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 .
Specification
The amendment filed March 2, 2026, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: each of the amended limitations reciting “any one or more” are unsupported in the specification as originally filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The corrected drawings of March 2, 2026, are objected to as they are not included in Applicants’ submissions.
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.
Claims 1-4, 9-11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2014/0035280 to Shand in view of US Pub. No. 2013/0300111 to Tavner.
Regarding claims 1-4, 9-11, and 15, Shand teaches a coupler for a pipe system having a first end to receive one end of a fixed pipe and a second end to receive one end of a removable pipe (Shand, Abstract). Shand teaches that the fixed pipe and coupler may be made of polyvinyl chloride material that is lightweight and has non-corrosive properties (Id., paragraph 0024). Note that polyvinyl chloride is ordinarily known in the art as a thermoplastic. Shand teaches that a threaded portion of the fixed pipe may be coupled to an equally threaded fixed pipe end of the coupler (Id., paragraph 0015), wherein the fixed pipe bonding surface may be provided with a taper (Id., paragraph 0017). Shand teaches that the first end of the coupler is provided with first internal threads and that the second end of the coupler is provided with second internal threads, wherein the threads may be provided with a square or triangular or trapezoidal thread profile and provided equal in number to the first and second external threads (Id., paragraph 0022, Figure 1). Shand teaches that a circular groove is partially present in the pipe and partially present in the coupler (Id., paragraph 0010). Shand teaches that coupling of the pipes and the coupler may be made leak proof by providing a sealing ring (Id., paragraph 0039).
Shand does not appear to teach the claimed plurality of fibers laid in the polyvinyl chloride. However, Tavner teaches a substantially similar pipe connection apparatus or assembly for use in applications, comprising an engagement member adapted to engage an end region of a pipe, wherein the composite material is formed of at least a matrix and one or more reinforcing fibres embedded within the matrix (Tavner, Abstract), such as a polymeric resin (Id., paragraph 0148). Tavner teaches that the engagement member may be interposed between the end region of the pipe and a separate structure, such as a further pipe (Id., paragraph 0007). Tavner teaches that the composite material of the engagement member may be configured such that at least some of the reinforcing fibers may be predominantly oriented in a direction substantially transverse to an axis, such that the member may be configured to preferentially deform to accommodate an engaging region of a structure (Id., paragraphs 0024, 0041). Tavner teaches that one or more reinforcing elements may be predominantly oriented in a substantially circumferential direction, or in a substantially radial direction, or a substantially axial direction in an end region (Id., paragraphs 0043-0047). Tavner teaches that the type and/or distribution may vary throughout the matrix, through a thickness of the engagement member and/or an end region of the pipe and/or an end region of the structure, based on the physical properties such as strength, rigidity or the like to suit the particular requirements at the location of the pipe connection (Id., paragraphs 0063-0069). Tavner teaches that the reinforcing elements may act to improve structural integrity of the engagement member, e.g. increased mechanical properties such as strength, modulus, and the like (Id., paragraph 0043; see additionally, paragraphs 0024, 0032, 0034, 0040-0041, 0066-0067, 0069, 0077-0078). Tavner teaches that the reinforcing elements may comprise continuous fibers (Id., paragraph 0150).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coupler of Strand, wherein the pipe and coupler include radially and/or axially oriented continuous fibers in sections, such as claimed, as taught by Tavner, motivated by the desire of forming a conventional coupler for pipes having predictably improved physical properties and structural integrity suitable for the intended application.
The prior art combination teaches circular grooves partially present in the pipe and partially present in the coupler, and first and second threads having a square or triangular or trapezoidal profile, which are equal in number to the first and second external threads. Although the prior art combination does not appear to teach thermoforming the threads including using a toothed mold pressed into the thermoplastic composite fiber tubular as claimed, the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claims 2 and 10, the prior art combination teaches that the fixed pipe and coupler may be made of polyvinyl chloride material that is lightweight and has non-corrosive properties.
Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Shand in view of Tavner, as applied to claims 1-4, 9-11, and 15 above, and further in view of US Pub. No. 2011/0133449 to Mazzaferro.
Regarding claims 5, 6, 12, and 13, the prior art combination teaches that coupling of the pipes and the coupler may be made leaf proof by providing a sealing ring. The prior art combination does not appear to teach the claimed negative shoulder and nose proximate to the threads. However, Mazzaferro teaches a similar threaded joint for joining tubes, including a pin and a coupling, or box, wherein the pin can have a pin threaded portion between a first sealing surface distal of the pin threaded portion and a second sealing surface proximate to the pin threaded portion (Mazzaferro, Abstract). Mazzaferro teaches that the coupling can have a threaded surface between a first sealing surface and an abutment shoulder located proximate to the threaded surface (Id.). Mazzaferro teaches that the pin may further comprise a pin nose and an abutting shoulder that abuts against a mating box shoulder, wherein the shoulder and pin end surface may exhibit a negative angle (Id., paragraph 0033). Mazzaferro teaches that the joint is particularly suited for supporting high axial compression forces on the pipe (Id., paragraph 0046).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coupler of the prior art combination, wherein the coupler includes a nose and a negative shoulder, such as a nose and a negative shoulder on each of the pipes, as taught by Mazzaferro, motivated by the desire of forming a conventional coupler for pipes having a structure known in the art to predictably provide support for high axial compression forces on the pipe.
Although the prior art combination does not appear to teach thermoforming the negative shoulder and sealing interface and nose as claimed, the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding the claimed shoulder configured to enhance a seal as claimed, and the stiffness of the nose generating a spring back force and enhancing a seal as claimed, the prior art combination teaches a substantially similar structure and composition as claimed, including the advantages of modifying the strength and modulus properties of the coupler. Therefore, it is reasonable for one of ordinary skill to expect that the coupler of the prior art combination similarly behaves as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Claims 7, 14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Shand in view of Tavner, as applied to claims 1-4, 9-11, and 15 above, and further in view of USPN 5,213,379 to Taniguchi.
Regarding claims 7, 14, and 21, the teachings of Shand in view of Tavner set forth above are incorporated herein. The prior art combination teaches that at least some of the reinforcing fibers may be chopped fibers to permit the matrix material to deform, and that the pipe connection apparatus may comprise at least one wrapping portion (i.e. brace) which may be provided on an outer and/or inner surface of the pipe to reduce risk of failure of the composite pipe end due to decompaction of the composite material (Tavner, paragraphs 0038-0041, 0079-0081).
The prior art combination does not appear to teach the claimed long and short-fiber composites, including the claimed second thermoplastic composite tubular. However, Taniguchi teaches a similar fiber-reinforced plastic pipe with a male-threaded and/or female-threaded end joint section having improved axial strength and thread contour, exhibiting a high degree of seal tightness and withstanding a high internal pressure (Taniguchi, Abstract). Taniguchi teaches that the female thread comprises a fiber-reinforced resin layer and continuous filaments, and that the male treads comprise short fibers impregnated with a resin (Id.). Taniguchi teaches that the pipe has a threaded joint section at both ends (Id., column 3 lines 38-64), such as female threads in a joint section at one end and male threads in a threaded joint section at the other end (Id., column 3 lines 13-17), or a female-threaded or male-threaded joint at both ends (Id., column 8 lines 55-60). Taniguchi teaches that the reinforcing fibers or filaments incorporated in the threaded end section and the remaining pipe body may be inorganic or organic reinforcing fibers or filaments (Id., column 4 lines 18-28). Taniguchi teaches that the pipe can be used in a wide variety of applications, in particular, as an oil well pipe (Id., column 8 line 61 to column 9 line 9). Taniguchi teaches that the pipes were connected to another pipe (Id., column 10 lines 24-31).
The prior art combination establishes s a coupler for a pipe system having a first end to receive one end of a fixed pipe and a second end to receive one end of a removable pipe. Taniguchi establishes a similar fiber-reinforced pipe, comprising a male-threaded end joint section and/or a female-threaded end joint section, wherein the pipe is designed to be connected to another pipe. Taniguchi teaches that the female thread comprises continuous filaments and the male threads comprise short fibers. Taniguchi teaches that both ends may comprise a female-threaded end or a male-threaded end. It is reasonable for one of ordinary skill to expect that the pipes may comprise female and male end threads which are coupled together. Additionally, it is within the level of ordinary skill to determine suitable end threads, such as male and/or female ends, based on the desired configuration and connections, as the prior art suggests a plurality of pipes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coupler of the prior art combination, wherein the threaded portions comprise chopped fibers and wherein pipes having threaded portions as claimed are connected in the claimed configuration, as taught and suggested by Taniguchi, motivated by the desire of forming a conventional pipe structure having a known configuration and threaded end structure having predictably improved axial strength and thread contour, and exhibiting a high degree of seal tightness and withstanding a high internal pressure, suitable for the intended application.
Regarding the claimed injection-molded short-fiber composite or 3D-printed short-fiber insert, the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Response to Arguments
Applicants’ arguments filed March 2, 2026, have been fully considered but they are not persuasive. Applicants argue that claim 1’s one or more threads being thermoformed is a non-obvious difference, as machining or cutting the fibers of a fiber-reinforced pipe can cause strength reductions. Examiner respectfully disagrees. Shand does not requiring machining threads onto the pipe. Additionally, although Applicants argue that the machining can cause strength reductions, Applicants do not establish that such strength reductions necessarily occur, nor do Applicants require any properties directed to strength. Note that Applicants’ specification does not establish that thermoforming necessarily does not cut the fibers.
Applicants argue that one of ordinary skill would not think to combine Shand’s PVC pipe for use in shallow-depth water systems with Tavner’s fiber-reinforced engagement member for use in hydrocarbon extraction from a subsurface reservoir. Examiner respectfully disagrees. Shand and Tavner are directed to similar pipes classified in the same field in the art. Tavner establishes laying reinforcing fibers predictably improve structural integrity and increase mechanical properties. One of ordinary skill would recognize the advantageous properties would be similarly suitable in similar pipe structures.
Applicants argue that thermoforming of a composite tubular requires specialized processing steps, including heating the matrix or mold above a threshold temperature and plastically deforming the tubular wall using the mold, neither of which are disclosed or suggested by Shand. Examiner respectfully disagrees. The claimed invention does not require the aforementioned processing steps. Additionally, Applicants’ specification does not appear to require each of the aforementioned steps, as the specification appears to teach that thermoforming may comprise some of the steps, instead of necessarily requiring each of the steps.
Applicants argue that a person of ordinary skill would understand threaded pipes to be machined unless otherwise states. Examiner respectfully disagrees. Applicants do not provide arguments supporting the aforementioned conclusions.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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 supervisor, Jennifer Boyd can be reached at 571-272-7783. 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.
/PETER Y CHOI/Primary Examiner, Art Unit 1786
Prosecution Insights