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 .
Claim Status
Claims 1, 2 and 4-21 are pending. Examiner acknowledges Applicant’s amendments to claims 1, 4, 6-8, 11, 13, 14, 16, 19 and 20 and previously canceled claim 3.
Response to Arguments
Applicant's arguments filed 3/12/26 have been fully considered but they are not persuasive.
With regard to claim 1, Applicant argues that Hildner does not disclose wherein the first member is configured to receive the first conduit in the channel through at the first opening and receive the second conduit in the channel through the second opening as the first conduit (column 7, lines 7-11) in Hildner does not extend through the channel of the first opening of the first member (first end of 10) as the first conduit would be restricted at a step next to 51.
Examiner disagrees.
First, Applicant should note that the invention is a device for coupling first and second conduits and that the first and second conduits are not a part of the claimed invention and are functionally rather than structurally recited. Second, a conduit with a stepped down portion at a first end could be configured to be inserted into the device and extend past the step and through the channel of the first opening of the first member and be coupled by the device to a second conduit. Therefore, Hildner discloses the limitations as recited in claim 1.
With regard to claim 1, Applicant argues that Hildner does not disclose wherein the second segment of the second member comprises an inner diameter configured to elastically conform to an outer diameter of the second conduit to enable a portion of the second member extending from the first member to form a seal around the second conduit when the one or more threads of the second conduit fully engages the one or more threads of the first member as Hildner does not disclose that the inner diameter of the retaining band 11 of the synthetic plastic sleeve 2 forms a seal with the outer diameter of Hildner’s tube portion 26 when the threads of Hildner’s injection nut 4 engages the threads of Hildner’s tube portion 26.
Examiner disagrees.
First, as noted above, the invention is a device for coupling first and second conduits and the first and second conduits are not a part of the claimed invention and are functionally rather than structurally recited. Second, the inner diameter of the second segment is capable of being configured to form a seal around a threaded conduit configured to be inserted into the second end of the first member (note that the threaded conduit being inserted is not required to be the specific threaded conduit of Hildner). Therefore, Hildner discloses the limitations as recited in claim 1.
Drawings
The drawings are objected to because in Figure 2 of the replacement drawings filed on 8/19/25, drawing element 116 (second end of first member 106) is pointing to the same end as drawing element 114 (first end of first member 106). Correction is required.
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1, 4, 8, 9, 11, 17 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hildner U.S. Patent No. 4,682,797.
With regard to claim 1, and as shown in Figure 1, Hildner discloses a device for coupling a first conduit and a second conduit comprising:
a first member (at 4) comprising:
a body (body of 4) defining a channel (channel through 4) and having a first opening located at a first end of the body (opening at 10) and a second opening located at a second end of the body (opening at end 6), and
one or more threads (at 8) located on an inner surface of the channel at the second opening,
wherein the first member is configured to receive the first conduit in the channel through the first opening and receive the second conduit in the channel through the second opening (where the first member is capable of being configured to receive a first stepped down conduit through the first opening and a second threaded conduit in the through the second opening), and
the one or more threads engages one or more threads of the second conduit (where the one or more threads of the first member are capable of being configured to engage threads of a second conduit); and
a second member (at 2) circumferentially disposed around a periphery of the first member at the second opening (wherein the second member 2 is circumferentially disposed around a periphery of the first member 4 at 6), the second member comprising:
a first segment (see below) disposed around at least a portion of the periphery of the first member, and
a second segment (see below) axially extending from the second end of the body of the first member,
wherein the second member is formed of a flexible polymer (column 5, lines 26-29), and
wherein the second member is integrally formed onto the first member (as shown in Fig 1) and the second segment of the second member comprises an inner diameter (inner diameter of 11) configured to elastically conform to an outer diameter of the second conduit to enable a portion of the second member extending from the first member to form a seal around the second conduit when the one or more threads of the second conduit fully engages the one or more threads of the first member (where the inner diameter of the second segment is capable of being configured to form a seal around a threaded conduit configured to be inserted into the second end of the first member).
Note: the first and second conduits are not a part of the claimed invention.
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With regard to claim 4, Hildner discloses wherein the second member (at 2) comprises a rigidity provided by the flexible polymer to enable forming the seal between the second conduit and the first member (column 6, lines 33-36), and wherein the second member further comprises an elasticity provided by the flexible polymer to enable the second member to conform to the outer diameter of the second conduit (column 6, lines 37-39).
With regard to claim 8, and as shown in Figure 1, Hildner discloses wherein a portion of the second member (at 11) extends from the first member and further defines the channel (channel through portion at 11), and
wherein the channel extends through the first member and the second member such that a first end of the device is in fluid communication with a second end of the device (as shown in Fig 1 where the channel extends through the device).
With regard to claim 9, Hildner discloses wherein the first member (at 4) is further configured to engage the first conduit such that a seal is formed when the first conduit is fully inserted into the channel at the first opening (where the first member can be configured to engage a first conduit through the ring 18).
Note: the first conduit is not a part of the claimed invention.
With regard to claim 11, and as shown in Figure 1, Hildner discloses a system for connecting a first conduit to a second conduit comprising:
a coupling device (as shown in Figure 1) for coupling the first conduit and the second conduit comprising:
a first member (at 4) comprising:
a body (body of 4) defining a channel (channel thru 4) and having a first opening located at a first end of the body (opening at 10) and a second opening located at a second end of the body (opening at end 6), and
one or more threads (at 8) located on an inner surface of the channel at the second opening,
wherein the first member is configured to receive the first conduit in the channel through the first opening and receive the second conduit in the channel through the second opening (where the first member is capable of being configured to receive a first stepped down conduit through the first opening and a second threaded conduit in the through the second opening) and
the one or more threads engages one or more threads of the second conduit (where the one or more threads of the first member are capable of being configured to engage threads of a second conduit);
a second member (at 2) circumferentially disposed around a periphery of the first member at the second opening (wherein the second member 2 is circumferentially disposed around a periphery of the first member 4 at 6), the second member comprising:
a first segment (see above) disposed around at least a portion of the periphery of the first member, and
a second segment (see above) axially extending from the second end of the body of the first member,
wherein the second member is formed of a flexible polymer (column 5, lines 26-29), and
wherein the second member is integrally over molded onto the first member (as shown in Fig 1) and the second segment comprises an inner diameter (inner diameter of 11) configured to elastically conform to an outer diameter of the second conduit to enable of the second member extending from the first member to form a seal around the second conduit when the second conduit fully engages the first member (where the inner diameter of the second segment is capable of being configured to form a seal around a threaded conduit configured to be inserted into the second end of the first member);
wherein the channel extends through the first member and the second member such that a first end of the coupling device is in fluid communication with a second end of the coupling device (as shown in Fig 1 where the channel extends through the device through the first and second members); and
wherein the coupling device is formed by over molding the second member onto the periphery of the first member (as shown in Fig 1).
It is noted that the limitation “over molded” is a product-by-process limitation. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the patentability of the product that is to be determined and not recited process steps irrespective of whether or not only process steps are set forth. Therefore, since “overmolding” provides no further structure than the second member being formed onto the periphery of the first member as shown in Figure 4 and discussed with regard to Figure 7 of the instant application, the limitation has been met.
With regard to claim 17, Hildner discloses wherein the first member (at 4) is further configured to engage the first conduit such that a seal is formed when the first conduit is fully inserted into the channel at the first opening (where the first member can be configured to engage a first conduit through the ring 18).
With regard to claim 21, Hildner discloses wherein the second member (at 2) is over- molded onto the first member (at 4 and as shown in Fig 1).
It is noted that the limitation “over molded” is a product-by-process limitation. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the patentability of the product that is to be determined and not recited process steps irrespective of whether or not only process steps are set forth. Therefore, since “overmolding” provides no further structure than the second member being formed onto the periphery of the first member as shown in Figure 4 and discussed with regard to Figure 7 of the instant application, the limitation has been met.
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(s) 2, 5, 7 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hildner.
With regard to claim 2, Hildner discloses wherein the first member comprises a non-metallic material (column 3, lines 15-16) but does not disclose that the first member comprises a non-metallic Polyvinyl Chloride (PVC) material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first member comprise a non-metallic Polyvinyl Chloride (PVC) material with a reasonable expectation of success to adapt to a different environment and because it has been held to be within the general skill of a worker in the art to select a 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.
With regard to claim 5, Hildner discloses wherein the device is formed by over molding the second member onto the periphery of the first member (as shown in Fig 1 where the second member 2 is overmolded onto first member 4) but does not disclose that a melting temperature of the first member is substantially similar to a melting temperature of the second member.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a melting temperature of the first member be substantially similar to a melting temperature of the second member with a reasonable expectation of success to enable the second member to be more adaptable to being over molded onto the periphery of the first member and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
With regard to claim 7, Hildner discloses the claimed invention but does not disclose that the first conduit comprises a non-metallic PVC conduit and the second conduit comprises a PVC coated metallic conduit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first conduit comprise a non-metallic PVC conduit and the second conduit comprise a PVC coated metallic conduit with a reasonable expectation of success to adapt to the required fluid flow environment and because it has been held to be within the general skill of a worker in the art to select a 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.
With regard to claim 12, Hildner discloses wherein the first member comprises a non-metallic material (column 3, lines 15-16) but does not disclose that the first member comprises a non-metallic Polyvinyl Chloride (PVC) material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first member comprise a non-metallic Polyvinyl Chloride (PVC) material with a reasonable expectation of success to adapt to a different environment because it has been held to be within the general skill of a worker in the art to select a 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.
With regard to claim 13, Hildner discloses the claimed invention but does not disclose that the first conduit comprises a non-metallic PVC conduit and the second conduit comprises a PVC coated metallic conduit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first conduit comprise a non-metallic PVC conduit and the second conduit comprise a PVC coated metallic conduit with a reasonable expectation of success to adapt to the required fluid flow environment and because it has been held to be within the general skill of a worker in the art to select a 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.
With regard to claim 14, Hildner discloses wherein the second member (at 2) comprises a rigidity provided by the flexible polymer to enable forming the seal between the second conduit and the first member (column 6, lines 33-36), wherein the second member further comprises an elasticity provided by the flexible polymer to enable the second member to conform to the outer diameter of the second conduit (column 6, lines 37-39).
With regard to claim 15, Hildner discloses the claimed invention but does not disclose that a melting temperature of the first member is substantially similar to a melting temperature of the second member.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a melting temperature of the first member be substantially similar to a melting temperature of the second member with a reasonable expectation of success to enable the second member to be more adaptable to being over molded onto the periphery of the first member and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim(s) 6, 10, 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hildner in view of Lee et al U.S. Patent Application Publication No. 2015/0219254 A1.
With regard to claim 6, Hildner discloses the claimed invention but does not disclose further comprising an adhesive, and wherein the adhesive attaches the first member to the second member, wherein the adhesive is made of a material selected based on a material of the first member and the second member to enable the adhesive to attach the first member to the second member. Lee et al teach that an adhesive can be used to couple elements together which is inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the device further comprise an adhesive to attach the first member to the second member with a reasonable expectation of success as the adhesive can be inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment as taught by Lee et al.
With regard to claim 10, Hildner discloses the claimed invention but does not disclose further comprising an adhesive, and wherein the adhesive is configured to be applied to respective surfaces of the first conduit and the first member to enable the seal to be formed between the first conduit and the first member. Lee et al teach that an adhesive can be used to couple elements together which is inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the device further comprise an adhesive to attach the first member to the first conduit with a reasonable expectation of success as the adhesive can be inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment as taught by Lee et al.
With regard to claim 16, Hildner discloses the claimed invention but does not disclose further comprising an adhesive, and wherein the adhesive attaches the first member to the second member, wherein the adhesive is made of a material selected based on a material of the first member and the second member to enable the adhesive to attach the first member to the second member. Lee et al teach that an adhesive can be used to couple elements together which is inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the device further comprise an adhesive to attach the first member to the second member with a reasonable expectation of success as the adhesive can be inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment as taught by Lee et al.
With regard to claim 18, Hildner discloses the claimed invention but does not disclose further comprising an adhesive, and wherein the adhesive is configured to be applied to respective surfaces of the first conduit and the first member to enable the seal to be formed between the first conduit and the first member. Lee et al teach that an adhesive can be used to couple elements together which is inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the device further comprise an adhesive to attach the first member to the first conduit with a reasonable expectation of success as the adhesive can be inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment as taught by Lee et al.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hildner in view of Schmitt et al U.S. Patent Application Publication No. 2011/0280650 A1.
With regard to claim 19, Hildner discloses a method of manufacturing a coupling device comprising:
obtaining a first member (at 4) having a first melting temperature (where the first member has a melting temperature based on its material composition), wherein the first member comprises a body (body of 4) defining a channel (channel through 4) and having a first opening (opening at 10) and a second opening (opening at end 6), and one or more threads (at 8) located on an inner surface of the channel at the second opening;
obtaining a flexible polymer material (column 5, lines 26-29) having a second melting temperature (where the polymer material has a melting temperature based on its material composition); and over molding the flexible polymer material onto the first member (column 5, lines 34-35 where the polymer material is molded over the first member as shown in Fig 1) to form a second member (at 2); and
wherein the second member comprises a first portion (see above) disposed around at least a portion of a periphery of the first member and a second portion (see above) of the second member axially extending from the first member so as to further define the channel such that a first end of the coupling device is in fluid communication with a second end of the coupling device (portion of 2 extending axially to the left of the first member 4 further defining the channel), and
wherein the second portion comprises an inner diameter (inner diameter of 11) configured to elastically conform to an outer diameter of a conduit to form a seal around the conduit when one or more threads of the conduit fully engages the one or more threads of the first member (where the inner diameter of the second segment is capable of being configured to form a seal around a threaded conduit configured to be inserted into the second end of the first member).
However, Hildner does not expressly disclose over molding the flexible polymer material onto the first member at a temperature less than the first melting temperature and above the second melting temperature to form a second member. Schmitt et al teach that the polymer material can be molded onto a first member at a temperature that is above the second melting temperature but less than the temperature of the first member to allow the polymer material to melt in the area around the first member and therefore be joined together (paragraph 117).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to over mold the flexible polymer material onto the first member at a temperature less than the first melting temperature and above the second melting temperature to form a second member with a reasonable expectation of success to allow the polymer material to melt in the area around the first member and therefore be joined together as taught by Schmitt et al.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hildner in view of Schmitt et al and further in view of Lee et al.
With regard to claim 20, Hildner in view of Schmitt et al disclose the claimed invention but do not disclose further comprising applying an adhesive onto an outer surface of the first member to enable the second member to attach to the first member, wherein the adhesive is selected from a group of materials based on a material of the first member and the second member to enable the adhesive to attach the first member to the second member. Lee et al teach that an adhesive can be used to couple elements together which is inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the device further comprise an adhesive to attach the first member to the first conduit with a reasonable expectation of success as the adhesive can be inexpensive, can form a connection between elements of dissimilar materials and be used in a high pressure environment as taught by Lee et al.
Conclusion
THIS ACTION IS MADE FINAL. 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 FANNIE KEE whose telephone number is (571)272-1820. The examiner can normally be reached 8am-5pm.
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/F.K./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
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