby the conduit sections are joined to each other.
Eilert discloses an apparatus (Title: Coupling Arrangement for Pipelines) providing a first and second cylindrical conduit sections each having an interior surface defining an inside diameter, and an exterior surface defining an outside diameter (FIG. 1, col. 4, ll. 16-21, “the change air pipe 110 is connected at a first coupling point 112 to a first pipe piece via a first coupling arrangement 10 and is connected at a remotely arranged second coupling point 114 to a second pipe piece via the second coupling arrangement 10”). Eilert also discloses the two cylindrical conduit sections wherein said inside diameters of said conduit sections are the same, and said outside diameters of said conduit sections are the same (coupling arrangement 10 in FIG. 1 is depicted to be on both ends of the transition element) (It would have been obvious to one of ordinary skill in the art to configure the pair of conduit sections to have equal inner and outer diameters as a matter of routine design choice). The transition coupling comprising a pair of opposite end portions (FIG. 1, col. 4, ll. 40-44, “In order to be able to optimally utilize the advantages of the coupling arrangement 10, it is advisable to provide the coupling arrangement 10 as a pair”) and joining said conduit sections to each other by joining the opposite end portions of said transition coupling to each of said conduit section (FIG. 10, col. 4, ll. 29-31, “the coupling arrangement 10 forms in each case a connection having little movability between two pipes or pipe sections”), whereby the conduit sections are joined to each other (col. 4, ll. 17-22, “first coupling point 112… is connected to a remotely arranged second coupling point 114”; FIG. 1 depicts the two conduit sections joined).
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However, both Vrame and Eilert fail to disclose the transition coupling being made of a unitary part. Though both disclose the transition coupling made of a plurality of components, under MPEP 2144.04(V)(B), it states that it is obvious to use of a singular piece constructed instead through merely a matter of obvious engineering choice.
Vrame discloses the method of preparing a conduit pipe end and transition element, both having a tapered interior and exterior, respectively, as well as joining that conduit pipe end to the transition element. Eilert’s disclosure is also of a coupling arrangement that further explains the usage of a second conduit pipe that is connected to the first conduit pipe using a male-male transition element. Also, through the MPEP, it is known to configure an element made of a plurality of pieces to be instead made of one piece. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to implement the method taught by Vrame and applying the method of reaming the inner surface of the conduit section to a second identified conduit of equal dimensions with an inner and outer diameter as well as providing the inserting portion of the transition coupling to the disclosure of Eilert would have yielded the same results as those claimed. Applying such a method is therefore predictable, allowing for the usage of a male-male transition element to connect two conduit pipe ends wherein the outer diameters of the conduit pipe ends are inaccessible, i.e., concealed piping.
Regarding claim 2, Vrame in view of Eilert teaches a coupling assembly, and Vrame further discloses the method of forming a coupling assembly in accordance with claim 1, including cutting each said conduit section at the inside surface thereof by reaming each said conduit section (¶20, “this step is preferably effected by reaming the interior surface of the conduit 12 to provide an inner surface at 14 for assembling the components of the present assembly”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 2 in the manner of providing a tapered configuration to both ends of a cylindrical transitional conduit coupling).
Regarding claim 3, Vrame in view of Eilert teaches a coupling assembly, and Vrame further discloses the method of forming a coupling assembly in accordance with claim 2, including cutting each said conduit section at the inside surface thereof at a taper (FIG. 3 step 3, ¶20, “the present method next contemplates cutting the conduit 12 at an inside surface thereof to form a connection region 14, which is preferably tapered inwardly in a direction away from the conduit opening”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 3 in the manner of providing a tapered configuration to both ends of a cylindrical transitional conduit coupling).
Regarding claim 4, Vrame in view of Eilert teaches a coupling assembly, and Vrame further discloses the method of forming a coupling assembly in accordance with claim 1, wherein said transition coupling comprises polyvinyl chloride (¶21, “the transition coupling 16 is preferably formed for PVC for economical and durable service”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 4 in the manner of providing a tapered configuration to both ends of a cylindrical transitional conduit coupling).
Regarding claim 5, Vrame in view of Eilert teaches a coupling assembly, and Vrame further discloses the method of forming a coupling assembly in accordance with claim 1, wherein the one of the conduit sections embedded in the slab is part of an elbow (FIG. 3 identifies the PVC conduit section embedded within the concrete C as a 90° elbow).
Regarding claim 6, Vrame in view of Eilert teaches a coupling assembly, and Vrame further discloses the method of forming a coupling assembly in accordance with claim 1, including gluing the one of the tapered end portions that is in the tapered interior end section of the conduit section embedded in the slab to the conduit section embedded in the slab (FIG. 3 step 4 depicts glue formed inside the tapered portions of the conduit 12 with transition coupling 16).
Conclusion
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prior art Vrame is cited as evidence that a claimed shape featuring the tapered surfaces of the conduit sections and the transition was known in the art at the time of the invention. Therefore, it is pertinent to the determination of obviousness to a POSITA, even though many of the other corresponding features are not mapped nor relied upon as the primary basis for the rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE REY D LEGASPI whose telephone number is (571)272-2956. The examiner can normally be reached Monday-Friday 8-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.D.L./Examiner, Art Unit 3729 /THOMAS J HONG/Supervisory Patent Examiner, Art Unit 3729
Prosecution Insights