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 .
Response to Amendment
This Action is in response to Applicant’s Reply of June 25, 2026.
Applicant’s amendment to claim 20 overcomes the 35 USC 112(b) rejection first listed in the previous Office Action.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
With respect to the 35 USC 112(b) rejection of claim 1, Applicant has argued the following:
“MPEP 2173.05(e) states that "the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite." (citing Exparte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992)).”
The issue at hand with both the double inclusion of “an end portion” and the lack of clarity of if “RTP body” is part of the “RTP” is not one of antecedent basis. All of the limitations involved are positively recited. The problem arises in that the positive recitation of an element indicates that it is a new element in the claim and when a claim includes multiple positive recitations of the same element, it is unclear if the intention is for there to be multiple of that element or if the claim is truly only requiring one of the element and then further limiting it. See MPEP 2173.05(o).
As such, and with respect to “an end portion” in both the preamble and the body of the claim, claim 1 technically requires two end portions. The issue arises in that the claim does not provide any indication as to their relationship to each other and thus it is unclear if the claim was intended to have two end portions or if, instead, the claim is only referring to one end portion and the second recitation should be --the end portion instead--. The use of “the” or “said” indicates that the element be referred to was previously recited in the claim and that the instant limitation is further limiting it.
Regarding the lack of clarity of if “RTP body” is part of the “RTP”, while the RTP recited in the preamble does naturally have various parts, the claim must be clear that any elements or parts listed in the body of the claim are part of the RTP of the preamble not part of a random RTP. As claim 1 is currently written, the body of the claim could be referring to an RTP that is separate from that in the preamble. There is no language in the claim that requires it to be the same element or of the same element. It is suggested that line 3 of claim 1 be amended to recite “providing the end portion of a segment of RTP body of the RTP”.
MPEP 2173.02(I) states “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.”
“Applicant submits that the meaning of Claim 1 would be reasonably ascertainable by those skilled in the art. MPEP 2173.02 states that "[a] decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350, 94 USPQ2d 1241, 1245 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986)." Applicant submits that one of ordinary skill in the art would understand that an RTP is an assembly of a portion (also referred to as a segment) of RTP body and one or more end fittings or splice couplings in view of at least page 10, lines 30-32 or page 14, lines 30- 31 of the specification as originally filed. For example, one of ordinary skill in the art would understand that the method claimed in Claim 1 involves opposing collapse at an end region of the segment of RTP body thus recited, thereby achieving supporting an end region of an RTP body as recited in the preamble.”
While a claim is read in light of the specification, the specification cannot be used to insert limitations into a claim, only to provide clarity or definition. The instant disclosure does indicate that the RTP is composed of a RTP body and one or more end fittings. The issue with the language of claim 1 is that it is unclear if the claim is requiring one end fitting/portion or more than one end fitting/portion as the “end portion” is positively recited twice in the claim. See MPEP 2173.05(o). Further, the disclosure in the instant specification that an RTP includes an RTP body does not clarify that the RTP body that is positively recited in claim 1 is part of the RTP in the preamble. Without a correlation between the RTP and the RTP body, the claim could be reasonably interpreted as the RTP body being part of a different pipe or system. When a claim can be interpreted in multiple different ways, it is proper to reject that claim under 35 USC 112(b). See MPEP 2173.02(I).
“Applicant further submits that recitations of features in the claim preamble do not necessarily provide antecedent basis for claim limitations and thus it is entirely proper that the end region should be introduced with an indefinite article beyond the preamble. See e.g., MPEP 2111.02(11) (stating "[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)). The body of Claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble is only used to state an intended use of the invention. Accordingly, the claim features do not need to rely on the preamble for antecedent basis.”
MPEP 2111.02(I) indicates that “preamble language that constitutes a structural limitation is actually part of the claimed invention”. As the “end portion” in the preamble of claim 1 is structural, it would be considered part of the claimed invention. As such, the recitation of “an end portion” in the body of the claim causes confusion as to if the end portion of the preamble is being further limited or if a new end portion is being introduced. Per MPEP 217.02(I) and 2173.05(o) this would render the claim indefinite.
With respect to the 35 USC 112(b) rejection of claim 12, Applicant has argued the following:
“Regarding "effective." Applicant submits that one of ordinary skill in the art would understand the term "effective rigidity" as merely giving a name to the rigidity offered by any specific collapse resistant body. For example, Claim 12 introduces the claim term "effective rigidity" for the rigidity that is experienced by other bodies interacting with the collapse resistant body, or the rigidity offered by the collapse resistant body. Further, Claim 12 recites characteristics for the effective rigidity. For example, Claim 12 recites "at least 50 on the Rockwell R scale and the collapse resistant body has a radial compression resistance at least able to withstand a radial clamping force sufficient for a resulting friction force on a test piece to resist a tension force of 70kN (kilo newtons) applied along a longitudinal axis of the test piece." Thus, one of ordinary skill in the art would understand that the collapse resistant body presents a particular rigidity for the body.”
The term “effective” was used two different times in claim 12; one with “rigidity” and one with “hardness”. The “effective hardness” is defined in the claim with a specific value and thus was not rejected as rendering the claim indefinite. The phrase “effective rigidity”, however, has not been defined in the specification or claims. Nor has the instant disclosure made any correlation between the rigidity and hardness as implied above. Without a quantitative or qualitative definition, it is not possible for one of ordinary skill in the art to ascertain the meets and bounds of the phrase “effective rigidity”. There is no indication as to how flexible or rigid the RTP body needs to be, or can be, to be considered effectively rigid. The term “effective” would be considered a relative term or term of degree and, per MPEP 2173.05(b)(I), terms of degree “were held to be indefinite because the specification lacked some standard for measuring the degrees intended.” The phrase “effective hardness” is not considered indefinite because a “claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree).”
With respect to the 35 USC 112(b) rejection of claim 20, Applicant’s arguments have been addressed with the rebuttals above.
Applicant’s arguments with respect to claim 12 have been fully considered and are persuasive. The 35 USC 112(b) rejection of claim 12 listed second in the previous Office Action has been withdrawn.
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.
Claims 1-20 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 claim 1: The preamble of claim 1 requires “supporting an end portion of a reinforced thermoplastic pipe (RTP)” and line 2 also requires “an end portion”. It is unclear if these are the same end portion or separate elements. For the purpose of examination, the two recitations of “end portion” are being treated as the same element.
Line 2 also requires “a segment of RTP body”. There is no correlation between the RTP body and the RTP recited in the preamble. Is the RTP body a part of the RTP of the preamble? While it is assumed that they are the same element, the wording of the claim makes it unclear if that is so as the “RTP body” has not been correlated to the RTP in the preamble. Further, it is unclear if the “RTP body” is a segment of the RTP from the preamble or vice versa. Correction is required.
Regarding claims 3-11: These claims are considered indefinite due to their dependence on claim 1.
Regarding claim 12: The term “effective” in line 7 is a relative term which renders the claim indefinite. The term “effective” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how rigid the collapse resistant body needs to be to be considered to have “effective rigidity”.
Regarding claims 13-19: These claims are considered indefinite due to their dependence on claim 12.
Regarding claim 20: The preamble of claim 1 requires “supporting an end portion of a reinforced thermoplastic pipe (RTP)” and line 2 requires “a segment of RTP body”. There is no correlation between the RTP body and the RTP recited in the preamble. Is the RTP body a part of the RTP of the preamble? While it is assumed that they are the same element, the wording of the claim makes it unclear if that is so as the “RTP body” has not been correlated to the RTP in the preamble. Further, it is unclear if the “RTP body” is a segment of the RTP from the preamble or vice versa. Correction is required.
The term “effective” in line 8 is a relative term which renders the claim indefinite. The term “effective” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how rigid the collapse resistant body needs to be to be considered to have “effective rigidity”.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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 JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
7/13/2026
Prosecution Insights