DETAILED ACTION
Election/Restrictions
Newly submitted claims 10 – 20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Inventions I (originally submitted claims 1 – 9) and II (newly submitted claims 10 – 20) are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design. The inventions are also mutually exclusive. This is because the product of Invention I comprises: a magnet arranged in a laterally displaced position in relation to a lower portion, wherein the sealing ring positioning device is configured to install a sealing ring on a flange of a pipeline, which is not required by the product of Invention II. Likewise, the product of Invention II comprises: a middle portion comprising a first member extending from an outer edge of a lower portion in a direction substantially coplanar with the lower portion, a second member extending from the first member in a direction substantially orthogonal to the lower portion and the first member, wherein the second member comprises a magnet; and an upper portion comprising a handle with a T-shape extending from the second member, which is not required by the product of Invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 10 – 20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 – 9 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.
Claim 1 recites the limitations “substantially coplanar” and “substantially orthogonal.” Examiner notes that “substantially” is a term of degree which is not expressly defined by the Specification. Therefore, the metes and bounds of the limitations are indefinite.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boulet (U.S. Patent Application Publication Number 2020/0278068).
As to claim 1, Boulet teaches a sealing ring positioning device (abstract), comprising a lower portion having a semicircle shape (figure 1, elements 12, 15, 18, 65, and left portion of upper bar being the ‘lower portion’ and element 12 being the ‘semicircle shape’; paragraph 17). Examiner notes that “having” is commonly defined by Merriam-Webster’s Dictionary as “to contain as part or whole.” Because the lower portion ‘contains in part’ a semicircular shape (figure 1, element 12), Boulet teaches the lower portion “having” a semicircular shape.
PNG
media_image1.png
661
897
media_image1.png
Greyscale
Boulet further teaches a middle portion having a first section projecting from an outer edge of the lower portion that is coplanar with the lower portion and a second section connected to the first section and arranged orthogonal to the lower portion (figure 1, elements 14, 16, 20, 28, 29, 30, 32, 34, 36, 40, and the right and middle part of the upper bar being the ‘middle portion,’ the right and middle part of the upper bar being the ‘first section’ and element 20 being the ‘second section,’ see above; paragraphs 17 – 19). Examiner notes that ‘first section’ is “coplanar” with the ‘lower portion’ because ‘first section’ of the middle portion (right and middle parts of the upper bar; figure 1, see above) extends directly from the left part of the upper bar (figure 1, see above). Furthermore, the second section is orthogonal to the lower portion because Boulet clearly teaches the second section (figure 1, element 20) being positioned such that it is orthogonal to the semicircle of the lower portion (figure 1, element 12). Boulet further teaches that the middle portion comprises a magnet (figure 3, element 50 being the ‘magnet’ and element 20; paragraph 24), the magnet arranged in a laterally displaced position in relation to the lower portion (figures 1 and 3, elements 5, 12, 15, 18, and 65), wherein the sealing ring positioning device is configured to install a sealing ring on a flange of a pipeline. Examiner notes that this can be found because Boulet expressly teaches the sealing ring positioning device being configured to install or remove a section of pipe onto a pipeline (figure 1, element 60 being the ‘pipe’; paragraphs 1 – 2 and 17). It is the position of the Examiner that the pipe of Boulet may reasonably be considered a ‘sealing ring.’ Alternatively, Examiner notes that the device of Boulet may also be used to install a sealing ring onto a flange of a pipeline.
As to claim 2, Boulet further teaches an upper portion comprising a handle having a T shape (figure 1, elements 13, 17, 19, 41, and 67 being the ‘upper portion,’ see below; paragraphs 17 – 19).
PNG
media_image2.png
767
1055
media_image2.png
Greyscale
As to claim 3, Examiner notes that claim 3 is being reasonably interpreted so as to recite functional language of the claimed sealing ring positioning device. It is the position of the Examiner that the sealing ring positioning device of Boulet is configured for use with the ‘remotely operated vehicle’ recited in claim 3.
As to claim 4, Boulet further teaches a strap in an upper part of the handle (figure 1, element 67 being the ‘strap’; paragraph 17).
As to claim 6, Boulet teaches that the semicircle shape of the lower portion comprises a radius which is configured to correspond to an external diameter of the sealing ring (figure 1, element 12).
Claims 8 and 9 each recite functional language of the claimed sealing ring positioning device. It is the position of the Examiner that the sealing ring positioning device of Boulet is configured for use described in each of claims 8 and 9.
Allowable Subject Matter
Claims 5 and 7 – 9 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 5, Boulet teaches the second section of the middle portion being a square plate (figures 1 and 3, element 20 being the ‘square plate’). However, Boulet teaches the magnet of the middle portion being arranged on a surface the square plate (figure 3, elements 50 and 20; paragraph 24), rather than the magnet being arranged in a groove that is arranged on the square plate.
Regarding claim 7, Boulet does not teach a layer of adhesive being disposed on the lower portion having the semicircle shape, wherein the lower portion is configured to allow the sealing ring to be deposited on the adhesive; and additional layer of adhesive configured to be applied in contact regions of the sealing ring and the lower portion.
Response to Arguments
Applicant's arguments filed April 8, 2026 have been fully considered but they are not persuasive.
Applicant argues, on pages 7 – 8, that Boulet does not teach ‘a middle portion having a first section projecting from an outer edge of the lower portion that is coplanar with the lower portion and a second section connected to the first section and arranged orthogonal to the lower portion,’ as recited by claim 1. Examiner disagrees. Boulet teaches a middle portion having a first section projecting from an outer edge of the lower portion that is coplanar with the lower portion and a second section connected to the first section and arranged orthogonal to the lower portion (figure 1, elements 14, 16, 20, 28, 29, 30, 32, 34, 36, 40, and the right and middle part of the upper bar being the ‘middle portion,’ the right and middle part of the upper bar being the ‘first section’ and element 20 being the ‘second section, see below’; paragraphs 17 – 19). Examiner notes that ‘first section’ is “coplanar” with the ‘lower portion’ because ‘first section’ of the middle portion (right and middle parts of the upper bar; figure 1, see below) extends directly from the left part of the upper bar (figure 1, see below). Furthermore, the second section is orthogonal to the lower portion because Boulet clearly teaches the second section (figure 1, element 20) being positioned such that it is orthogonal to the semicircle of the lower portion (figure 1, element 12).
PNG
media_image1.png
661
897
media_image1.png
Greyscale
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 CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Thomas Hong can be reached at (571) 272-0993. 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.
/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
Prosecution Insights