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 .
Drawings
The drawings are objected to because:
failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description: 40A and 40B in Fig. 1, 27A and 27B in Fig. 2, 70A in Fig.6,.
20A and 20B pointed to specific location in Fig. 1 and broad location in other instances (Fig. 2, 3, and 6).
as failing to comply with 37 CFR 1.84(p)(4) because reference character “20A” and “20B” has been used to designate both plugging heads and longitudinally extending fluid passageway (Fig. 5B).
element 70 pointed to specific location in Fig. 5A and broad location in Fig. 5B.
failing to comply with 37 CFR 1.84(p)(4) because reference characters "27A" (Fig. 2) and "70A" (Fig. 6) have both been used to designate fluid passageway in transfer pin.
failing to comply with 37 CFR 1.84(p)(4) because reference characters "61" and "65" have both been used to designate inclined planar surface (Fig. 11A and 11C).
failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description: “71 longitudinally extending fluid passageway” (Line 1, Page 14) and “82 Longitudinally extending fluid passageway” (Line 8, Page 14).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
Specification
The disclosure is objected to because of the following informalities:
"15 Actuator" repeated lines 4 and 8 (Page 12).
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.
Claim 28 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 28 recites the limitations:
“the unset position” in line 1
“the plurality” in line 2
“the set position” in line 3
As these limitations are not positively recited in the claim which claim 28 depends, there is insufficient antecedent basis for these limitations in the claim. Although “plurality of metal support segments” is recited prior to claim 28, it is recited in claim 16 rather than claim 17.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
US 10989347 – McKone et. al.
Claims 16-17 and 28-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 10989347 (McKone et. al. ‘347). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16: A plugging head of a pipeline isolation tool comprising: a radially expanding sealing element (Col. 15, lines 32-35); a plurality of metal support segments arranged adjacent to a sidewall of the radially expanding sealing element (Col. 16, lines 3-7), each metal support segment of the plurality including a seal sidewall-facing side, the seal sidewall-facing side being curvilinear along its length (Col. 16, lines 8-14); and a chip sweep adapted for connection to the plugging head (Col. 16, lines 21-23), the chip sweep having a curved lower end (Col. 16, lines 22-23) formable to fully engage an opposing bottom of a pipe (Col. 16, lines 25-28).
Regarding claim 17: A metal support segment adapted for use in a plugging head of a pipeline isolation tool, the metal support segment including a seal sidewall-facing side adapted to engage at least a portion of an opposing sidewall of a radially expandable sealing element of the plugging head (Col. 16, lines 3-7), the seal sidewall-facing side being non-linear at least in part along its length (Col. 16, lines 8-14).
Regarding claim 28: The metal support segment of claim 17, wherein in the unset position a portion of the seal is covered by adjacent metal support segments of the plurality (Col. 16, lines 15-17); and wherein in the set position the portion of the seal is exposed between the adjacent metal support segments (Col. 16, lines 18-19).
Regarding claim 29: A chip sweep adapted for connection to a plugging head of a pipeline isolation tool, the chip sweep having a curved lower end (Col. 16, lines 22-23) formable to fully engage an opposing bottom of a pipe (Col. 16, lines 25-28).
US 11796114 – McKone et. al.
Claims 16-18 and 28-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11796114 (McKone et. al. ‘114). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16: A plugging head of a pipeline isolation tool comprising: a radially expanding sealing element (Col. 14, lines 25-27); a plurality of metal support segments arranged adjacent to a sidewall of the radially expanding sealing element (Col. 14, lines 28-31), each metal support segment of the plurality including a seal sidewall-facing side, the seal sidewall-facing side being curvilinear along its length (Col. 14, lines 32-38); and a chip sweep adapted for connection to the plugging head, the chip sweep having a curved lower end formable to fully engage an opposing bottom of a pipe (Col. 14, lines 45-47).
Regarding claim 17: A metal support segment adapted for use in a plugging head of a pipeline isolation tool, the metal support segment including a seal sidewall-facing side adapted to engage at least a portion of an opposing sidewall of a radially expandable sealing element of the plugging head (Col. 14, lines 28-31), the seal sidewall-facing side being non-linear at least in part along its length (Col. 14, lines 32-38).
Regarding claim 18: The metal support segment of claim 17, the seal sidewall-facing side including at least two differently inclined surfaces (Col. 14, lines 32-38).
Regarding claim 28: The metal support segment of claim 17, wherein in the unset position a portion of the seal is covered by adjacent metal support segments of the plurality (Col. 14, lines 39-41); and wherein in the set position the portion of the seal is exposed between the adjacent metal support segments (Col. 14, lines 42-43).
Regarding claim 29: A chip sweep adapted for connection to a plugging head of a pipeline isolation tool, the chip sweep having a curved lower end formable to fully engage an opposing bottom of a pipe (Col. 14, lines 45-47).
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11796114 (McKone et. al. ‘114). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 19: The metal support segment of claim 18 wherein one of the at least two differently inclined surfaces is located toward a bottom end of the metal support segment (Col. 16, lines 12-14).
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11796114 (McKone et. al. ‘114). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 33: The chip sweep of claim 29 further comprising a plurality of ribs (Col. 14, line 56).
US 12359762 – Parsley et. al.
Claims 17 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 and 4 of U.S. Patent No. 12359762. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 17: A metal support segment adapted for use in a plugging head of a pipeline isolation tool, the metal support segment including a seal sidewall-facing side adapted to engage at least a portion of an opposing sidewall of a radially expandable sealing element of the plugging head (Col. 13, lines 44-61), the seal sidewall-facing side being non-linear at least in part along its length (Col. 13, lines 51-52).
Regarding claim 28: The metal support segment of claim 17, wherein in the unset position a portion of the seal is covered by adjacent metal support segments of the plurality (Col. 13, lines 65-67); and wherein in the set position the portion of the seal is exposed between the adjacent metal support segments (Col. 13, lines 62-65).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form 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.
Claims 17-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kayfetz (US 1177338).
Regarding claim 17, Kayfetz teaches: A metal support segment adapted for use in a plugging head of a pipeline isolation tool, the metal support segment including a seal sidewall-facing side adapted to engage at least a portion of an opposing sidewall of a radially expandable sealing element of the plugging head (Element 16, as shown in figure 1, is a washer which engages with a portion of an expanding plug [Fig. 1 and Col. 1, lines 44-55]), the seal sidewall-facing side being non-linear at least in part along its length (Fig. 1 and see marked up image below).
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Regarding claim 18, Kayfetz teaches: The metal support segment of claim 17, the seal sidewall-facing side including at least two differently inclined surfaces (Element 16 in Fig. 1 includes two differently inclined surfaces).
Regarding claim 19, Kayfetz teaches: The metal support segment of claim 18 wherein one of the at least two differently inclined surfaces is located toward a bottom end of the metal support segment (There is an inclined surface near the bottom end of the segment of element 16 [Fig. 1]).
Regarding claim 20, Kayfetz teaches: The metal support segment of claim 19 further comprising the seal sidewall-facing face including a concave-portion located toward a top end of the metal support segment (Concave potion on the top end of element 16 which is in contact with the seal [Fig. 1]).
Regarding claim 21, Kayfetz teaches: The metal support segment of claim 20 further comprising the concave portion including at least another inclined surface (Concave portion includes another inclined portion seen in marked image below [Fig. 1]).
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Regarding claim 22, Kayfetz teaches: The metal support segment of claim 20 wherein an upper end of the concave portion is inclined and the lower end of the concave portion is horizontal (Upper end of concave portion is inclined and lower end of concave portion is horizontal – See marked image below [Fig. 1]).
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Regarding claim 23, Kayfetz teaches: The metal support segment of claim 20 wherein the concave portion is a quadrilateral-shaped cavity. (Concave portion is generally a quadrilateral-shaped cavity – See marked image below [Fig. 1]).
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Regarding claim 24, Kayfetz teaches: The metal support segment of claim 23 wherein the concave portion is a trapezoidal-shaped cavity. (Concave portion is generally a trapezoidal-shaped cavity – See marked image above [Fig. 1]).
Regarding claim 25, Kayfetz teaches: The metal support segment of claim 20 wherein a vertical height of the concave portion is less than half a total vertical height of the metal support segment. (Concave portion is less than half the total vertical height of the support segment [Fig. 1]).
Regarding claim 26, Kayfetz teaches: The metal support segment of claim 17, wherein the metal support segment is thicker in cross-section toward a top end of the metal support segment than at a bottom end (The segment cross-section toward top end is thicker than at bottom end – See marked image below [Fig. 1]).
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Regarding claim 27, Kayfetz teaches: The metal support segment of claim 17 further comprising a side located opposite of the seal sidewall-facing side, the side being linear along at least a portion of its length (The side opposite of seal-facing side is linear along a portion [Fig. 1]).
Claims 29-32 and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibson et. al. (US 20100308810).
Regarding claim 29, Gibson et. al. teaches: A chip sweep adapted for connection to a plugging head of a pipeline isolation tool, the chip sweep having a curved lower end formable to fully engage an opposing bottom of a pipe. (Element with curved lower end to engage with pipe and attached to a pipeline pig tool [Para. 2, Para. 4 lines 3-5, Para. 20 and element 28 and/or 30 in Fig. 1]).
Regarding claim 30, Gibson et. al. teaches: The chip sweep of claim 29 wherein the curved lower end is an uninterrupted curved lower end (Curved end of element 28 is uninterrupted [Fig. 1]).
Regarding claim 31, Gibson et. al. teaches: The chip sweep of claim 29 further comprising a pair of spaced apart tabs located toward an upper end of the chip sweep (See marked image below [Fig. 1]).
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Regarding claim 32, Gibson et. al. teaches: The chip sweep of claim 31, wherein a spacing of the pair of spaced apart tabs is sized to receive at least a portion of a nose end of the plugging head (A portion of the nose end, i.e. element 20, is received by the tabs of element 28 [Fig. 1]).
Regarding claim 35, Gibson et. al. teaches: The chip sweep of claim 29 wherein the chip sweep comprises multiple thicknesses along its cross section (See marked image below [Fig. 1]).
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Claim Rejections - 35 USC § 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.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Gibson et. al. (US 20100308810) in view of Thursby (US 20140013872).
Gibson et. al. teaches the chip sweep of claim 29 but fails to teach the elastomeric material.
Thursby teaches pipeline pig utilizing an elastomeric material for multiple components engaging with the pipeline (Para. 66, lines 4-7 and Para. 86).
It would have been obvious to someone before the effective filing date to combine the teachings of Gibson et. al. with the material selection of Thursby as the elastomeric material is known as a material for use in sealing, guiding, or guarding of a pipeline pig for its resilient properties (Para. 66, lines 1-7 and Para. 86) and used in similar endeavors (Para. 4).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Aleksanderson et. al. (US 20090272451) teaches an expandable plug for temporarily sealing a pipeline (Para. 1 and Figs. 1 and 2).
Holsted (US 20110278022) teaches a radially expanding elastic sealing pipe plug (Abstract and Figs. 11 and 12)
Broze et. al. (US 20150217323) teaches a pipeline pig which utilizes a sweep element (Abstract and Fig. 3)
Dyck et. al. (US 5924454) teaches a radially expanding pipeline pig seal utilizing polyurethane sealing rings, guiding disks and bumper (Col. 4 lines 62-67, Col. 8 lines 18-21, and Fig. 1)
Yeazel et. al. (US 8307856) teaches a pipeline plug tool utilizing multiple radially expanding plugging heads (Abstract and Fig. 1) and an embodiment utilizing a brush instead of a seal to clean the pipeline of debris (Fig. 10)
Early et. al. (US 9400076) teaches a radially expanding pipeline isolation tool (Abstract and Figs. 2 and 5)
Palmer (GB 2465352) teaches a pipe cleaning apparatus utilizing a curved plurality of continuous brushes (Abstract and Fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA DENNIS LEARY whose telephone number is (571)272-1685. The examiner can normally be reached Monday-Friday 8:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached at 571-272-3607. If Craig Schneider cannot be reached, please contact Kenneth Rinehart at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D LEARY/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753