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 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.
Priority
While it is acknowledged that the foreign priority appears to be eligible for retrieval under the priority document exchange (PDX) program, Applicant is respectfully reminded that if retrieval fails, Applicant remains responsible for the submission of the certified copy of the foreign application, please see https://www.uspto.gov/patents-getting-started/international-protection/electronic-priority-document-exchange-pdx#Retrieval.
The Examiner suggests that upon receipt of this Office Action that Applicant re/check to see if the PDX has been able to fetch the foreign priority document, and if not, that Applicant so provide the foreign priority document.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 10/16/2024 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the Examiner.
Drawings
The drawings (figs. 1-8 & 10-13) are objected to under 37 CFR 1.84(l) for being unsatisfactorily reproducible. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
The drawings are objected to because unlabeled non-descriptive representations are impermissible under 37 CFR 1.83(a) which states (bold for emphasis):
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
Element(s) 1 (Ultrasonic Sensor) figs. 1, 4, & 7-8 need appropriate legends in the form of descriptive text labels in addition to any reference characters already present. Empty or not labeled rectangular boxes and non-descriptive representations of features are not descriptive, and therefore incomplete. The descriptive text labels should contain as few words as possible. See also 37 CFR 1.84(n) (conventional symbols), 1.84(o) (required descriptive legends), & 1.84(p) (standards for the text labels), and MPEP § 608.02(b)(II)(¶ 6.22) (“descriptive text label”). Appropriate Correction is required.
Regarding the photograph(s), Applicant is respectfully reminded of 37 CFR 1.84(b) (bold for emphasis) Photographs.—
(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), auto- radiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
The Examiner notes that the photograph(s) is/are not of sufficient quality so that all details are sufficiently reproducible, and further that the photograph is not the only practicable medium for illustrating the invention, therefore the drawings (fig(s). 12) is/are objected to under 37 CFR 1.84(b).
The drawing(s) is/are objected to under 37 CFR 1.83(a) for not showing claimed features. The drawings must show every feature of the invention specified in the claims. Therefore, the “fixing elements” (at least claim 3) and “locking elements” (at least claim 5) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Figure(s) 8 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated ([041] “conventional inspection methods, as illustrated in Figure 8”). See MPEP § 608.02(g).
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.
Specification
Applicant is reminded of the proper content, language, and/or format for an abstract of the disclosure:
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. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because:
phrases which can be implied (“The present invention provides the use of”).
Appropriate correction is required. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The title of the invention is not usefully descriptive, appears to be grammatically awkward, and utilizes unconventional terminology not found in the original disclosure. A new title is required that is clearly indicative of the invention to which the claims are directed. This may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. If a satisfactory title is not supplied by the applicant, the Examiner may, at the time of allowance, change the title by an Examiner’s amendment. See MPEP § 1302.04(a).
The Examiner suggests reverting the amended title to the original title: “THICKNESS MEASUREMENT DEVICE IN SUBMARINE PIPELINES SIMULTANEOUSLY AT MULTIPLE POINTS”
Claim Objections
Claim(s) 1-5 is/are objected to because of the following informalities:
As to independent claim 1:
The Examiner objects to the use of the pronoun “it” in the claim, noting in particular that while the antecedent basis of the pronoun is present, the use of a pronoun is ambiguous as to which element the pronoun is being substituted for. In this case, “it” is presumed to be substituted for the noun “thickness measuring device” in the limitation. The Examiner suggests explicit recitations.
The Examiner objects to the limitation “a pipeline” in the last limitation since said element already has antecedent basis to the pipeline introduced in the preamble. The Examiner further suggests, but does not require, that Applicant also reference to the alternative of a tubular body, namely as “the [[a]] pipeline or tubular body”.
As to claim 4,
“any one of claim 1” is objected to as nonsensical, the Examiner noting that “any one of” appears to unintentionally have been left after amending to remove the alternative possible claim dependencies.
As to claims 1-5,
the Examiner objects to unnecessary and somewhat ambiguous (without rising to the level of indefiniteness) shortening of element names, noting in particular that “device” would be clearer utilizing the full element name as “thickness measuring device”.
Dependent claim(s) of objected to claim(s) is/are likewise objected to.
Appropriate correction is required.
Applicant is respectfully reminded that in the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered). See MPEP § 714(c).
Claim Interpretation
While reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims when enclosed within parentheses, the use of reference characters is to be considered as having no effect on the scope of the claims. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
MPEP § 2173.02(I) states in part: “if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate”.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding independent claim 1:
The preamble “Thickness measuring device (100) in pipelines or tubular bodies of submarine equipment simultaneously at multiple points, characterized in that it comprises” is generally narrative and appears to be a literal translation into English from a foreign document; the preamble as written fails to conform to current U.S. practice. In particular, the Examiner respectfully notes that “thickness measuring device in pipelines or tubular bodies” appears to be contradictory to the later limitation “wherein the device is configured to embrace a pipeline like a sleeve”. Additionally, the limitation “simultaneously at multiple points’ appears to be missing a verb for the adverb to reference, as well as being unclear as to where the multiple points are located (e.g., whether on the pipeline/tubular-body or more generally on the submarine equipment). The Examiner has looked to the disclosure for guidance, and found that the figures and written specification support the embracing the pipeline like a sleeve and not for the insertion of the device in to a pipeline (i.e., unlike a PIG), and that the multiple points simultaneously appears to be in reference to multiple points on the pipeline being measured simultaneously (e.g., see figures 9-11). See also claim objection above, pertaining to “it”. Therefore, to the best understanding of the Examiner and for the purpose of examination the Examiner will interpret the preamble as “A [[T]]thickness measuring device [[(100)]] for measuring thickness of a [[in]] pipeline[[s]] or tubular body of submarine equipment simultaneously at multiple points on said pipeline or tubular body, characterized in that [[it]] the thickness measuring device comprises”.
There is insufficient antecedent basis for the limitation "each channel" in the claim. The Examiner has looked to the disclosure for guidance and found that “channel” does not appear in the written specification, nor as a separate element in the drawings. Additionally, referencing back to the original non-English disclosure, Applicant utilized the same word “calha” which appears to imply that “channel” and “trough” are the same element and alternative possible translations thereof. To the best understanding of the Examiner, and for the purpose of examination, the Examiner will interpret “channel” as referencing the already introduced “trough”.
Regarding claim 3,
“has fixing elements to the pipeline” appears to be an incomplete phrase, leaving unclear if the fixing elements are literally attached to the pipeline as well as the thickness measuring device or merely elements cooperating with the device embracing the pipeline as a sleeve. The Examiner has looked to the disclosure for guidance and found “The housings 2 and the rods 6a, 6b, 6c, 7, 8a, 8b and 8c that comprise the troughs 3 are preferably made of stainless steel for greater resistance to the aggressive marine environment. The fixing elements thereof, such as screws and nuts, are also preferably made of stainless steel” ([039] and “the fixing elements ensure that the adjustment is such that the sensors 1 are correctly aligned as seen in Figure 7” ([055]). No drawing however appears to show/label the fixing elements; see related drawing objection. To the best understanding of the Examiner, and for the purpose of examination, the Examiner will interpret the limitation as “has fixing elements for fixing the housings to the troughs so that the thickness measuring device is configured to embrace the pipeline”.
Regarding claim 4,
“being positioned in the pipeline” is contradictory to the limitation “wherein the device is configured to embrace a pipeline like a sleeve” introduced in the independent claim. Similar to the analysis of the independent claim, the Examiner has looked to the disclosure for guidance and found that the figures and written specification support the embracing the pipeline like a sleeve and not for the insertion of the device in to a pipeline (i.e., unlike a PIG). Most notably, [037] teaches “The device 100 is then placed in a template, for example, a tubular-shaped template which diameter matches the diameter of a pipeline that will be inspected, thereby molding itself to the shape of the template so as to embrace it like a sleeve” Therefore, to the best understanding of the Examiner and for the purpose of examination the Examiner will interpret the limitation instead as “being positioned [[in]] like the sleeve embracing the pipeline”.
Dependent claim(s) of rejected claim(s) is/are likewise rejected.
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) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over newly cited KRAUTKRAEMER* GMBH (DE 4239229 A1; hereafter “Krautkraemer”) in view of newly** cited Dingman (US 20160231281 A1; hereafter “Dingman”).
*machine translation provided by Examiner with foreign document and utilized for English citations
**corresponds to Applicant cited WO 2016049645 A1
Regarding independent claim 1, as best understood,
Krautkraemer teaches a thickness measuring device (see fig. 4) in pipelines (fig. 4, pipe 50) or tubular bodies of equipment simultaneously at multiple points (multiple points on pipe 50) (Title “Holder For Ultrasonic Test Head For Non=destructive Material Test Or Thickness Measurement - Has Housing With Coupling Arrangement Enabling Easy Linking Of Holders”; Abstract; [0009] “two-dimensional structures for the probe holder”; [0032]-[0033] pertaining to second dimensions and connections, see fig. 3), characterized in that it comprises:
a plurality of troughs (troughs as channels in two-dimensional array of housings between columns/rows for two dimensional structuring), each channel supporting a plurality of housings (figs. 1, 3, & 4, housing 20) ([0037] “since the design of a housing with not only one set of coupling means arranged 180° to each other, but also with a second, possibly identical or even simpler set of coupling means that is offset by 90° to the first, is relatively simple, it is preferred to provide two coupling means on the housing 20”; [0025] “any type of coupling of two adjacent probe holders is possible, whether rigid, movable about an axis or within an angular range”);
an ultrasonic sensor (fig. 1, ultrasonic probe 22) installed in each housing (figs. 1, 3, & 4, housing 20) of the plurality of housings (figs. 1, 3, & 4, housings 20) ([0024] “housing 20 in which there is a coaxial receiving bore for a cylindrical probe 22” and “design of the probe head 22 is arbitrary”);
wherein the device is configured to embrace a pipeline (fig. 4, pipe 50) like a sleeve ([0011] “can then peripherally encompass a section of a tube or the entire tube, can abut a curve of a convex part, can encompass a polygonal or arbitrarily shaped prismatic test piece, etc.”; [0034] “stretched onto a pipe 50 to be tested, the individual probe holders ride on the outer surface of the pipe 50 and, guided by this outer surface, enter a system suitable for ultrasonic testing”; see exemplary fig. 4).
Krautkraemer is silent to the pipeline being a pipeline of a submarine equipment.
However, it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. See MPEP § 2111.02 and Kropa v. Robie, 88 USPQ 478 (CCPA 1951). Additionally, it has been held that a 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. See MPEP § 2144(II) and Ex parte Masham, 2 USPQ2d - 164 7 (1987). In the present case it is the Examiner’s position that utilizing Krautkraemer’s device on a pipeline of a submarine equipment is intended use.
Furthermore, Dingman teaches a thickness measuring device (figs. 1-5, inspection apparatus 10) in pipelines or tubular bodies of submarine equipment (simultaneously at multiple points (Title “SYSTEMS, APPARATUS, AND METHODS FOR INSPECTING SUBMERGED SURFACES”; Abstract “The carriage, first member, and second member are configured to surround a section of the pipe and are movably mountable on the pipe”; [0028] “Although PEC sensors are discussed herein, other types of sensors including ultrasonic sensors may also be used in alternative embodiments of the invention, either in a separate apparatus or the same apparatus”; [0008] “measurement of this section of pipe may be taken using an ultrasonic sensor”; [0015] “calculate an average wall thickness of the section of the pipe from the measurement signal”), characterized in that it comprises: a plurality of troughs (troughs within interior spaces of plates 14, 16), each channel supporting a plurality of ultrasonic sensors (sensors 42) installed therein, wherein the device (figs. 1-5, inspection apparatus 10) is configured to embrace a pipeline (figs. 1-5, pipe 22) ([0003] “submerged or submarine pipeline”) like a sleeve ([0026] “The plurality of members/plates 14, 16 and carriage/center plate 12 may be rotated to fit around the pipe 22”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Dingman’s utility of inspecting the thickness of submarine pipelines and associated means thereof inclusive of use of troughed actuatable rotatable plates with Krautkraemer’s device for measuring the thickness of pipes thereby providing a means of rigid coupling between some of Krautkraemer’s sensor holders while increasing the versatility and utility of Krautkraemer’s device inclusive of having commercial applications for identifying pipeline areas or sections of these submarine pipelines in need of repair or replacement thereby minimizing risks and costly damage and/or losses. Complimentarily, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Krautkraemer’s sensor housings for ultrasonic thickness sensors with Dingman’s ultrasonic thickness sensors thereby providing increased ease for re/placement of Dingman’s sensors thereby. The Examiner additionally notes that the Courts have ruled an obviousness analysis based on the collective teachings of the references does not depend on the order in which the references are listed in the statement of the rejection. See In re Bush, 296 F.2d 491, 496 (CCPA 1961): “In a case of this type where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”
Regarding claim 3, which depends on claim 1, as best understood,
Each of Krautkraemer and Dingman teach characterized in that the device has fixing elements to the pipeline (Fixing elements in Krautkraemer include known means, such as clamping screws, gluing or clipping, and other couplers: [0024] “suitable, known means, such as clamping screws, gluing or clipping”; [0028] “screwed”; [0030] “screw”. Fixing elements in Dingman include mechanical means such as hinges, bolts, locks, etc.: [0025] “Although the present invention discloses the use of hinges 28, other mechanical means may be used to attach the first and second members or side plates 14, 16 to the center plate or carriage 12, including circumferential straps, bolts, magnets, ties, quick releases, snap locks, or any combination thereof and/or any other suitable means”).
Regarding claim 4, which depends on claim 1, as best understood,
Neither Krautkraemer nor Dingman teach that the device is molded in a template before being positioned in the pipeline.
However, the claim limitation “molded in a template before being positioned in the pipeline” as best understood appears to either be drawn to a process of manufacturing the claimed apparatus or to a manner of using the apparatus. It is well established that a claimed apparatus cannot be distinguished over the prior art by a process limitation. Consequently, absent a showing of an unobvious difference between the claimed product and the prior art, the subject product-by-process claim limitation has been considered, but is not patentably distinct (see MPEP § 2113). Alternatively, the claim limitation pertaining to a 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. See MPEP § 2144(II) and Ex parte Masham, 2 USPQ2d - 164 7 (1987).
With respect to molding the device as a manufacturing limitation, the Examiner take Official Notice that it is conventional to form components of a sensing device such as a housing by means of molding. Krautkraemer teaches a housing made of acrylic plastic ([0029]), and it is the Examiner’ position that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form said acrylic plastic housing by conventional manners such as molding in a template, such molding being a common and efficient method for mass-producing parts in desired shapes.
With respect to utilizing the device by first molding the device around a template before further use, the Examiner notes that a broad and reasonable interpretation would include the commonsensical reuse of the device fitted (a broad and reasonable interpretation of molded) to a first pipeline on a second pipeline in the same shape, and it is the Examiner’s position that It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to so not change the shape of the device between pipelines of the same shape thereby saving on time and costs to reconfigure.
Regarding claim 5, which depends on claim 4,
Each of Krautkraemer and Dingman teach characterized in that the device has locking elements (Krautkraemer: [0014] “lock the joint connections described above by means of an additional mechanical measure, for example a locking pin”; [0025] “projection 28 and the receiving part 30 can be interlocked”; and [0028] “locking mechanisms”. Dingman: [0025] “snap locks”).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over newly cited Krautkraemer in view of newly cited Dingman and in further view of newly cited Higo et al (US 5280724 A; hereafter “Higo”).
Regarding claim 2, which depends on claim 1,
each of Krautkraemer and Dingman do not teach that a spring is also installed in each housing of the plurality of housings.
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Higo teaches a spring (54) installed in an ultrasonic sensor housing (fig. 1, 52) (Title “Ultrasonic Inspection Method For Detecting Defects In Solid Objects”; Abstract; see Description of the Prior Art; it is the Examiner's position that such springs for biasing an ultrasonic sensor are conventional and well-known in the art).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Higo’s conventional biasing spring & ultrasonic sensor design with each of Krautkraemer’s ultrasonic sensor housing for the expected and conventional purpose of biasing an ultrasonic sensor to be in contact with the pipe for inspection thereof. The Examiner further notes with respect to Krautkraemer’s particular sensor that “The design of the probe head 22 is arbitrary” and “Any other possibility of a probe head with one or more piezoelectric elements is possible; the invention is not limited to the design of the probe head itself” ([0024]). In the present case, the Examiner notes that a direct contact sensor design would be commonsensically advantageous for increasing signal while decreasing noise and the spring being further beneficial for maintaining contact even when there are disturbances and/or deviations in the surface of the pipe.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Examiner interviews are available via telephone 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID L SINGER whose telephone number is 303-297-4317. The Examiner can normally be reached Monday - Friday 8:00 am - 6:00pm CT, EXCEPT alternating Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, John Breene can be reached on 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L SINGER/Primary Examiner, Art Unit 2855 07FEB2026