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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/9/26 has been entered.
Claim Interpretation
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 8-11, 13-18, 24, 25, 32, 37 and 43 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1 and 37, the specification does not support the limitation reciting “an ID of the conduit is greater than or equal to an outside diameter (OD) of the tubing”. The specification only supports the limitation requiring an ID of the conduit to be greater than an outside diameter (OD) of the tubing. No portion of the original specification discloses an ID of the conduit that is equal to an outside diameter (OD) of the tubing.
As to claim 43, the limitation requiring the narrowed portion of the tubing to be optically transparent around a circumference of the narrowed portion of the tubing is not supported by the original specification. The examiner asserts uniform optical transmittance is not the same as optically transparent. The original specification discloses “transparent” only in para 50 (see applicant’s Publication, US 2024/0278483). Para 50 states “the PFA tubing turns transparent.” This does not support the limitation for at least three reasons. First, it does not disclose the PFA tubing is optically transparent around a circumference of said tubing. Second, it does not disclose the location wherein the tubing turns “transparent” is the narrowed portion. Third, it does not recite that “transparent” is optically transparent.
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.
Claim 37 is 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. The limitation “the area of the tubing desired to be narrowed” lacks proper antecedent basis.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 8-10, 13-15, 18, 24, 32 and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martin et al. (us 5409644).
As to claim 1, Martin discloses a method for narrowing an inside diameter (ID) of a tubing 46 comprising a heat-deformable material (C2, L44-61, figs 2-3), the method comprising:(i) positioning the tubing inside a conduit 38/78 that does not substantially expanded or contract on heating or cooling (C2, L44-61, figs 2-3, C3, L21 – C4, L14), wherein the conduit has an ID greater than the outside diameter (OD) of the tubing (figs 2-3, abstract), ; (ii) positioning a mandrel 48 inside the tubing (C2, L44-61, figs 2-3, C3, L21 – C4, L14), wherein: (a) the mandrel is positioned at least at an area of the tubing desired to be narrowed to a desired ID (C2, L44-61, figs 2-3, C3, L21 – C4, L14), and (b) the mandrel has an OD that is substantially equal to the desired ID (“desired internal shape” – C3, L52-53) of the tubing (C2, L44-61, figs 2-3, C3, L21 – C4, L14); and (iii) selectively applying heat to the area of the tubing desired to be narrowed to heat the tubing to a sufficient temperature and for a sufficient time such that the ID of the tubing is narrowed to the desired ID in the area (C2, L44-61, figs 2-3, C3, L21 – C4, L14, specifically, C4 L2-14 discussed the tubing narrowing in diameter such that conforms to the complements the shape of 88 and forming on the narrow portion of the mandrel).
As to claims 2-3, Martin discloses the conduit has an ID no more than 5% greater than the OD of the tubing, wherein the ID of the conduit is no more than 2 thousandths of an inch greater than the OD of the tubing (fig 2-3, C3, L21-60).
As to claim 4, Martin discloses further comprising applying a compressive force to the tubing in a long axis of the tubing (C3, L12-20, C3, L65-C4, 13).
As to claim 8, Martin discloses a method wherein the long axis of the mandrel is within 50 μm of the long axis of the tubing in the area in which the tubing is to be narrowed (figs 2-3, (C2, L44-61, figs 2-3, C3, L21 – C4, L14).
As to claim 9, Martin discloses the claimed polishing step (C5, L10-12).
As to claim, 10, Martin discloses the heat-deformable material comprises a thermoplastic material (C2, L52-53).
As to claim 13, Martin discloses the method wherein the heat-deformable material comprises a material with a glass transition temperature (Tg) and a melting temperature(Tm), wherein the melting temperature is higher than the glass transition temperature (polymer material of 46 inherently has both Tg and Tm, C2, L51-61).
As to claim 14, wherein the area of the tubing desired to be narrowed is heated to a temperature that is below the melting temperature of the heat- deformable material (any deforming heating step inherently requires heating to a such a temperature in order to achieve deformable temp).
As to claim 15, Martin discloses a method wherein the tubing is heated to a temperature that is within 5% of the glass transition temperature (heating to with 5% of Tg necessarily required for flow, claim 1).
As to claim 18, Martin discloses the method wherein the area of the tubing desired to be narrowed is selectively heated by a heating element (80) in contact with the conduit (figs 2-3, C2, L44-61)
As to claim 24, Martin discloses after the tubing has been narrowed, cutting the narrowed portion of the tubing (C5, 3-7).
As to claim 32, Martin discloses a method wherein the area of the tubing to which heat is applied has a length no greater than 2× the OD of the tubing (figs 2-3)
With respect to claim 37, the tubing is considered material to be worked upon.
As to claim 37, Martin discloses an apparatus for narrowing the ID of a tubing comprising heat-deformable material to a desired ID, comprising: (i) a conduit 38/78 into which the tubing can be inserted, wherein the conduit: (a) has an ID that is greater than the OD of the tubing, and (b) comprises a material that is capable of conducting heat to the tubing (C3, L21-28)); (ii) a heating element configured to selectively apply heat to the area of the tubing desired to be narrowed, wherein the heating element is in contact with the conduit at a location corresponding to a location of tubing (see claim 18 above), when inserted into the conduit, where narrowing of the ID of the tubing is desired; and (iii) a mandrel 48 to be inserted into the tubing, wherein the mandrel has an OD corresponding to the desired ID of the tubing ((C2, L44-61, figs 2-3, C3, L21 – C4, L14, see claim 1 discussion above)
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.
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.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin, as applied to claim 1 above, and further in view of Zheng (previously cited).
As to claim 16, Martin does not disclose the claimed heating range.
In Zheng, para 58 discloses that the temperature is a selection within the purview of one of ordinary skill in the art and can be varied based on the desired heating time. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Martin such that the tubing is heated to between 260 and 300 deg C as one would have achieved such a range by performing routine experimentation as taught by Zheng above to achieve only the expected results.
Claim(s) 11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin, as applied to claims 1 and 13 above, and further in view of Burnside (US 2004/0098095).
As to claim 11, Burnside discloses a tubing 100 comprising a thermoplastic fluoropolymer (portion 110 of 100, para 19, 52),
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Martin such that the thermoplastic has a fluoropolymer as taught by Burnside above as such is a favorable polymer material and has a reasonable expectation of success.
As to claim 17, Burnside discloses the tubing comprising another thermoplastic material (PLLA, para 8), wherein the tubing is heated to a maximum temperature below the and glass transition temperature of the PLLA (para 85,96, 101, 116).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin, as applied to claim 1 and 14 above, and further in view of Scopton et al. (US 9868238).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Martin such that the conduit comprises metal as taught by Scopton (C7, L50 – C8 L8) as such improves strength and conductivity.
Claim(s) 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin in view of Hansen et al.et al. (US 2011/0014459) and further in view of Jones et al. (US 2018/0070857).
Martin discloses a length of tubing 46, wherein the length of tubing comprises a narrowed portion of the tubing comprising a narrowed inside diameter (ID} compared to other sections of the length of tubing, wherein a first ID of the tubing tapers to the narrowed ID over a length (see discussion of claim 1 above, C2, L44-61, figs 2-3, C3, L21 – C4, L14). While Martin does not expressly disclose the tapering length to be at least 4 times the length of the narrowed portion of the tubing, Martin discloses the length is design choice that can effect the density and flexibility of the tubing (C4, L41-61). . It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the tapering length to be at least 4 times the length of the narrowed portion of the tubing as the length is a design choice within the purview of one of ordinary skill in the art. Additionally, one would have achieved such by performing routine experimentation to obtain only the expected results.
Martin does not disclose the narrowed portion of the tubing has uniform optical transmittance around a circumference of the narrowed portion of the tubing. . It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Martin such that the narrowed portion of the tubing has uniform optical transmittance around a circumference of the narrowed portion of the tubing as taught by Hansen (para 71) as such reduces glare and improves visibility (para 71).
Martin and Hansen do not expressly disclose the tubing is optically transparent around a circumference of the narrowed portion of the tubing. Jones discloses a tubing comprising an optically transparent portion 65114 that can be located at different sections of the tubing, said portion being optically transparent around a circumference of the tubing (para 492, fig 65). . It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Martin and Hansen such that the tubing is optically transparent around a circumference of the narrowed portion of the tubing as taught by Jones above as such enables transmittance of different wavelengths (para 492).
Response to Arguments
Applicant's arguments filed 2/19/26 have been fully considered but are not persuasive.
Applicant asserts that Martin does not meet the limitations of claims 1 and 37 because “claims 1 and 37 expressly require that the ID of the conduit at the area to be narrowed is greater than or equal to the OD of the tubing and remains greater than or equal to the OD during heating and narrowing (i.e., conduit ID > tubing OD at the area to be narrowed)”. This argument is not commensurate with the scope of the claims because the claims, contrary to the applicant’s assertion, do not require that the ID of the conduit at the area to be narrowed is greater than or equal to the OD of the tubing”. Additionally, the claims do not require that the ID of the conduit “remains greater than or equal to the OD during heating and narrowing”. Nonetheless, fig 2 of Martin clearly shows conduit 38/78 with an OD greater than the ID of the tubing 48.
Applicant asserts that Martin does not disclose “selectively applying heat to the area of the tubing desired to be narrowed” because Martin does not disclose applying heat “such that tubing outside that area remains at a temperature insufficient to cause narrowing”. This argument is not commensurate with the scope of the claims because the limitation “selectively applying heat to the area of the tubing desired to be narrowed” does not equate to a limitation wherein tubing outside the area remains at a temperature insufficient to cause narrowing. Respectfully, “selectively” simply means the heat applied at the area is sufficient to cause the desired narrowing. It does not exclude actions performed on other areas of the tubing. Nonetheless, Martin clearly discloses the heat is applied at the area desired to be narrowed. Fig 2 shows the heating element 80 is located specifically at the portion to be narrowed.
As to claim 47, the applicant asserts that because Martin discloses a risk of buckling, achieving a long gradual taper via longitudinal compression is difficult. This argument is not persuasive for several reasons. First, it does not directly refute the examiner’s analysis as to why it would have obvious for the first ID of the tubing to taper to the narrowed ID over a length of at least 4 times the length of the narrowed portion of the tubing (see rejection of claim 47 above). Second, it’s a conclusory statement. Martin does not suggest that the risk of buckling would lead one of ordinary skill to reduce the taper length. Martin simply discloses the risk of buckling is minimized by using the mandrel (C4, L17-20). Finally, applicant’s assertion that “the method enables these specific geometries without the friction and buckling risks of Martin” is not commensurate with the scope of the claim as claim 47 is directed to a product and not a method.
In response to applicant's argument that Hansen is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Hansen is in the field of the inventor’s endeavor because it’s related to forming polymer tubes. Additionally, Hansen is reasonably pertinent to the particular problem with which the inventor was concerned because Hansen is pertinent to uniform optical transmittance.
Applicant asserts that modifying Martin with Hansen in the manner proposed by the examiner would render the device inoperable for optical inspection or interrogation. This is a conclusory statement not supported by evidence. Additionally, it fails to address the specific advantages disclosed by Hansen and detailed in the rejection of claim 47 above - reducing glare and improving visibility. One of ordinary skill would clearly recognize such an advantage in the product of Martin.
Applicant’s arguments with respect to optical transparency are moot in light of the new grounds of rejection presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/ Primary Examiner, Art Unit 1746
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