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
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 6 of claim 1, “the the first electrically insulating element” should be changed to “the first electrically insulating element”.
Appropriate correction is required.
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 2, 3, 7, 8, and 11 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 2, the limitation “said at least one channel each of said first and second elements” as recited in line 2 is confusing. For purposes of examination, the aforementioned limitation has been interpreted as “said at least one channel of each of said first and second elements” as best understood by Examiner.
Regarding claim 3, the limitation “said at least one channel each of said first and second elements” as recited in line 2 is confusing. For purposes of examination, the aforementioned limitation has been interpreted as “said at least one channel of each of said first and second elements” as best understood by Examiner.
Claim 7 recites the limitation "the pipe" in line 15. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the aforementioned limitation refers to the first metal pipe, the second metal pipe, or “a pipe” as recited in line 13.
Claim 7 recites the limitation "the pipe" in line 19. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to which of the pipes that are previously recited in claim 7 the aforementioned limitation is referring.
Regarding claim 11, it is unclear if the “bumper elements” recited in line 3 includes the “bumper element” as recited in claim 10, from which claim 11 depends, or if they represent additional structural elements.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 (gap 32) between the first and second electrically insulating elements; 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 and confined in axial movement by at least one channel (curved inner surface of each half 22) further comprising at least one shoulder (center region 26 having an enlarged diameter) 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 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 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 a pipe 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 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 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 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 (10) such that there is at least one gap (gap 32) between the first and second electrically insulating elements; 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 and confined in axial movement by at least one channel (curved inner surface of each half 22) further comprising at least one shoulder (center region 26 having an enlarged diameter) 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 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 8, Burke further discloses a bundle of pipes (10) positioned beside each other (Figs. 1 - 4).
Allowable Subject Matter
Claims 10 and 12 are allowed.
Claim 11 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 1 - 8 and 11 have been considered but are moot in view of new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
12/3/2025