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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03 June 2026 has been entered.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 - 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Jensen (US 6,691,727) in view of Willis (US 2002/0006314).
Regarding claim 1, Jensen discloses a device for separating multiple metal pipes through a common borehole, the device comprising: a first electrically insulating element (one of the halves 22 of collar 20, the collar being made of high strength plastics) having an inner arc of less than 180 degrees (Col. 2, lines 38 - 40 of Jensen teaches the collar is made of at least two separable sections and if the collar is composed of more than two sections each section would obviously have an inner arc of less than 180 degrees.), a first straight-tapered end, a second straight-tapered end, and an inner surface; a second electrically insulating element (the other of the halves 22) having an inner arc equivalent to the inner arc of the first electrically insulating element, a first straight-tapered end, a second straight- tapered end, and an inner surface; wherein the first and second electrically insulating elements are positioned radially-opposite each other on a pipe (10) having an outer surface, and wherein the first and second electrically insulated elements are positioned on the outer surface of the pipe such that there is at least one gap (unlabeled space between arcuate segments of wall 28 of each section 22 in which pipe 10 is positioned; see Fig. 4) between the first and second electrically insulating elements (22); a means for positioning (fasteners 44) the first and second elements on the pipe at ambient temperature with an axial length terminating between the straight-tapered-ends when the elements are under radial pressure (radial pressure applied by the tightening of fasteners 44 between flanges 40 of adjacent sections 22) and confined in axial movement by at least one channel (curved inner surface of each section 22) further comprising at least one shoulder (flanges 40) of each of the first and second elements (Figs. 1 - 4; col. 2, lines 38 - 40; col. 3, line 11 - col. 5, line 23). Jensen fails to disclose a bonding agent applied to the inner surface of the first electrically insulating element and to the inner surface of the second electrically insulating element. Willis teaches a bonding agent (adhesive) applied to the inner surface of a first element (collar segments 300 or clamps 304) and to the inner surface of the second element (collar segments 300 or clamps 304) (Figs. 3 and 4; paragraphs 0011, 0012, 0023, and 0026) to fixedly secure the collar segment to a conduit. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the adhesive applied to the inner surfaces of the first and second elements as taught by Willis to prevent the first and second electrically insulating elements from moving relative to the pipe.
Regarding claim 2, Jensen in view of Willis discloses all of the claim limitation(s) except said at least one shoulder of said at least one channel of each of said first and said second elements comprises 90 degrees. Jensen teaches the collar (20) is made of at least two separable sections (22) having identical shapes and sizes (Figs. 3 and 4; col. 2, lines 38 - 40), which would include the case where the collar is made of four sections as associated shoulders, and a collar composed of four sections and associated shoulders (40) would comprise 90 degrees. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the shape of the shoulders as disclosed above with the 90 degree shoulder as taught by Jensen as a design consideration within the skill of the art to make the collar easier to transport and manipulate due to a decreased size and shape. A change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 3, Jensen in view of Willis discloses all of the claim limitation(s) except said at least one shoulder of said at least one channel of each of said first and said second elements comprises 45 degrees. Jensen teaches the collar (20) is made of at least two separable sections (22) having identical shapes and sizes (Figs. 3 and 4; col. 2, lines 38 - 40), which would include the case where the collar is made of eight sections as associated shoulders, and a collar composed of eight sections and associated shoulders (40) would comprise 45 degrees. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the shape of the shoulders as disclosed above with the 45 degree shoulder as taught by Jensen as a design consideration within the skill of the art to make the collar easier to transport and manipulate due to a decreased size and shape. A change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 4, Jensen further discloses said means for positioning the first and second elements (22) on the pipe (10) comprises radial pressure applicators (fasteners 44; holes 42) (Fig. 3; col. 5, lines 14 - 22).
Regarding claim 6, Jensen fails to disclose said bonding agent is applied to substantially all of the inner surface of at least one of said first and second elements. Willis teaches said bonding agent (adhesive) is applied to the inner surface of at least one of said first and second elements (300, 304) and to the inner surface of the second element (300, 304) (Figs. 3 and 4; paragraphs 0011, 0012, 0023, and 0026) to fixedly secure the collar segment to a conduit. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the adhesive applied to the inner surfaces of the first and second elements as taught by Willis to prevent the first and second electrically insulating elements from moving relative to the pipe. Willis fails to explicitly teach the bonding agent is applied to substantially all of the inner surface. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above such that the bonding agent is applied to substantially all of an inner surface of at least one of said first and second elements to ensure a secure connection between the at least one of said first and second elements and the pipe by maximizing the contact surface between the bonding agent attached to the inner surface of at least one of said first and second elements and the pipe.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jensen in view of Willis as applied to claim 4 above, and further in view of Brooks et al. (US 2013/0186502). Jensen in view of Willis fails to disclose said radial pressure applicators comprise binding strips holding the first and second elements against the pipe as the bonding agent cures to the pipe surface. Brooks teaches said radial pressure applicators comprise binding strips (straps 22) holding a first element (sleeve 26) against the pipe (24) as the bonding agent (adhesive 28) cures to the pipe surface (Figs. 1 and 3; paragraph 0017). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified radial pressure applicators holding each of the first and second elements as disclosed above with the binding strips as taught by Brooks to provide pressure applicators that can apply a variable amount of pressure and can be removed for use at other locations. The substitution of one known element (binding strips) for another (fasteners) would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Burke et al. (US 2,039,387) in view of Jensen and Willis.
Regarding claim 7, Burke discloses a set of multiple pipes (conduits 10) residing in a common borehole, the bundle comprising: a first pipe (conduit 10); and a second pipe (10) located parallel with the first pipe (Figs. 1 - 3; page 1, col. 1, line 4 - page 1, col. 2, line 30). Examiner notes that Burke teaches laying a bundle of multiple pipes underground and the multiple pipes in a bundle would obviously be positioned in a common borehole. Burke fails to disclose a spacer between the first metal pipe and the second metal pipe; wherein the spacer comprises: a first electrically insulating element having an inner arc of less than 180 degrees, a first straight-tapered end, a second straight-tapered end, and an inner surface; a second electrically insulating element having an inner arc equivalent to the inner arc of the first electrically insulating element, a first straight-tapered end, a second straight-tapered end, and an inner surface; wherein the first and second electrically insulating elements are positioned radially- opposite each other on at least one of the first metal pipe or the second metal pipe, each of the first and second metal pipes having an outer surface, and wherein the first and second electrically insulated elements are positioned on the outer surface of the at least one of the first metal pipe or the second metal pipe such that there is at least one gap between the first and second electrically insulating elements; a bonding agent applied to the inner surface of the first electrically insulating element and to the inner surface of the second electrically insulating element; a means for positioning the first and second elements on the at least one of the first metal pipe or the second metal pipe at ambient temperature with an axial length terminating between the straight-tapered-ends when the elements are under radial pressure and confined in axial movement by at least one channel further comprising at least one shoulder of each of the first and second elements. Jensen teaches a spacer comprises: a first electrically insulating element (one of the halves 22 of collar 20, the collar being made of high strength plastics) having an inner arc of less than 180 degrees (col. 2, lines 38 - 40 of Jensen teaches the collar is made of at least two separable sections and if the collar is composed of more than two sections each section would obviously have an inner arc of less than 180 degrees.), a first straight-tapered end, a second straight-tapered end, and an inner surface; a second electrically insulating element (the other of the halves 22) having an inner arc equivalent to the inner arc of the first electrically insulating element, a first straight-tapered end, a second straight-tapered end, and an inner surface; wherein the first and second electrically insulating elements are positioned radially-opposite each other on at least one of the first pipe or the second pipe (10), each of the first and second metal pipes having an outer surface, and wherein the first and second electrically insulated elements are positioned on the outer surface of the at least one of the first pipe or the second pipe (10) such that there is at least one gap (unlabeled space between arcuate segments of wall 28 of each section 22 in which pipe 10 is positioned; see Fig. 4) between the first and second electrically insulating elements; a means for positioning (fasteners 44) the first and second elements on the at least one of the first pipe or the second pipe at ambient temperature with an axial length terminating between the straight-tapered-ends when the elements are under radial pressure and confined in axial movement by at least one channel (curved inner surface of each half 22) further comprising at least one shoulder (flanges 40) of each of the first and second elements (Figs. 1 - 4; col. 2, lines 38 - 40; col. 3, line 11 - col. 5, line 23). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the spacer as taught by Jensen to hold protective sleeves on the pipes and to prevent damage to the pipe caused by excavating equipment. Jensen fails to disclose the first pipe and the second pipe are each made of metal; and a bonding agent applied to the inner surface of the first electrically insulating element and to the inner surface of the second electrically insulating element. Willis teaches a pipe comprising metal (steel); and a bonding agent (adhesive) applied to the inner surface of a first element (collar segments 300 or clamps 304) and to the inner surface of the second element (collar segments 300 or clamps 304) (Figs. 3 and 4; paragraphs 0011, 0012, 0020, 0023, and 0026) to fixedly secure the collar segment to a conduit. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the apparatus as disclosed above with the adhesive applied to the inner surfaces of the first and second elements as taught by Willis to prevent the first and second electrically insulating elements from moving relative to the pipe. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have made the first pipe and the second pipe of metal, since 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. In re Leshin, 125 USPQ 416.
Regarding claim 8, Burke further discloses a bundle of pipes (10) positioned beside each other (Figs. 1 - 4).
Allowable Subject Matter
Claims 10 - 12 are allowed.
Response to Arguments
Applicant's arguments filed 03 June 2026 have been fully considered but they are not persuasive.
Applicant argues that Jensen fails to teach a gap because the halves 22 of the protective collar are joined to create a seam. Examiner replies that the claims do not specify where the gap is to be formed on the device. Examiner takes the position that the unlabeled space between arcuate segments of wall 28 of each section 22 in which pipe 10 is positioned forms a gap into which the pipe is positioned (Fig. 4).
Applicant argues that neither Jensen nor Willis teaches at least one channel to confine axial movement. Examiner replies that Jensen teaches a channel (curved inner surface of each section 22) comprising a shoulder (40), wherein fasteners (44) connect the shoulders 40 of adjacent sections 22, thereby preventing relative axial movement between the adjacent sections 22. Additionally, Examiner takes the position that the shoulders on adjacent sections are brought into contact with each other to form a seam between adjacent sections and to form an abutting connection between the inner walls of the sections and the pipe (see Fig. 4), thereby confining axial movement.
Applicant argues that Jensen fails to teach said at least one shoulder of said at least one channel each of said first and second elements comprises 90 degrees. Examiner replies that Jensen teaches the collar (20) is made of at least two separable sections (22) having identical shapes and sizes (Figs. 3 and 4; col. 2, lines 38 - 40), which would include the case where the collar is made of four sections as associated shoulders, and a collar composed of four sections and associated shoulders (40) would comprise 90 degrees. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the shape of the shoulders as disclosed above with the 90 degree shoulder as taught by Jensen as a design consideration within the skill of the art to make the collar easier to transport and manipulate due to a decreased size and shape. A change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Applicant argues that the shoulder as taught by Jensen is clearly not at 90 degrees because the shoulder as taught by Jensen is parallel to the pipe while the shoulder of the claimed invention is perpendicular to the pipe when it is 90 degrees or 45 degrees. Examiner replies that the claims do not specify the two objects between which the 90 degree angle or the 45 degree angle is formed or that the shoulder is perpendicular to the pipe. Therefore, Examiner takes the position that the shoulders (40) as taught by Jensen and discussed above read on the aforementioned claim limitation.
Applicant argues that Burke does not teach a spacer and Jensen in view of Willis does nothing to remedy this deficiency. Examiner replies that the spacer recited in claim 7 comprises the same structural limitations as the device recited in claim 1 and since Jensen in view of Willis discloses the device as recited in claim 1 (see rejection of claim 1 above), Jensen in view of Willis teaches a spacer as recited in claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
7/21/2026
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