DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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.
Drawing Objections
Fig. 1A-1C of the drawings filed 18 March 2024 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated (see ¶ 43 of the specification). See MPEP § 608.02(g). Corrected drawings in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office Action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 C.F.R. § 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 Objections
Claims 3 are objected to because of the following informalities.
In re claim 3: “the opposite” should be –an opposite–
In re claim 8: “the end” in each of lines 6 and 9 should be –the one end–
In re claim 13: “slot positioned” should be –slot is positioned–.
In re claim 15: “the end” in line 2 should be –an end–.
In re claim 19: “the tapered” in line 4 should be –a tapered–
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 112(a)
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.
Claim 14 is rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; any claims not directly addressed are only rejected under 35 U.S.C. § 112(a) for being dependent on a rejected base claim. The claim 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 had possession of the claimed invention.
In re claim 14, which depends on claim 8: the claim recites “internal taper of said flexible cone is slidable along an external taper of said rigid cone.” Note that the claim is directed to the species of fig. 5 of the applicant’s drawings. And claim 8 is not generic since it requires “said rigid cone having a tapered outer diameter that reduces from one end of the rigid cone toward an opposite end of said rigid cone”. However, the rigid cone 104 of the species of fig. 5 has tapered portions that only increase from each outer end toward the opposite end. The specification contains no written description of an embodiment containing the features of the combination of claims 8 and 14. Therefore, the claim raises a question as to whether the inventor had possession of the invention of the combination of claims 8 and 14. Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
In re claim 1-20: the terms “rigid” and “flexible” are subjective and/or relative terms that render the claims indefinite since metes and bounds for the terms have not been set established.
In re claim 8: it is unclear what structure “an application of force” in line 11 is being applied to; and the term “minimal” in line 11 is a subjective and/or relative term that renders the claim indefinite since metes and bounds for the term have not been set established.
In re claim 9: it is unclear if the “slot” is the same as or additional to the “single slot” of claim 8.
In re claim 11: the scope of “generally matching” is unclear since generally can mean “sometimes” or “usually”. The examiner suggests replacing “generally” with –substantially–.
In re claim 18: the claim recites “the extended position bearing …” The extended position of what structure bears against an end of the flexible cone? It is being interpreted to be an end of the actuator that bears against it when the actuator is in the extended position.
In re claim 19: there is no antecedent basis in the claim for “the outer diameter” and “the outer wall”.
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. § 102 that forms 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 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Geyer (US 2,459,808).
In re claim 1: Geyer discloses a cone assembly for use in expanding the diameter of a pipe (fig. 1-2), the cone assembly comprising:
a rigid cone 16 capable of being positioned adjacent to an end of the pipe (fig. 2);
a flexible cone 19 positioned adjacent an end of said rigid cone 16 (fig. 1), said flexible cone movable between an expanded diameter (fig. 2) and a reduced diameter (fig. 1), said flexible cone having an internal taper (which cooperates with conical surface 15), the flexible cone 19 comprising a ring with a continuous wall having a single slot therethrough (fig. 1); and
an actuator 12 having an end in contact with said flexible cone (fig. 1-2), said actuator movable between an extended position (fig. 2) and a retracted position (before the cone assembly is inserted into the pipe 22), the extended position adapted to cause said rigid cone 19 to expand a diameter of the pipe 22 and to cause said flexible cone 19 to have the expanded diameter (see fig. 2), the retracted position of said actuator 12 removing or releasing a force applied to said flexible cone 19 so as to cause said flexible cone to have the reduced diameter (see fig. 1).
Claim Rejections - 35 U.S.C. § 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.
Claims 1-7 are rejected under 35 U.S.C. § 103 as being unpatentable over Hazelip (US 2012/0222868), in view of Geyer.
In re claim 1: Hazelip discloses a cone assembly (fig. 3-5) for use in expanding the diameter of a pipe, the cone assembly comprising:
a rigid cone 206 capable of being positioned adjacent to an end of the pipe (fig. 3);
a flexible cone 204 positioned adjacent an end of said rigid cone 206, said flexible cone movable between an expanded diameter and a reduced diameter (compare fig. 3-4), said flexible cone having an internal taper (which cooperates with conical surface 220), the flexible cone comprising a ring with a continuous wall having multiple slots therethrough (fig. 5); and
an actuator (the portion of 202 in direct contact with flexible cone 204) having an end in contact with said flexible cone (fig. 3-4), said actuator movable between an extended position and a retracted position (compare fig. 3-4), the extended position adapted to cause said rigid cone to expand a diameter of the pipe 102 (see fig. 2E; note that the cone assemblies in fig. 2E and 3 are identical) and to cause said flexible cone to have the expanded diameter, the retracted position of said actuator removing or releasing a force applied to said flexible cone so as to cause said flexible cone to have the reduced diameter (see fig. 3-4).
Hazelip does not explicitly disclose the flexible cone has a single slot therethrough. However, Hazelip does further disclose that even though flexible cone 204 is depicted as having sixteen radially shiftable segments 238 (fig. 5), it should be understood by those skilled in the art that flexible cones of the present invention could have other numbers of radially shiftable segments both greater than and less than sixteen without departing from the principle of the present invention (¶ 44).
Geyer is in the same field of endeavor and teaches a flexible ring 19 comprising an internal taper (which cooperates with conical surface 15) and a continuous wall having a single slot 20 therethrough (fig. 1-2), and the flexible ring is the functional equivalent of the flexible cone of Hazelip. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Hazelip such that the flexible cone has a single slot therethrough, as taught by Geyer, thereby reducing the complexity of the flexible cone of Hazelip and, in turn, reducing the associated manufacturing costs; and because it has been held that applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
In re claim 2, which depends on claim 1: modified Hazelip teaches the slot 20 of the flexible cone 19 extending longitudinally through the wall of said flexible cone 19, the slot 20 widening in the expanded diameter of said flexible cone 19, the slot 20 narrowing in the reduced diameter of said flexible cone 19 (fig. 1-2 and col. 2, ln. 6-24 of Geyer).
In re claim 3, which depends on claim 1: Hazelip discloses said actuator (the portion of 202 in direct contact with flexible cone 204) comprising a piston having an end 216 bearing adjacent an opposite end of said flexible cone 204 when said flexible cone has the expanded diameter (fig. 3).
In re claim 4, which depends on claim 1: modified Hazelip teaches said slot 20 positioned at an angle with respect to a center axis of the flexible cone 19 (fig. 1 of Geyer).
In re claim 5, which depends on claim 1: Hazelip discloses the end of said actuator (the portion of 202 in direct contact with flexible cone 204) having a tapered outer diameter 220 that corresponds to the internal taper of said flexible cone (see fig. 3-4).
In re claims 6 and 7, which depends on claims 5 and 1: Hazelip discloses the tapered outer diameter of said actuator (the portion of 202 in direct contact with flexible cone 204) is slidable along the internal taper of said flexible cone 204 (see fig. 3-4).
Claims 8-13 and 15-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Geyer, in view of Hazelip.
In re claims 8 and 15: Geyer discloses an assembly and method for expanding the diameter of a pipe comprising:
a pipe 22 having an end and an inner diameter (fig. 2);
a rigid cone 16 positioned adjacent the end of the pipe (before being inserted into the pipe it is adjacent the end), said rigid cone having a tapered outer diameter that reduces from one end of the rigid cone 16 toward an opposite end of said rigid cone (fig. 1-2), the opposite end of said rigid cone having an outer diameter less than an inner diameter of the end of said pipe;
a flexible cone comprising a ring 19 with a continuous wall having a single slot 20 therethrough (fig. 1), the flexible cone 19 having an end at the end of said rigid cone 16 and an opposite end, said flexible cone 19 having a tapered inner diameter (which cooperates with conical surface 15), said flexible cone 19 having an expanded diameter upon an application of force (fig. 2) and a reduced diameter when no force or a minimal force is applied to said flexible cone 19 (fig. 1); and
an actuator 12 having an end 14 facing the opposite end of said flexible cone 19 (fig. 1-2), the end 14 of said actuator 12 being in contact with the flexible cone 19, said actuator movable between an extended position (fig. 2) and a retracted position (before the cone assembly is inserted into the pipe), the extended position causing the flexible cone 19 to have the expanded diameter and to urge said flexible cone 19 to expand the diameter of said pipe 22 (fig. 2), the retracted position allowing said flexible cone 19 and said rigid cone 16 to be removed from the inner diameter at the end of said pipe 22 (fig. 1-2, after the expansion process, the cone assembly is retracted/removed from the end of the pipe so the pipe can be used).
Geyer does not disclose the end of said rigid cone having an outer diameter greater than the inner diameter of the end of said pipe such that the rigid cone assists in expanding the diameter of the pipe.
In the same field of endeavor, Hazelip teaches a rigid cone 156 and a flexible cone 154, wherein the rigid cone 156 has an outer diameter greater than the inner diameter of a pipe 102 to be expanded such that the rigid cone 156 assists in expanding the pipe 102 (fig. 2E). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Geyer in the claimed manner, as taught by Hazelip, because selecting from known shapes and sizes of rigid cones allowing for sufficient functionality would be obvious to the ordinary artisan.
In re claim 9, which depends on claim 8: Geyer discloses the slot 20 extends axially through the wall of said flexible cone 19 from the end of said flexible cone to the opposite end of said flexible cone (fig. 1-2).
In re claim 10, which depends on claim 8: Geyer discloses the reduced diameter of said flexible cone 19 is less than the inner diameter of said pipe 22 when the actuator 12 is in the retracted position after the pipe 22 has been expanded (see fig. 2).
In re claim 11, which depends on claim 8: Geyer discloses the actuator 12 has a tapered outer diameter 15 at an end thereof, the tapered outer diameter 15 of said actuator 12 matching the tapered inner diameter of said flexible cone (see fig. 1-2).
In re claim 12, which depends on claim 11: Geyer discloses the tapered outer diameter 15 of said actuator 12 is slidable with respect to the tapered inner diameter of said flexible cone 19 as said actuator 12 moves between the extended position and the retracted position (fig. 1-2).
In re claim 13, which depends on claim 8: Geyer discloses said slot is positioned at an angle with respect to a center axis of the flexible cone.
In re claim 16, which depends on claim 15: modified Geyer teaches the rigid cone 16 has a tapered outer diameter (fig. 1-2 of Geyer), the tapered outer diameter having a large diameter 230 greater than an inner diameter of the end of the pipe 106 prior to the step of expanding the outer diameter of the pipe and a small diameter 206 less than the inner diameter of the end of the pipe 106 prior to the step of expanding the outer diameter of the pipe (see fig. 2E, 3 of Hazelip).
In re claim 17, which depends on claim 16: modified Geyer teaches the large diameter 230 of the rigid cone is less than an inner diameter of the end of the pipe 106 following the steps of expanding the outer diameter of the pipe (see fig. 2E, 3 of Hazelip).
In re claim 18, which depends on claim 15: Geyer discloses the step of applying the force comprises actuating an actuator 12 so as to move from a retracted position (outside of the pipe 22) to an extended position (fig. 2), and an end 14 of the actuator 12 bears against an end of the flexible cone 19 in the extended position (fig. 2).
In re claim 19, which depends on claim 18: Geyer discloses the step of expanding the diameter of the flexible cone comprising sliding a tapered surface 15 of the actuator 12 along the tapered inner diameter of the flexible cone 19 such that the slot 20 formed in the outer wall of the flexible cone widens (fig. 1-2).
In re claim 20, which depends on claim 18: modified Geyer does not explicitly teach the step of removing comprises: retracting the actuator so as to pull the rigid cone and the flexible cone from the end of the pipe; and retrieving the flexible cone and the rigid cone to a remote location.
However, Geyer discloses the actuator 12 is a tool shank mounted and retained in the hammer end of a pneumatic hammer 11 or other power device (col. 1, ln. 27-37). Therefore, the obvious inference from Geyer is that the retraction of the actuator 12 pulls the rigid and flexible cones from the end of the pipe so they, along with the power device, can be put away and stored for future use.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Roggeband et al. (US 2008/0223568), Johnson (US 2012/0036913), and Li et al. (US 2014/0110136) all teach various features of at least claims 8 and 14 (see at least the figures)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725