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.
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 11-24 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 20:
Applicant’s disclosure as originally filed provides support for a second sub-surface and a fourth sub-surface. However, applicant’s disclosure as originally filed provides no support for said second sub-surface oriented at an obtuse angle with respect to said second sub-surface as recited by applicant’s amended claims.
The originally filed specification does not expressly describe a second sub-surface oriented at an obtuse angle with respect to the fourth sub-surface. The disclosure describes sub-surfaces 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 second and fourth sub-surfaces as obtuse.
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 § 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.
Claims 11-12, 15, 17-20 and 22-24 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 of a pipe element extending along a longitudinal axis (abstract); the pipe element comprising a first end (at gap 38) (fig. ¶29); and,
a second end opposite said first end (opposite end of gap 38) along the longitudinal axis (fig. ¶29); wherein said groove (34 or 36) is positioned closer to said first end than to said second end (fig. ¶29); said groove comprising:
a first sub-surface oriented at an angle with respect to said longitudinal axis (fig. 13, ¶47 – 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, ¶47 – 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, ¶47 – 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, ¶47 – see annotated reproduction of fig. 13, below);
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the method comprising;
using an inner roller (72) contacting an inside surface (74) of said pipe element and an outer roller (68) contacting said outer surface (70) of said pipe element to roll groove said groove (34 or 36) in said pipe element (fig. 6, ¶42-43).
Dole fails to disclose a first sub-surface oriented at an angle with respect to said longitudinal axis and facing away from said first end. Instead, Dole discloses a first sub-surface oriented at an angle with respect to said longitudinal axis and facing away from the second end.
However, Dole expressly teaches that groove profiles are created through selection of the corresponding roller profile and Dole further presents numerous alternative groove geometries (see figs. 6-7 and 10-15; ¶42-47). Dole further teaches that the roller tool has a cross-sectional shape substantially identical to the desired shape of the groove (¶43) and discusses groove configurations in terms of groove dimensions and coupling engagement characteristics rather than any particular arrangement of transitional surfaces (¶47). One of ordinary skill in the art would therefore have recognized that the relative positioning and orientation of groove surfaces with respect to the pipe end constitute predictable geometric variations obtainable through corresponding modification of the roller profile to achieve a desired groove orientation and positioning profile. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Dole’s groove profile to provide such that the first sub-surface faces away from the first end of the pipe element as claimed because the resulting groove geometry would be a predictable result of selecting a corresponding roller profile (see figs. 6-7 and 10-15; ¶42-47).
Claim 12:
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. ¶42-43).
Claim 15:
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) (¶42-43).
Claim 17:
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, ¶47 – see annotated reproduction of fig. 13, above).
Claim 18.
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, ¶47 – see annotated reproduction of fig. 13, above).
Claim 19:
Dole renders obvious the method of claim 11, wherein said first sub-surface is perpendicular to said longitudinal axis (fig. 13, ¶7, 32, 47 – see annotated reproduction of fig. 13, above).
Claim 19:
Dole renders obvious the method of claim 11; and, Dole further teaches second and fourth sub-surfaces corresponding to those recited in claim 20. The relationship recite in claim 20, said second sub-surface is oriented at an obtuse angle with respect to said fourth sub-surface, would inherently result from the obvious modification of claim 11 discussed above because the second and fourth sub-surfaces are already present within Dole’s groove profile and the modified orientation of the groove profile would necessarily provide the claimed angular relationship between the second and fourth sub-surfaces (fig. 13, ¶7, 32, 47 – see annotated reproduction of fig. 13, above).
Claim 22:
Dole renders obvious the method of claim 11, wherein said first end of said pipe element is configured to be received between arcuate projections of a groove coupling (figs. 5-5B, ¶29, 35-36). Dole discloses a pipe element having a circumferential groove adjacent the pipe end for engagement by arcuate coupling keys. Because the groove and pipe end are specifically adapted to engage the coupling keys, the pipe end is necessarily capable of being received between the arcuate projections of the groove coupling as claimed (figs. 5-5B, ¶29, 35-36).
Claim 23:
Dole renders obvious the method claim 11, and Dole does not teach the third sub-surface is oriented at an angle of 1 to 25 degrees with respect to the longitudinal axis, and wherein the fourth sub-surface is oriented at an angle of -5 to 5 degrees with respect the longitudinal axis. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the method and device taught by Dole to provide the third sub-surface is oriented at an angle of 1 to 25 degrees with respect to the longitudinal axis, and wherein the fourth sub-surface is oriented at an angle of -5 to 5 degrees with respect the longitudinal axis, without modification of the functionality of the method and device. Thus, Dole renders obvious applicant’s claimed invention as recited by claim 23.
Claim 24:
Dole renders obvious the method claim 23, and Dole does not teach the obtuse angle is from 160 to 180 degrees. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the method and device taught by Dole to provide the obtuse angle is from 160 to 180 degrees, without modification of the functionality of the method and device. Thus, Dole renders obvious applicant’s claimed invention as recited by claim 24.
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 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, ¶112); 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, ¶123).
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, ¶123). 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 (Dole, 68 and/or Puzio, 22) each 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, ¶43 and Puzio, figs. 1-6, ¶123).
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, figs. 6-7 and 10, ¶43 and Puzio, figs. 1-6, ¶123).
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, ¶3).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Dole as applied to claim 11 above, and further in view of Williams et al. (US 6,196,039 B1).
Claim 21:
Dole renders obvious the method of claim 11; and, Dole fails to disclose positioning said pipe element such that said first end of said pipe element contacts a flange of said inner roller.
Williams discloses groove rollers, which are for use with a roll grooving device for forming a groove in an outer surface of a pipe element near an end of the pipe (abstract) wherein an inner roller of the groove rollers comprises a flange and positioning said pipe element such that said first end (216) of said pipe element (208) contacts said flange (221) of said inner roller (204) (figs. 5-9, c5, ll. 18-24). Williams further teaches that flange (221) includes the pipe abutment surface used for positioning the pipe during groove formation (figs. 5-9, c6, ll. 16-18).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Dole’s inner roller to include Williams’ flange-like bead and abutment surface because Williams teaches that positioning the pipe against the abutment surface accurately locates the pipe during groove formation and assists groove formation and roller alignment. See MPEP §2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. Incorporating Williams’ positioning structure into Dole would have predictably improved axial positioning of the pipe prior to forming the groove (Williams, c6, ll. 16-18).
Response to Arguments
Applicant's arguments filed 12 May 2026 have been fully considered but they are not persuasive.
Claim 11:
On pages 7-12, 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.
Applicant’s arguments do not actually address the core of the 112(a) rejection. The rejection does not merely state “the examiner does not see an obtuse angle.” The rejection states the original disclosure defines surface orientation relative to the longitudinal axis, not relative to another surface. Applicant is deriving a new claimed geometric relationship from independently disclosed orientations relative to a common reference axis. Applicant’s disclosure as originally filed never identifies the claimed obtuse-angle relationship between the third and fourth sub-surfaces as part of the invention.
Claim 18:
Applicant's arguments filed 12 May 2026 with respect to the rejection of claim 18 under 35 U.S.C. 112(a) have been fully considered but they are persuasive. The rejection of claim 18 under 35 U.S.C. 112(a) has been withdrawn.
Claim 11:
Applicant's arguments filed 12 May 2026 with respect to the rejection of claim 11 under 35 U.S.C. 102 have been fully considered but they are persuasive. The rejection of claim 11 under 35 U.S.C. 102 has been withdrawn.
On pages 14-19 Applicant further argues the rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over Dole is improper. Applicant’s argument depends upon redefining the identified sub-surfaces contrary to the groove profile disclosed in Dole. When the groove profile is interpreted in accordance with Dole’s disclosed roller generated groove geometry, the identified first, second, third and fourth subs-surface retain the orientation relations set forth in the previous Office Action. Even if assuming Dole does not expressly disclose the claimed orientation of the fourth sub-surface relative to the third sub-surface, modification of the groove profile would have been an obvious matter of selecting a corresponding roller profile because Dole expressly teaches that the roller profile is selected to correspond to the desired groove geometry (fig. 6, ¶42-43).
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.
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 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
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