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 .
Election/Restrictions
Applicant's election with traverse of species A, Figure 4, claims 1-3 in the reply filed on March 11, 2026 is acknowledged. The traversal is on the ground(s) that in view of the announced enhanced search capabilities, there is no longer a serious search and/or examination burden. This is not found persuasive because the Examiner is not aware of any such enhanced search capabilities that have substantially reduced (or changed in any way) the search burden of this application, nor would any such enhanced search capabilities do anything to mitigate the substantial examination burden presented by the concurrent examination of these species. The requirement is still deemed proper and is therefore made FINAL. Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it is in single sentence claim format and contains phrases which can be implied (“The present disclosure relates to”). Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 1-3 is objected to because of the following informalities:
In claim 1 line 11, “pipe is” would be clearer if written as --pipe and is--.
In claim 3 line 2, “where” would be clearer if written as --on each end--.
In claim 3 line 5, “of the straight pipe” would be clearer if written as --of each straight pipe--.
In claim 3 lines 5-6, “with a contact surface” would be clearer if written as --with the contact surface--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: connection members in claim 1, and fixing ring member in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “the corrugated stainless steel pipe and the flange are coupled to each other by means of tungsten inert gas (TIG) welding” in claim 3. Tungsten inert gas (TIG) welding has a known structure, material, and act, and therefore the generic placeholder is modified by sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent 3,420,553 to Poxon in view of U. S. Patent 5,676,176 to Usui and U. S. Patent Publication 2019/0309876 to Dong.
Referring to claim 1, Poxon teaches a pipe comprising:
a corrugated pipe (30) (Fig. 3; col. 2 lines 6-60);
straight pipe portions (32) formed on both ends of the corrugated pipe (30) to fit connection members (18) thereto (Fig. 3; col. 2 lines 6-60);
a mesh (38) for inserting the corrugated pipe (30) thereinto (Fig. 3; col. 2 lines 6-60); and
a fixing ring member (40) for fixing each end of the mesh (38) to the corresponding straight pipe portion (32) (Fig. 3; col. 2 lines 6-60),
wherein each straight pipe portion (32) is formed of a straight pipe member having a higher thickness than the corrugated pipe (30) and is welded to a corresponding end portion of the corrugated pipe (30), to reinforce the straight pipe portion (Fig. 3; col. 2 lines 6-60).
The recitation of the pipe being used for or with an air conditioner has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Furthermore, it has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex part Masham, 2 USPQ2d 1647 (1987).
Paxon teaches that the corrugated pipe is metal but is otherwise silent as to the material of the corrugated pipe. Usui teaches a pipe comprising:
a corrugated stainless steel pipe (Fig. 1a; col. 4 lines 14-27).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the corrugated pipe material taught by Usui in order to use a material with excellent mechanical strength and corrosion resistance (Usui col. 4 lines 14-27), and since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Paxon teaches a braided metal sleeve 38, but is otherwise silent as to the details of the braiding. Dong teaches a pipe comprising:
a knitted mesh for inserting a corrugated pipe thereinto (paragraphs [0021] and [0049], claim 16).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the knitted mesh taught by Usui in order provide vibration resistance and shock absorption (paragraphs [0021] and [0049], claim 16), and since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent 3,420,553 to Poxon in view of U. S. Patent 5,676,176 to Usui, U. S. Patent Publication 2019/0309876 to Dong and U. S. Patent Publication 2013/0186484 to Schwartzkopf.
Referring to claim 2, Poxon, Usui and Dong teach a pipe comprising all the limitations of claim 1, as detailed above, but Poxon and Dong do not teach the claimed pipe thicknesses. Usui further teaches a pipe wherein:
the corrugated stainless steel pipe has a thickness of 0.25 to 0.4 mm (col. 2 lines 45-56).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the corrugated pipe thickness taught by Usui in order to use a material with excellent mechanical strength and corrosion resistance (Usui col. 4 lines 14-27), and since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Usui does not teach straight pipe portions. Schwarzkopf teaches a pipe wherein:
a straight pipe member (10) has a thickness of 0.5 to 0.7 mm (Fig. 13; paragraph [0065]).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the straight pipe member thickness taught by Schwarzkopf in order to use a pipe of sufficient thickness to handle pressure within.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent 3,420,553 to Poxon in view of U. S. Patent 5,676,176 to Usui, U. S. Patent Publication 2019/0309876 to Dong, U. S. Patent 2,848,254 to Millar and U. S. Patent 4,366,971 to Lula.
Referring to claim 3, Poxon, Usui and Dong teach a pipe comprising all the limitations of claim 1, as detailed above, an Poxon further teaches a pipe wherein:
where a flange (end of 32 which is inside the pipe 30) of the straight pipe member (32) is in contact with a contact surface of the corrugated pipe (30), and a crest of the corrugated pipe (30) and the flange (end of 32 which is inside the pipe 30) are coupled to each other by means of welding (Fig. 3; col. 2 lines 6-60, wherein since the straight pipe is welded to the corrugated pipe, all portions of the straight pipe are coupled to all portions of the corrugated pipe by welding).
As detailed above, Paxon teaches that the corrugated pipe is metal but is otherwise silent as to the material of the corrugated pipe. Usui teaches a pipe comprising:
a corrugated stainless steel pipe (Fig. 1a; col. 4 lines 14-27).
Poxon is silent as to what type of weld is used, Usui and Dong do not teach a TIG weld as claimed, and Poxon, Usui and Dong do not teach a double layer contact surface. Millar teaches a pipe wherein:
where a valley of a corrugated pipe is cut, one corrugation of the corrugated pipe is compressed flat to form a double-layered contact surface having a crest (Figures 1 and 2; col. 3 lines 35-40)
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the double-layered contact surface taught by Millar in order to form a firm flat surface on the end of the pipe for sealing and/or attachment (col. 3 lines 35-40). Furthermore, the method of forming the device is not germane to the issue of patentability of the device itself (see MPEP § 2113). Therefore, the recitations of cutting and compressing have not been given patentable weight.
Millar does not teach tungsten inert gas (TIG) welding. Lula teaches a pipe wherein:
a pipe (12) and a flange (end of liner 34) are coupled to each other by means of tungsten inert gas (TIG) welding (42) (Figures 1-4; col. 3 line 61- col. 4 line 2).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to modify the pipe taught by Paxon with the weld type taught by Lula in order to create a metallurgical bond securing the pipe to the flange (col. 3 line 61- col. 4 line 2) and because it has been held that a simple substitution of one known element, the TIG weld of Lula, for another, the undisclosed weld type of Paxon, to obtain predictable results, create a metallurgical bond, was an obvious extension of prior art teachings, KSR, 550 U.S. at 419, 82 USPQ2d at 1396, MPEP 2141 III B.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Brannon, Watanabe and Liang teach similar pipes as claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN MATTHEW LETTMAN whose telephone number is (571)270-7860. The examiner can normally be reached Monday-Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN M LETTMAN/Primary Examiner, Art Unit 3746
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