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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 December 2025 has been entered.
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 11-18 are 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.
Claim 11:
Applicant’s disclosure as originally filed provides support for a fourth sub-surface contiguous with said third and second sub-surfaces. However, applicant’s disclosure as originally filed provides no support for said fourth sub-surface being oriented at an obtuse angle with respect to said third sub-surface as recited by applicant’s amended claims.
The originally filed specification does not expressly describe a fourth sub-surface oriented at an obtuse angle with respect to the third sub-surface. The disclosure describes the fourth sub-surface as being “oriented at an angle with respect to the longitudinal axis,” and further provides example ranges for that orientation relative to the longitudinal axis. However, the specification does not explicitly characterize the angular relationship between the third and fourth sub-surfaces as obtuse.
Upon review, the drawings depict the intersection between the third and fourth sub-surfaces as smooth, curvilinear transition. Applicant may reasonably argue that such a curvilinear depiction inherently includes local regions forming an obtuse angle between adjacent surfaces.
Accordingly, for the purposes of compact prosecution and without conceding written description support, the examiner assumes arguendo that the originally filed drawings reasonably convey possession of a configuration in which the fourth sub-surface is oriented at an obtuse angle relative to the third sub-surface.
Claim 18:
Applicant’s disclosure as originally filed provides support for a fourth sub-surface contiguous with said third and second sub-surfaces. However, applicant’s disclosure as originally filed provides no support for an intersection between said third sub-surface and said fourth sub-surface is radically closer to said longitudinal axis than an intersection between said first sub-surface and said third sub-surface is to said longitudinal axis as recited by applicant’s amended claims.
Compact Prosecution and New Matter
The Office requires examiners to practice compact prosecution and should the examiner determine that an amended claim term or phrase renders the claim rejected under 35 U.S.C. 112(a), the examiner should make a rejection based on the written description requirement under 35 U.S.C. 112(a) as well as a rejection(s) in view of prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable on the examiner’s interpretation of the claim.
Claim Rejections - 35 USC § 102
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 11-12, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dole (US 2005/0212296 A1).
Claim 11:
As recited above, the examiner assumes arguendo that the originally filed drawings reasonably convey possession of a configuration in which the fourth sub-surface is oriented at an obtuse angle relative to the third sub-surface. Under the same interpretation, figure 13 of Dole likewise depicts a groove profile having a third sub-surface transitioning into a fourth sub-surface via a curvilinear geometry. As shown, in figure 13, the intersection between the third and fourth sub-surface is not depicted as a sharp vertex, but rather as a rounded or curved region. Such a curvilinear transition necessarily includes local angular relationships greater than 90 degrees between the adjoining surface portions. Thus, if applicant’s drawings are considered sufficient to teach an obtuse angular relationship based on curvilinear geometry, the prior art drawings must be afforded the same interpretation under the broadest reasonable interpretation standard.
Accordingly, Dole discloses a method of forming a groove in an outer surface proximate to a first end of a pipe element extending along a longitudinal axis (abstract) said groove comprising:
a first sub-surface oriented at an angle with respect to said longitudinal axis and facing away from said first end (fig. 13, [0047] – see annotated reproduction of fig. 13, below);
a second sub-surface oriented at an angle with respect to said longitudinal axis, said second sub-surface being in spaced relation away from and facing toward said first sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, below);
a third sub-surface contiguous with said first sub-surface, said third sub-surface oriented at a non-zero angle with respect to said longitudinal axis and sloping toward said second sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, below); and
a fourth sub-surface contiguous with said third and second sub surfaces, said fourth sub-surface being oriented at an obtuse angle with respect to said third sub-surface, said fourth sub-surface being oriented at an angle with respect to said longitudinal axis (fig. 13, [0047] – see annotated reproduction of fig. 13, below);
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said method comprising:
using an inner roller (72) contacting an inside surface (74) of said pipe element (14) and an outer roller (68) contacting said outer surface (70) of said pipe element (14) to roll groove said groove in said pipe element (figs. 6-7, [0043] – [0044]).
Dole teaches every element required by the claim under its broadest reasonable interpretation. Dole discloses the first, second, third and fourth sub-surfaces of the claimed groove and Dole further discloses an outer roller having a cross sectional shape at its periphery substantially identical to the desired shape of the groove coupled with an inner roller for compression of the pipe element between the inner and outer rollers (fig. 13 and [0043]). Therefore, the claimed invention is rejected under 35 U.S.C. 102 given the invention is anticipated over the Dole disclosure which is available as prior art. See MPEP § 2131 which states a claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.
Claim 12:
Dole discloses the method of claim 11, wherein said inner roller and said outer roller comprise corresponding profiles configured to form said groove (Dole discloses a roller tool 68 is used having a cross sectional shape at its periphery substantially identical to the desired shape of the groove) ([fig. 13. [0043]-[0044]).
Claim 15:
Dole discloses the method of claim 11, wherein said method further comprises forcing said outer roller toward said inner roller (pipe wall is compressed) ([0043]).
Claim 17:
Dole discloses the method of claim 11, wherein said third sub-surface slopes towards said second sub-surface such that said third sub-surface becomes closer to said longitudinal axis at an end closest to said second sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, above).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
In the alternative event that examiner’s anticipation rejection is not affirmed, claims 11-12, 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Dole (US 2005/0212296 A1).
Claim 11:
Dole discloses a method of forming a groove in an outer surface proximate to a first end of a pipe element extending along a longitudinal axis (abstract) said groove comprising:
a first sub-surface oriented at an angle with respect to said longitudinal axis and facing away from said first end (fig. 13, [0047] – see annotated reproduction of fig. 13, above);
a second sub-surface oriented at an angle with respect to said longitudinal axis, said second sub-surface being in spaced relation away from and facing toward said first sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, above);
a third sub-surface contiguous with said first sub-surface, said third sub-surface oriented at a non-zero angle with respect to said longitudinal axis and sloping toward said second sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, above); and
a fourth sub-surface contiguous with said third and second sub surfaces, said fourth and third sub-surfaces forming a recessed intersection, said fourth sub-surface being oriented at an obtuse angle with respect to said third sub-surface, said fourth sub-surface being oriented at an angle with respect to said longitudinal axis (fig. 13, [0047] – see annotated reproduction of fig. 13, above);
In the alternative, Dole fails to disclose using an inner roller contacting an inside surface of said pipe element and an outer roller contacting said outer surface of said pipe element to roll said groove in said pipe element. Instead, Dole discloses using an inner roller (72) contacting an inside surface (74) of said pipe element (14) and an outer roller (68) contacting said outer surface (70) of said pipe element (14) to roll a groove in said pipe element wherein the profile of the groove as reflected in figures 6 and 7 is different than the profile reflected in figure 13 (figs. 6-7, [0043] – [0044]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an inner roller and outer roller comprising the required profiles to form the groove as reflected in figure 13 as taught by the method of using an inner and outer roller reflected in figures 5 an 6 since it was known that in order to form the desired profile in a pipe element, a roller tool is used having a cross-sectional shape at its periphery substantially identical to the desired shape of the groove and groove profile variations (angles/shoulders/recesses) are recognized design choices for coupling engagement/pullout resistance (Dole, figs. 6-7 and 13, [0043]).
See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because Dole explicitly discloses the use of a roller tool having a cross sectional shape at its periphery substantially identical to the desired shape of the groove (figs. 6-7 and 13, [0043]).
Claim 12:
In the alternative, Dole renders obvious the method of claim 11, wherein said inner roller and said outer roller comprise corresponding profiles configured to form said groove (Dole discloses a roller tool 68 is used having a cross sectional shape at its periphery substantially identical to the desired shape of the groove) ([fig. 10. [0043]-[0044]).
Claim 15:
In the alternative, Dole renders obvious the method of claim 11, wherein said method further comprises forcing said outer roller toward said inner roller (pipe wall is compressed) ([0043]).
Claim 17:
In the alternative, Dole renders obvious the method of claim 11, wherein said third sub-surface slopes towards said second sub-surface such that said third sub-surface becomes closer to said longitudinal axis at an end closest to said second sub-surface (fig. 13, [0047] – see annotated reproduction of fig. 13, above).
Claim 18.
In the alternative, Dole renders obvious the method of claim 11, wherein an intersection between said third sub-surface and said fourth sub-surface is radially closer to said longitudinal axis than an intersection between said first sub-surface and said third sub-surface is to said longitudinal axis (fig. 13, [0047] – see annotated reproduction of fig. 13, above).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Dole as applied to claim 11 above, and further in view of Puzio (US 2015/0040632 A1).
Claim 13:
Dole anticipates and/or renders obvious the method of claim 11; and, Dole fails to disclose or fairly suggest rotating said inner roller about a first axis, thereby causing said pipe element to rotate which causes said outer roller to rotate about a second axis.
Puzio discloses a device and method for forming circumferential grooves in pipe elements (abstract) wherein the device comprises;
an inner roller (12) rotatable about a first axis (14) and an outer roller (22) rotatable about a second axis (24) (figs. 1-2, [0112]); and,
the method comprises;
rotating said inner roller (12) about the first axis (14) thereby causing said pipe element (40) to rotate which causes said outer roller (22) to rotate about the second axis (24) (figs. 1-6, [0123]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the method of forming a groove in a pipe element of Dole by providing a drive roller as the inner roller as taught by Puzio in order to provide means for rotating the pipe element (figs. 1-6, [0123]). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Claim 14:
Dole in view of Puzio renders obvious the method of claim 13, wherein said pipe element (Dole, 14 and/or Puzio, 40) and said outer roller each (Dole, 68 and/or Puzio, 22) rotate as a result of contact friction between said inner roller (Dole, 72 and/or Puzio, 12) and said pipe element (Dole, 14 and/or Puzio, 40) and said pipe element (Dole, 14 and/or Puzio, 40) and said outer roller (Dole, 68 and/or Puzio, 22) (Dole, figs. 6-7 and 10, [0043] and Puzio, figs. 1-6, [0123]).
Claim 15:
Dole in view of Puzio renders obvious the method of claim 11, wherein said method further comprises forcing said outer roller (Dole, 68 and/or Puzio, 22) toward said inner roller (Dole, 72 and/or Puzio, 12) (Dole, [0043] and Puzio, figs. 1-6, [0123]).
Claim 16:
Dole in view of Puzio renders obvious the method of claim 15, wherein said outer roller (Dole, 68 and/or Puzio, 22) is forced toward said inner roller via a hydraulic ram (Puzio, [0003]).
Response to Arguments
Applicant's arguments filed 02 December 2025 have been fully considered but they are not persuasive.
On page 8, applicant argues figure 4 provides support for the instant amendment to the claimed invention which recites “said fourth sub-surface being oriented at an obtuse angle with respect to said third sub-surface.” Examiner disagrees. As recited above, applicant’s disclosure provides no support for applicant’s amendment to the claimed invention. The disclosure repeatedly describes each sub-surface’s orientation angle relative to the longitudinal axis (e.g. for sub-surfaces 74/76/78/80 the disclosure recites ranges like 80-90°, 40-70°, 1-25° +5° to -5° with respect to the longitudinal axis). The written description also states the fourth sub-surface is “oriented parallel (0°) to the longitudinal axis. Applicant’s disclosure as originally filed does not describe or quantify any angle between the third and fourth sub-surfaces (i.e., surface-to-surface angle), let alone recite an obtuse angle (>90°).
Regarding applicant’s reliance on figure 4 of applicant’s disclosure, examiner’s position is, drawings can provide written-description support only if the drawings clearly and unmistakably convey the claimed feature to a person of ordinary skill in the art without inference, reconstruction, or measurement. For the claimed obtuse angle, the drawings must show two distinct planar surfaces, a discernible vertex between them and an angle that is clearly greater 90° on its face. If a person of ordinary skill in the art would need to measure the angle, decide which “interior” angle is intended, or infer geometry from smooth blending, then there is no written-description support.
The groove profile around elements 78 (third sub-surface) and 80 (fourth sub-surface) cited in fig. 4, reflect a transition between the third and fourth sub-surfaces that is rounded or blended, not angular. There is no sharp vertex or corner defining a measurable angle. The fourth sub-surface appears substantially axial / near-parallel, consistent with the specifications 0° +/- 5° relative to the longitudinal axis. The third sub-surface slopes slightly toward the groove bottom. This is curvilinear geometry, not two planes meeting at a defined obtuse angle.
Applicant’s amendment changes the reference frame from the original disclosure wherein angles are defined with respect to the longitudinal axis to applicant’s proposed amendment to the claim wherein an angle is defined with respect to another surface. This is a new geometric relationship, not a clarification of the disclosed invention.
On pages 10-11, applicant argues Dole does not disclose a pipe element comprising a groove having the claimed configuration. Examiner disagrees. Applicant is implicitly arguing Dole’s groove is not proximate to the first end because it’s not positioned exactly where applicant wants Dole’s groove to be positioned. Claim 11 recites in relevant part “A method of forming a groove in an outer surface proximate to a first end of a pipe element…” This clause is not a method step. The clause is a preamble/contextual limitation and at most a statement of intended result or environment. The only actual method steps are using an inner roller, using an outer roller and rolling a groove. The claim does not require: (a) positioning the rollers relative to the first end; (b) selecting a specific location and/or (c ) measuring or controlling proximity. The claimed invention simply describes the groove being proximate to the first end as a characteristic of the groove being formed, not how that proximity is achieved.
Applicant’s argument improperly treats the phrase “proximate to a first end” as an affirmative method requirement. Claim 11 does not include any step of positioning, aligning, or locating the groove-forming operation relative to the first end of the pipe element. Instead, the phrase describes a possible groove resulting from the method. Absent an express step requiring location control, such descriptive language does not limit the method beyond the recited groove-forming operations.
On page 11 applicant argues the requirements to establish a prima facie case of obviousness for claim 11 have not been met because the examiner has not addressed the difference between Dole and the claimed invention, i.e., the Examiner has not explained why the difference between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art, nor has the Examiner provided articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Therefore, the requirements to establish a prima facie case of obviousness for claim 11 have not been met. Examiner disagrees.
As recited above, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an inner roller and outer roller comprising the required profiles to form the groove as reflected in figure 13 as taught by the method of using an inner and outer roller reflected in figures 5 an 6 since it was known that in order to form the desired profile in a pipe element, a roller tool is used having a cross-sectional shape at its periphery substantially identical to the desired shape of the groove and groove profile variations (angles/shoulders/recesses) are recognized design choices for coupling engagement/pullout resistance
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kunsman (US 3,995,466) discloses a machine for semi-automatic grooving of a pipe. Novitsky et al. (US 2013/0055780 A1) discloses a method of forming a groove in a pipe element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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, 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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/Lee A Holly/Primary Examiner, Art Unit 3726